Technology is getting more sophisticated

• Trademark counsel need to utilise sophisticated technology to tackle counterfeiting
• Unlikely alliances between online marketplaces will help in the fight against fakes
• Intermediary sites cannot pretend they are no longer the problem

Like other aspects of trademark work, anti-counterfeiting is set to change significantly in the next few years. The trends are already clear: growing markets in developing countries; more sales being made online and shipped in small packages; and better-equipped counterfeiters. “The biggest change will be technology getting more sophisticated,” says one former in-house counsel.

Trademark counsel need to use this to their advantage, promoting and using tools such as image searching and automated notifications. One practitioner notes that Google Image Search and similar services “are already pretty good”. Another adds: “You could take an image of legitimate products and find vendors selling things looking like those products. Alibaba and Amazon are exploring technologies like that.” This would be used to complement other relevant information, for example regarding the price or origin of the goods.

Making these kinds of technology work means forming perhaps unlikely alliances with marketplaces such as Alibaba, Amazon and eBay. Fortunately, there are signs that such intermediaries have a greater appetite for dealing with the problem, particularly where it can be automated. For example, in 2017 the Alibaba Anti-counterfeiting Alliance was launched, and now has more than 100 member brands, including Apple, Burberry, Levi Strauss, Ralph Lauren and Swarovski . The marketplace also provides an IP protection portal and simplified notice-and-takedown procedure.

Marketplaces must become more effective in tackling counterfeits. They are under pressure from other sources to deal with challenges such as hate speech, illegal drugs and pornography (eg, the United Kingdom has passed a law requiring pornography sites to implement age-verification checks) and in some cases the technology to deal with these can be adapted for anti-counterfeiting. Moreover, there are some indications that stakeholders and inventors are wary of companies that enable IP infringement, particularly in light of president Trump’s recent rhetoric. “There’s been a real shift of attitude among online service providers. Intermediary sites cannot pretend they are no longer the problem,” argues one practitioner. “Intermediaries and internet service providers are more willing to join in the fight rather than waiting to be told,” adds another.