We thank all of the participants for contributing and sharing their expertise with us. Member companies are randomly chosen each month to participate as a way to connect and educate our member community. To view our previous member spotlights, click here.
Senior IP Counsel – IP Enforcement, Brands & Licensing
Malmesbury, UK
What’s one piece of advice you can give a brand looking to enforce their IP?
It’s tempting to feel compelled to enforce against every infringement. This can quickly bury a brand’s limited enforcement resource in dealing with infringements that aren’t a material threat. Instead, develop a clear strategy to help prioritize addressing the threats that pose the greatest risk to the brand’s reputation and/or its revenue. A good prioritization strategy should: understand the range of infringements a brand faces across its IP portfolio around the world, identify the critical reputation/revenue threats, set an overall policy to work to for each threat (which should align with the brand’s commercial objectives) and determine short-term actions to begin to address the critical threats.
How do you show your company the value of brand protection?
Measuring the scale of brand protection issues with accuracy is notoriously difficult. On counterfeits, we use our own data to monitor trends and demonstrate the positive impacts of our anti-counterfeiting program. For example, monitoring the volume of calls received by our customer service teams concerning counterfeits or the number of attempts to register non-existent/suspicious product serial numbers on our systems. We also measure the saturation of counterfeits on eCommerce platforms and demonstrate downward trends in visibility over time. To provide some context, we benchmark our brand protection efforts against consumer brands with a similar profile to Dyson.
Who has influenced you most when it comes to how you approach your work?
I have been at Dyson for a few years now and I am surrounded by colleagues with seemingly bottomless creativity, inventiveness and determination to solve problems. One can only be inspired by the culture that Sir James Dyson has created, which is one of a persistent determination to strive to do better at all times. I recommend Sir James’ biography “Invention: A Life” if that mindset is one that appeals to you.
What are the top 2 challenges in IP enforcement you see affecting your industry over the next year?
Blockchain technology, primarily in the form of NFTs and NFT-related abuse will be a significant challenge in IP enforcement over the next year. Not only is there an ever-increasing proliferation of NFTs incorporating third party IP without authorization but also a significant increase in the sale of fake NFTs pretending to be offered by brands and fake NFT platforms. The fact that many consumers are not familiar with how NFTs or blockchain works will exacerbate the problem and facilitate fraud. It will be difficult to identify infringers and legal and practical remedies remain unclear in large part due to the nature of blockchain technology which underlies NFTs. The other major challenge will be the increasing sophistication and complexity of infringement schemes which utilize multiple channels including, domain names, websites, social media, VOIP phone numbers, text messages, messaging platforms, and even influencers.
What is one way a brand with a mature IP enforcement program can take their efforts to the next level?
While mature IP enforcement programs generally have large numbers of takedowns and recoveries, this isn’t necessarily a good measure of the success of the program. We are seeing increasingly complex infringement schemes from increasingly sophisticated and coordinated infringers. The schemes cross platforms and channels and include coordinated use of domain names, websites, social media, VOIP phone numbers, text messages, messaging platforms, and even influencers. The bad actors act like real businesses and even have advertising and creative agencies working for them to create the domain names, websites, social media, and VOIP phone numbers, and also operate call centers to communicate in real time with consumers by phone, email, text message, social media, and messaging platforms to facilitate the fraud and infringement. It is important for brands to search for the connections and take out the entire network as just taking out a piece tends to have little effect as that piece is easily replaced.
What’s the best piece of advice you have ever been given?
The most important piece of advice I have ever been given is that nothing is more important than good relationships. I have taken this to heart and have always focused on having strong and robust relationships with my clients, colleagues, and even competitors and truly getting to know them. Understanding people and what is important to them doesn’t only result in better legal and business outcomes but also is incredibly rewarding. We all work very hard but at the end of the day there is more to life than work and when most people you work with also become your good friends, it doesn’t really feel like work anymore.
Intelligence & Investigation Services Limited / IP Crime Unit
Director
Manchester, UK
What makes your company unique?
EXPERIENCE - We are a small privately owned company based in the UK with a wealth of experience. We have been providing brand protection services to many of the world’s leading brands since 1996. We are passionate about the brands we represent and offer product identification and expert witness statements for both criminal and civil cases as well as law enforcement product training, evidential test purchasing and we coordinate global anticounterfeiting programs on behalf of our clients. We file Customs Notices for clients with substantial trademark portfolios and handle all of the resulting Customs seizures. We have developed long lasting relationships with our clients, many of whom we have represented for over 25 years.
What's the most rewarding part of your job / what is the thing that you've been most proud of in your anti-counterfeiting work?
Without doubt, receiving positive feedback from our clients on the work we carry out on their behalf, making an impact on both their online and offline anti-counterfeiting programs and working within a great team of people. I’m most proud of our long- standing client relationships.
What hobbies or causes are you passionate about?
Inspired by my son who is a huge fan of the RNLI (The Royal National Lifeboat Institution), we have visited 189 of their 238 lifeboat stations around the UK and Irish coastlines raising money for their volunteer lifeboat crews who operate a 24-hour rescue service in the UK and Ireland.
What’s the best piece of advice you have ever been given?
Never forget to stop and appreciate how far you’ve come
What's the most rewarding part of your job / what is the thing that you've been most proud of in your anti-counterfeiting work?
By far the visible effect that actions results have on the way that illicit trade is forced to modify their modus operandi. One may argue that the counterfeiters should be severely punished however their operations have dramatically diminished after repeat actions on them since constant pressure, expenses incured and lost merchandise have visible effects. From massive counterfeiters they eventually become small time hustlers. From massive warehouses they end up in small back room storage and from serious illicit alcohol filling operations the have to eventually end up collecting and recycling bottles from the garbage.
How do you show your clients the value of brand protection?
I always give tangible examples of brands that totally lost their markets and disappeared due to perceived serious counterfeiting issues. I have extensively worked against the illicit spirit trade and there have been brands that completely vanished from markets they were leaders at. It may seem an extreme example since the spirits are a specific market however the opposite is true. Perception is more of a critical element in other market sectors. Safety, luxury & leisure choices are even more based on perception and trust.
How did you get into brand protection?
Everything I have done since the beginning of my work career led me here and contributes to my daily work however the decision was not conscious. I started in jewelry sales and design, did Psychology and Organisational Behavior studies followed by an MBA, competitive sport, military service, worked marketing at L'Oreal and Managed brands at Coke, then entered the IP transfer and licensing work (on the positive side of IP) and then naturally the negative side as well (IP protection). Typical hammer and anvil....however I have realised that it is a field that you work in if you personally need to and not if you have to.
We offer holistic management of full cycle ACF cases; from investigations online/offline, to coordination with local authorities pre and post raid, and tracking the cases as they are concluded in the legal system. In addition to our tactical operational handling of cases, we have collaborative relationships with ACF support elements including client’s colleagues in China, e-commerce platforms, and local authorities. The relationships we have with local enforcement gives us the flexibility to act quickly and effectively on time-sensitive operations. To support our operations, we’ve developed an intel-driven database to organize and track ACF targets for our clients.
How do you show your clients the value of brand protection?
We show value to our clients by providing tangible metrics; raids, arrests, confiscated fake goods, etc. As a program matures, we provide analysis to illustrate market share lost/saved by the existence/removal of fake goods from the marketplace. To support our operations, we developed an intel-driven database (which is transparent and available to clients at any time) to organize and track ACF targets which allows client to understand the magnitude of their situation. We have a flexible, adaptable, and efficient working model which is supported by a strong administrative backbone which manages every facet of the ACF program.
Can you tell us something about yourself outside of your job?
I have participated in foot races all over the world. These events allow me to get a unique glimpse of parts of the world that would be otherwise inaccessible. I did a race in Bhutan which traversed amazing landscapes from rural villages through evergreen forests. We crossed several 3500m mountain passes, stayed at a century-old farmhouse, and camped on the grounds of a monastery. The race started at Punakha Dzong and finished at the famous Tiger’s Nest which sits at 3000m overlooking Paro Valley. It was an unforgettable experience.
What's the most rewarding part of your job / what is the thing that you've been most proud of in your anti-counterfeiting work?
During my service to the United States, I have undertaken responsibilities - first in the military and later in law enforcement – that were ultimately people centered. However, I never imagined that I would play a role in bringing hope to the world, as part of Pfizer’s Global Security efforts. I was proud to lead a team of committed colleagues that investigated fake COVID vaccines being administered to unsuspecting patients in Latin American countries; thwarted fraudulent vaccine offers targeting governments and health care providers; and secured the integrity of the vaccine supply chain in high-risk countries resulting in no security incidents.
How can we or our companies better educate consumers about the harms of counterfeiting and piracy?
Educating consumers, or in our case patients, is a critical component of a comprehensive anti-counterfeiting program. We need to invest in awareness programs as we do in our investigative and intelligence capabilities. Collaborating with partners that have a role in educating consumers can be a critical step towards reaching a broader audience. We are building a partnership with health care providers, associations, policy leaders, regulatory agencies, law enforcement agencies, distributors, insurers, pharmacies, and patient advocacy groups to be able to reach more patients and amplify messaging regarding the risks associated with counterfeits and the transnational criminal networks behind it.
How did you get into brand protection?
In law enforcement, I led and oversaw trade related investigations, including criminal networks involved in counterfeiting and proactively communicated risks associated to counterfeits, understanding that for consumers those risks may not be so apparent when compared to the other investigations I oversaw i.e., narcotics, terrorism, and gangs to name a few. Because of its importance, I invested and enhanced the agency’s trade enforcement programs and actively engaged the media. Now as a member of Pfizer’s Global Security team, I continue that work focused on protecting patients globally – as well as loved ones, because we all have patients in our lives.
What are the top 2 challenges in IP enforcement you see affecting brands over the next year?
Marketplaces worldwide need to better identify sellers. The “Whac-A-Mole” problem we’re all familiar with can’t be mitigated if the bad guys can generate new seller accounts and infringing listings with impunity. That’s the first problem. The second problem is the existence of low-cost direct-to-consumer shipping options from China to other countries. Of the roughly 2000 infringing listings my company has taken down, all the products sold originate from China. Most of these listings were for products that shipped directly from China to customers in the USA.
How can companies use customer feedback to enhance its brand protection program?
Customer feedback, especially via social media, informs our company about deceptive new tactics of infringers. Also, customers posting images of the infringing product in the customer feedback area of infringing listings often helps us prove to the marketplace that the advertised product infringes. Unfortunately the more adept infringing sellers instruct their customers in the product description, to avoid posting images of the purchased product. Such instructions to customers ought to be reason enough for marketplaces to remove listings and investigate sellers.
How can we or our companies better educate consumers about the harms of counterfeiting and piracy?
In our industry, IP infringement is more of a problem than counterfeiting. Few people think they’re buying the genuine, original product when they shop for 3d printing accessories on AliExpress, for instance. They hope to buy a product of comparable quality to the original product for a fraction of the price. Product quality and ethics aside, these buyers overlook a key benefit of buying the original: after-sales support. Companies that invent and manufacture their own products tend to give customers a better support experience than the dishonest companies engaged in IP theft.
How did you get into brand protection?
Mid-2017, I submitted a provisional patent application that started Slice Engineering’s patent portfolio. Chinese clones of our products appeared online within a month of our company’s first YouTube exposure in early 2018. The clones multiplied, unchallenged, for the next two years until the USPTO granted our first wave of patents and trademarks in 2020. At first, I enforced patents and trademarks on my own, with limited success, via the intellectual property platforms of individual marketplaces such as Alibaba and Amazon. That’s how I got into IP/brand protection, and the experience was frustrating. At the end of 2020, Slice Engineering joined MarketSafe and IACC-Amazon. Efficiency of takedowns improved dramatically. IACC has been Slice Engineering’s first line of defense ever since.
