We currently live in the internet age, an age where a great deal of economic activity is conducted online. Nowadays, most businesses have some form of online presence in the form of websites. This is generally considered the easiest way to reach a wider audience and reach more prospective consumers. The downside, of course, is that while the internet provides an effective and relatively easy marketing tool to businesses, it provides an equally easy platform for unauthorised third parties to infringe businesses' intellectual property rights.
Seeing your business's trade mark used online, without authorisation, is really no different to seeing it used by a competitor or unauthorised party on their business signage or in their advertisements. There is a high risk that consumers will assume that the trade mark appears on the website because it is meant to be there. In other words, the website is authorised by the trade mark owner and that, consumers may engage services or purchase goods offered on a website, on the strength of this incorrect assumption. Reputational harm to the brand is a real risk, especially since the true owner of the trade mark would not have any control over the goods or services that are being promoted on the website. Some infringers are so bold that they "clone" legitimate websites, making use of domain names that mimic the trade mark owners' domain names, and copy the content on their legitimate websites. To the unknowing internet user, the clone website, certainly at a first glance, is indistinguishable from the legitimate one.
It is very common for popular retailers' websites to be cloned for purposes of phishing and fraud. Consumers purchase goods via the clone website, which is a scam, and may only realise their mistake when it is too late (and usually when the purchased products fail to arrive). It is important to address online infringements quickly, to mitigate these risks.
There are various avenues and options in addressing online infringements. One quick and effective solution is to file a complaint with the Internet Service Providers' Association (ISPA). ISPA is a recognised South African internet industry representative body. It facilitates the exchange between the different internet service providers in South Africa. If the entity that hosts the infringing website is an ISPA member, ISPA will consider and action a takedown request lodged in respect of that website.
Once the service provider has received the complaint which is forwarded to it by ISPA, it will either remove the content complained of, or if it refuses to remove the content complained of, ISPA will notify the complainant. According to ISPA's website, it is very rare for conduct complained of not to be removed as "in approximately 95% of all cases, lodging a valid take-down notice results in the removal of that content." It is a very effective process.
Most service providers that host websites also publish "terms and conditions" on their websites. These provide for the lodging of takedown requests and infringing content which can be reported to them directly. The effectiveness of these complaint processes will differ from provider to provider. Some are very responsive and action infringement complaints quickly and efficiently resulting in infringing content being taken down within a matter of hours or a few days. However, some are less quick to react.
In terms of addressing domain names that are of concern, it is possible to lodge domain name complaints with the World Intellectual Property Organization (WIPO), or for <.co.za> domain names, with the South African Institute of Intellectual Property Law (SAIIPL) in terms of the relevant Uniform Dispute Resolution policies. These processes are formal in nature and the advice of an intellectual property attorney should be sought especially insofar as assessing the merits of a formal domain name complaint and the preparation of and submission of the complaint, are concerned.
In instances where online retail websites have been cloned and consumers are being baited into purchasing goods online through these websites, there are a few additional actions that are recommended. It is possible to lodge complaints with their payment service providers such as VISA or Mastercard by notifying them that the website concerned, is suspected of fraudulent acts. The complaint will be investigated by those providers and if found to be valid, will suspend payment facilities to that website. It is also possible and recommended that a complaint be submitted to Google, which will prevent the website from being picked up in its search results. The practical effect is that a consumer searching for the legitimate website, will not inadvertently stumble on the clone website in the search engine's listed search results.
The internet has brought about a revolution in communications and convenience. It must, however, be monitored and policed closely to ensure that IP infringers do not capitalize on the convenience that the internet provides. Our trade mark litigation team is able to assist with the enforcement of trade mark rights and copyright in South Africa and across Africa, including in respect of the many infringements that take place in the online world.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.