INTA Daily News

Trademark owners need to be constantly looking for online infringers, who are becoming increasingly creative in targeting well-known trademarks.

That was the message conveyed by two leading brand owners at the May 4, 2004 session on "Internet Policing and Enforcement," held in Marriott Imperial Ballroom B. More than 300 attendees received a first-hand insight into the impact of cybersquatters, typosquatters and commercial infringers.

“The Internet is making it so easy for them,” said Katrina Burchell, general trademark counsel at Unilever, a view echoed by Dianne Cahill, trademark paralegal administrator at American Express, and Mark McGuire from NameProtect Inc. 

McGuire warned that trademarks are not self-policing, and with billions of Web pages accessible to everyone in the world, brand owners need a proper online monitoring strategy to avoid the risk of losing not only revenue but also brand credibility. 

To give attendees a taste of what has become reality, he presented them with a list of the “dirty dozen” online infringements, including domain name infringement, trademark dilution and offensive content, with traffic diversion the hottest topic at the moment.

Burchell and Cahill presented an extensive selection of case studies and the enforcement strategies that their companies have employed. 

Unilever, which started monitoring the Internet five years ago and launched a proper monitoring system two years later, takes a relatively relaxed approach. American Express decides on its strategy on a case-by-case basis, but will always send cease and desist letters to infringers. Unilever prefers to start any action by sending a friendly email or letter to potential infringers. But if this is not successful, they will take action through WIPO’s UDRP system.

In the case of parody websites, both speakers agreed that it is important sometimes to accept a joke aimed at your brand. Taking action every time could result in the satirists taking revenge by posting your name and contact details on their website. “It’s important to keep a realistic picture and not to be too reactionary,” said Burchell. 

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