United States: Anti-Counterfeiting – Inteview With Kristina Montanaro – EU Anti-Counterfeiting Action Plan – Similarity Of Goods And Services

Last Updated: October 1 2014
Article by Rolf Claessen and Kenneth Suzan

Anti-Counterfeiting is the main topic of this episode. We interview Kristina Montanaro – Vice President of Legal Affairs & Strategic Planning of the International AntiCounterfeiting Coalition (IACC). We also tell you more about the newly released EU Action Plan on the enforcement of Intellectual Property Rights. Finally, we show you a useful online tool to determine the similarity of goods and services.

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IP FRIDAYS

Co-Presenters:

Rolf Claessen and Kenneth Suzan

Episode 11 – September 19, 2014

RC = Rolf Claessen

KM = Kristina Montanaro

KS = Kenneth Suzan

This is Jeanine Percival Wright, the Director of Legal Affairs for Intellectual Property and Litigation with True Religion Brand Jeans in beautiful Los Angeles, California. You are listening to IP Fridays. Thanks for the great podcast guys.

KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.

RC: Today's show is mostly dedicated to anti-counterfeiting measures. We will talk about the new EU action plan on enforcement of intellectual property rights. We have the Vice President of Legal Affairs of the IACC, Kristina Montanaro. She will tell us about the work the IACC is doing. And then we also tell you about a little helpful tool for comparing the goods and services of trademarks and we will tell you about that tool right now.

OHIM, many people call it the European Patent and Trademark Office, is providing a really cool tool for comparing the goods and services of trademarks. The tool is simply called "Similarity" and the link is in the show notes. Many offices are sharing their decisions in opposition proceedings to feed this database. Among them is the OHIM, and the relevant offices from Bulgaria, Cyprus, Estonia, Spain, the UK, Greece, Latvia, Malta, Portugal, Romania and many offices will join in the near future.

In the basic search interface you just type in two different terms and then the tool will tell you if there are any decisions in these countries where these terms were compared. Let's say you are comparing advertising services to public relations. You could just enter these two terms and then it would spit out a list of all the decisions rendered about these two terms. So, I find this really useful and I really hope that the German Patent and Trademark Office will join soon.

There is also an advanced search interface and you can enter that when you click on "compare terms". You can limit the different terms by Nice classes. You can also search in particular languages, or the degree of similarity, or you can limit the search by certain kinds of offices and in theory you could also compare lists of terms so you can paste in the list of goods and services of the one trademark and the list of goods and services of the other trademark and then hit "search". In my personal experience, I had very divided results. The algorithm doesn't really seem to match the terms very intelligently but I am sure OHIM is working on this very hard. If you want to learn more about this tool, just go to www.ipfridays.com/similarity.

We are very excited to have Kristina Montanaro on the show today. She is Vice President of Legal Affairs and Strategic Planning for the IACC and Ken had the chance to interview her. So Ken, take it away...

KEN SUZAN'S INTERVIEW WITH KRISTINA MONTANARO, VICE PRESIDENT OF LEGAL AFFAIRS AND STRATEGIC PLANNING OF THE INTERNATIONAL ANTI-COUNTERFEITING COALITION

KS: Thanks very much Rolf. I am pleased to be joined by Kristina Montanaro, who is the Vice President of Legal Affairs and Strategic Planning at the International Anti-Counterfeiting Coalition ("IACC") in Washington D.C. Thanks so much Kristina for joining us today.

KM: It's a pleasure. Thanks for having me on your show.

KS: Yes, welcome to our program. Can you tell us a little bit about the International Anti-Counterfeiting Coalition, or the IACC as it is known in the industry?

KM: Sure. So, we have been around since 1979. We are a non-profit trade association based in Washington D.C. We have about 250-plus members at this point and a large majority of those are brand owners or IP owners, and we have also service providers and it really started as a lobbying group back in 1979 by a small group of brand owners and we have really developed more in the past ten years into doing a lot of enforcement type of work and other anti-counterfeiting programs and a lot of training of law enforcement and that type of thing.

KS: And your role, your title, is Vice President Legal Affairs and Strategic Planning. What exactly do you do on a day-to-day basis?

KM: Well, I head up all of our legal affairs, all of our managing outside counsel and any other legal type activities that we do — like when we do amicus briefs and cases that our members find interesting I head up a number of our programs that we do for enforcement purposes Ion the internet, one being our IACC RogueBlock Program which is our Payment Processor Initiative and then the other is IACC MarketSafe which is our collaboration with Taobao. In short, I head up any of our programs that deal in voluntary agreements with third parties like Taobao, Amazon, the credit card companies, any of those.

KS: You mentioned RogueBlock and MarketSafe. Those are very interesting to me. What exactly are those and how can our listeners get involved with them?

KM: Sure. So, RogueBlock was the first one we started back in 2012, and that was really begun as a way to hit the counterfeiters a different way. A lot of our members were having problems with enforcing against counterfeiting online because they found that, you know, you try to get these websites taken down and once you get a website down, it just pops back up five seconds later. So it was really a whack-a-mole problem that the brands were having at that point. So the RogueBlock Program was meant as a different way to approach the program by following the money. So we work with the credit card industry and payment processing industry to basically cut off the merchant account of the counterfeiters who are operating online. So, in a nutshell, we work with the brands to report rouge Websites or infringing Websites to the financial industry and the financial industry can cut off the funding to those Websites.

KS: Do businesses have to be a member of the IACC in order to use that service?

KM: Currently they do. That is our policy right now and that's how it has been for the last two years. We are looking to expand, however, because there has been quite a push by a lot of other entities to use the program so we are looking into options for doing that. We have probably about 45 members of the IACC who have participated in that program at some point or another and that has been just across the spectrum of different types of IP owners. There have been car companies that have used the program. There has been luxury and apparel, pharmaceutical brands. It really runs across the spectrum of brands.

KS: Yes, and I have noted that with RogueBlock, to date, participants in the program have referred over 9,000 Websites for investigation resulting in the termination of over 3,700 individual counterfeiters' merchant accounts. So that is wonderful.

KM: Yeah, that is correct. I often get the question, "Well, you guys have sent like over 10,000 Websites at this point, why haven't you terminated 10,000 merchant accounts?" What we found is that a lot of these guys, these counterfeiters, find their merchant accounts to be so valuable because it is very difficult, if you have ever tried as a merchant to get a merchant account up and running, it is very difficult to obtain a merchant account to begin with, so a lot of these guys will have 1,000 Websites, for example, and they all will push the payments for those 1,000 Websites through one merchant account. So, if you report any one of the Websites out one network all using the same merchant account, you are going to hit that merchant account which will have an impact on the payment/processing abilities for the entire network.

KS: Oh, so it's like a central attack of sorts.

KM: Absolutely. So it's a big network impact that the brands are having as opposed to just taking out one Website at a time. So there has been a lot of impact from each one of these actions that we have done.

KS: That's excellent. Now the MarketSafe initiative, what is that exactly?

KM: It's a little bit of a spinoff of the RogueBlock initiative. In working with the credit card industries, some of the credit card partners that we work with were actually payment methods on a couple of Alibaba group platforms. So Alibaba group, if you are familiar, owns Alibaba.com, Ali Express and Taobao which is of particular interest to the brands that we work with. So, we started working with the credit card industry on cleaning up those platforms so that they could be compliant with the VISA and MasterCard policies. So that sort of spun into an independent partnership with Taobao Marketplace where we could work with Taobao directly to have a more efficient way to take down the listings on Taobao for our brands.

KS: That's great. Now, many of our businesses out there that listen to the program have asked are there any general best practices for brands today, in today's quick moving e- commerce driven world, on getting a handle on counterfeiting problems that might be occurring whether online or off line?

KM: Yeah. It is a simple answer and one that a lot of these brands that are listening probably would know already but you'd be surprised. Register your trademarks; if you come out with new products, make sure those are registered; record those trademarks with customs and I would just say keep an eye out online because a lot of brands that are smaller and not really familiar with the world of anti-counterfeiting don't even realize that they are being counterfeited until we tell them and show them some of the listings of things that we see on some of these big platforms. So they don't even realize it until they are actually are on the lookout for it.

KS: What should companies do when they first learn about counterfeit products? Is there some sort of checklist or protocol in what they should do first?

KM: I always tell brands, particularly with the RogueBlock System, the payment processor program that we run, I always tell them that if there is a case where you think that there is a potential that the seller could have made an honest mistake, so maybe they got a bad supplier, maybe they have a Website where they sell a number of products and maybe one or two of those products are counterfeit, and the rest are legitimate. In any case like that, I tell the brands that the first thing to do is to reach out to the seller and maybe send them a cease and desist letter and see if they are willing to take that product down because if you are dealing with something that has as high of an impact as the RogueBlock system where it could potentially cut off their merchant account, you want to make sure you are hitting a bad guy. A lot of times if the brands are coming into the program and they are not familiar with that, if they had taken the route of not sending a cease and desist letter first, we could be really harming the business of someone who made an honest mistake and we want to stay away from that so we try to focus on only the sellers who are absolutely devoted to counterfeiting, they know what they are doing. The RogueBlock system is really sort of a last resort to kick those counterfeiters off the Internet and basically sever their merchant account. Once you sever someone's merchant account, it is very, very difficult for them to get a new one. So you really only want to use that in a last case scenario.

KS: Is it easy to set up a merchant account? Can anyone just do it?

KM: Anyone can do it, however, it takes a really long time. You have to have good credit, they go through a huge due diligence checklist when you apply to the bank to get a merchant account up and running. So you see a lot of these people, that's why a lot of people take a Square, you know if you go to a small legitimate business they might take a square because that's an easier way to get up and running and take credit cards. But to get an actual merchant account up and running it is very difficult and it takes just a good amount of effort. Conservatively, I would guess it takes about a month to get a merchant account up and it takes about $1,000.00 to get a merchant account up and running. That's just getting the documentation and all of that required. There is an onsite visit from the bank in many cases so it is a lot more difficult than getting a new Website up and running.

KS: Sure. Now, are there any specific ways aside from what we have talked about, for companies to get immediate or tangible results in the marketplace? Sometimes they are finding that they are spending a lot of money on education programs or lawsuits that drag on. Are there any other things that companies could consider doing so that they get what we call tangible results?

KM: Yes. I always tell our brands to be more strategic if they are worried about how they are spending their budget. You want to focus on the big targets. If you are worried about where to spend your money, a lot of times if you are walking past someone in Chinatown, yeah it's annoying to walk past someone in Chinatown and see it in your face every day. However, taking out the factory in China or taking out the merchant account of the seller on the Website where the guy in Chinatown actually purchased those products is more effective and is a more efficient use of resources than just hitting the seller in Chinatown. So you can really learn a lot about strategy and which targets to hit by doing your homework from the outset so a lot of the brands, of example, instead of just hitting random websites, I will tell them to go out and try to network map these Websites. See how these Websites are connected. Are they all tied to the same IP address? Are they tied to the same WHOIS information? Once you scope out the network of these Websites, you can decide which targets to hit and really you can hit each network as opposed to random Websites within a network.

KS: Now, are the tips and guidance different from small businesses to large multi-national companies or is it the same sort of tactics that are applied?

KM: Well, the network mapping type of service there can run a little more expensive. I would say just for small businesses there are a number of things that you can do for free, just on the registering trademarks end. I tell people to look and see if there are any IP clinics in their area. I was in an IP clinic when I was in law school and we registered small business trademarks so you can find someone to register your trademark for free, potentially. A lot of other enforcement type things are free as well. Working with law enforcement is always free. Responding to law enforcement inquiries. If customs comes across your products and they call you, you can always respond back and that is free. You can report to third parties like eBay for free. So there are a number of things that you can do in-house that can have a big impact for free.

KS: Excellent. Kristina, I want to thank you for taking the time to talk to use today with very helpful information and advice. If people want to get in touch with you, how can they do so?

KM: They can reach me at kmontanaro@iacc.org or if you can't remember the email address, you can just go to iacc.org and you can find me on the Website there and feel free to reach out any time with questions.

KS: Kristina, thanks very much.

KM: Thank you so much Ken and have a great day.

KS: Have a great day.

RC: If you want to learn more about the IACC, please go to www.ipfridays.com/iacc.

In the beginning, I promised to tell you more about the EU Action Plan on enforcement of intellectual property rights. The European Commission issued a memo on the first of July about this new action plan of the European Commission. This action plan has ten action items and I will just highlight the most important goals of each action item.

The first action item is the promotion of the observatory on infringement of intellectual property rights which is basically a sub-office within OHIM at the moment. The Commission wants to promote awareness, especially among young people, and they want to tell people more about the harm caused by commercial scale IP infringements and the potential health and safety risks associated with infringement.

As a second action item, they want to launch a series of consultation actions and they want to apply due diligence throughout the supply chains as a means to prevent commercial scale IP infringements.

As a third action item, the Commission wants to facilitate the development of further voluntary memoranda of understanding to reduce the profits of commercial scale IP infringements in the online environment.

As a fourth action item, the Commission wants to analyze and report on existing national initiatives and wants to improve the IP civil enforcement procedures for small and medium size companies.

As a fifth action item, the Commission wants to issue a green paper to consult stakeholders on the need for future EU action based on the best practice schemes.

As a sixth action item, the Commission wants to issue a green paper to consult stakeholders on the impact of charge-back and related schemes of commercial scale infringements.

Then, as a seventh action item, the Commission will establish a member state expert group on IP enforcement where member states could share their best practice on the work within the EU and all the concerned authorities.

As an eighth action item, the Commission would support the observatory and the development of a comprehensive set of sector IP enforcement related training programs for the member states.

Then the Commission intends to develop and promote and publish a guide on the best practice for public authorities to avoid purchasing counterfeit products.

As a tenth action item, the last action item, the Commission will publish a bi-annual report on the economic impact on the EU's IP policy that should serve as a more effective monitoring tool for the EU and IP enforcement policy.

So, we all hope this will be a sustainable effort of the EU and the European Commission in particular. If you want to learn more about this Action Plan, just go to www.ipfridays.com/euactionplan.

Thank you very much for listening and tune-in in two weeks.

KS: That's it for this episode. If you liked what you heard, please show us your love by visiting ipfridays.com/love and tweet a link to this show. We would be so grateful if you would do that. It would help us out to get the word out. Also, please subscribe to our podcast at ipfridays.com or on iTunes or Stitcher.com. If you have a question or want to be featured in one of the upcoming episodes, please send us your feedback at ipfridays.com/feedback. Also, please leave us a review on iTunes. You can go to ipfridays.com/itunes and it will take you right to the correct page on iTunes. If you want to get mentioned on this podcast or even have comments within the next episode, please leave us your voicemail at ipfridays.com/voicemail.

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