Guidance note for tackling online copycats

15 May, 2018

Where the imitator is a malicious actor, such as a cybersquatter or a commercial competitor, once their actions are discovered it is important to seek advice on taking action without delay.

For further information, please see the guidance note below or download a copy here. 

A strong and valuable brand is a valuable asset.  It can, however, attract imitators who can damage the brand and it is important to tackle those ‘copycat’ parties before lasting damage is done.

Imitators generally fall into two main camps:

  • cybersquatters; and
  • commercial competitors.

Cybersquatters have no legitimate interest in using a name or brand; they hijack domain names purely for commercial gain.

Cybersquatters register confusingly similar domain names in order to divert traffic away from a genuine brand’s website to a malicious site, often selling counterfeit goods or hosting malicious content.

We regularly act for clients tackling cybersquatting, and can provide strategic advice and assistance at fixed costs

See our guidance note here on Cybersquatting and the Uniform Domain Name Dispute Resolution Policy (UDRP) for further information on how we can assist with this particular issue.

As a shortcut to success, it is not uncommon for competitors to copy the unique and attractive elements of an established, successful business brand.  Whether this is done deliberately or unwittingly, the damage to the original business from such actions can be devastating.

The first step to tackle the problem, is to consider if you have any registered rights, such as a trade mark or a design.  If that is the case, there are standard routes to enforcement.  This guidance note focusses on rights that are not (yet) registered.

  • Products/services offered
  • Public profile (website and social media appearance, marketing materials and contents)
  • Domain name.

Looking at each of these in turn:

It is not possible to stop someone offering the same or similar services to you; you cannot register and protect a business idea itself.  You can, however, protect how that idea is represented. 

If, on the other hand, copycat products are being sold, it may be possible to protect them by way of a patent or registered design.  If a product is unique and is particularly valuable to a business, we recommend that you seek legal advice on how to protect it.

Cripps can help by advising on a design protection strategy, in conjunction with the registration of rights by leading patent and trade mark attorneys.

The public profile of a business, including its branding, is commonly echoed across numerous platforms: online, with a website and social media accounts; and off-line, in hard copy materials.

 

Goodwill accrues in a successful brand, through use.  The goodwill arises from either its image as a whole or specific key elements, such as a logo or colour scheme.

It can be particularly damaging, therefore, when a competitor copies a brand causing confusion between the businesses.

Confusion may divert valuable online traffic to the competitor’s site, which causes not only direct loss in potential sales but reputational damage if the competitor provides inferior goods/services.

What can be done?

In the absence of a registered trade mark or design, it may be possible to protect the appearance of a commercial brand from copying by bringing a claim for ‘Passing Off’.

Passing Off protects the unique identifiers of a business, including a colour scheme, the website appearance and graphics or a name and logo.

As the name suggests, an action for Passing Off exists where there is goodwill in Party A’s brand and Party B seeks to pass themselves/their goods/services off as those of Party A, or gives the impression that they are connected to Party A in some way.  This deliberate misrepresentation will invariably cause damage to Party A’s reputation and goodwill.

The remedies available against a party guilty of Passing Off include damages, an injunction, the take-down of online content and surrender/destruction of offending materials.

How Cripps can help:

  • advise on legal strategy including a review of the facts and the potential for a claim for Passing Off;
  • engage with the competitor, drafting and sending cease and desist correspondence;
  • advise on any response received to initial correspondence; and
  • advise on whether alternative dispute Resolution (ADR) may be beneficial and if so, an appropriate ADR strategy.

In the circumstances where a third party, such as a competitor, has taken (copied) content belonging to another, without permission, it is possible to bring a claim for copyright infringement.

Copyright law protects certain content automatically, from the moment of creation.  Photos, graphical images, text, video and audio are all covered by copyright law.

The remedies available against a party guilty of copyright infringement include damages, an injunction, the take-down of online content and surrender/destruction of offending materials.  It may also be possible to contact the ISP (host of the offending website) and have the website taken down if the copycat competitor is unresponsive.

How Cripps can help:

  • advise on legal strategy including a review the facts and provide advice on a potential claim for copyright infringement;
  • engage with the infringer, including drafting and sending cease and desist correspondence;
  • advise on any response received to initial correspondence;
  • advise on whether alternative dispute resolution (ADR) may be beneficial and if so, an appropriate ADR strategy.

If a competitor has registered a confusingly similar domain name in order to take unfair advantage of the goodwill in a brand, or to divert traffic away to a competing site, then in most cases, action can be taken.

The registration of a domain name in which the registrant has no legitimate interest, purely to take an unfair advantage of it, is known as ‘cybersquatting’.

 

The remedies available in such cases include the cancellation, seizure and/or transfer of the infringing domain name.  It is possible to seek those remedies without involving the court through the ‘UDRP’ process.

How Cripps can help:

  • advise on the merits of the case, including the UDRP process as a method of enforcement; and
  • assist in the UDRP process, handling correspondence with the cybersquatter and UDRP panel.

Where the imitator is a malicious actor, such as a cybersquatter or a commercial competitor, once their actions are discovered it is important to seek advice on taking action without delay.  Delay can be a bar to certain remedies and is fatal to an injunction application.

Cripps is able to advise and assist in such cases.

This article is not intended as specific legal advice.  Each case is judged on its own merits, against its own particular set of facts and will typically involve an objective assessment by the court of the precise facts.

The law relating to Passing Off and copyright infringement is complex and constantly developing.  The purpose of this note is to assist in providing an overall understanding of the legal context within which such rights operate.

If you require assistance or further information on the issues raised in this note, please see our Intellectual Property page.

If you require further guidance please contact Will Charlesworth at will.charlesworth@crippspg.co.uk or on +44 (0)1892 506 004