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.
What 2 things contribute to a successful brand protection program?
1) Close cooperation between the brand protection team, trademark team, and marketing teams. In particular, brand protection and trademark professionals should know the members of the marketing teams by name and meet with them regularly. You should know what their pain points are so that you can understand how to tailor your brand protection program in a way that synergizes with the company’s overall business plan.
2) Meet with business teams to identify key products and markets, and discuss different levels of enforcement. If they desire more aggressive enforcement in certain areas, they can become allies when it comes to budgeting.
How can companies use customer feedback to enhance its brand protection program?
Brand protection doesn’t have to be only about enforcement. Listening to the customers and understanding their priorities can help the company beat infringers in the market as well as in the courtroom. Most people would rather buy a product that they can trust, but brand name isn’t always enough. Engaging directly with customers can help fill in the gaps while also helping us keep track of where the counterfeiters are directing their efforts.
What is the most interesting place you have been to?
Tokyo, Japan. During college I spent a semester at Senshu University and stayed with a host family. I’ve traveled to many countries, and Japan is where I’d like to return most. There are countless interesting things to see and do around Tokyo. Additionally, I spent a short holiday in Hakone, and I would highly recommend a visit there to anyone who is planning a vacation in Japan.
What are the top 2 challenges in IP enforcement you see affecting your industry over the next year?
In our country, one of the challenges is to get law enforcement on board in matters where IP crime is being investigated. IP crime is to be found in criminal law in our country, with a maximum penalty of 4 years imprisonment. Nevertheless, it’s very difficult to enthuse law enforcement officers to assist in following up cases and to get suspects to be prosecuted.
Also: in the past years I have seen that Brand Protection has become a cost center more and more, rather than an important department with serious value to brand valuation and brand loyalty by customers. Of course, the COVID pandemic has been taking a role in this, but even after COVID the situation has remained the same.
How do you show your clients the value of brand protection?
I always try to draw the bigger picture and to make people (and also clients) aware of the impact counterfeit has on a larger scale. Terrorism, organized crime, but also the effects on our personal lives. Tax evasion, less sales in brick-and-mortar shops which causes unemployment, abuse of social welfare are topics which create awareness, in my opinion. A pro-active strategy on brand protection can be seen as a way to show social engagement.
What’s your favorite famous or inspirational quote?
“You are good in the way you are”. A friend of mine, founder of the largest sports club for children with a challenge (physical and mental issues) has been using this quote for years already, and the way the members of his sports club pick up this quote and make it their own gives me goose bumps every time. The impact of this quote is so much wider, it goes for all people on the planet.
What are the top 2 challenges in IP enforcement you see affecting your industry over the next year?
In my experience, the biggest challenges for us as investigators are the quickness and dexterity with which counterfeiters move. Bad actors have the luxury of prioritizing speed over quality. For example, as demonstrated by the explosion of counterfeit PPE following the onset of COVID-19, counterfeiters are incredibly motivated and efficient in identifying and exploiting areas of opportunity.
How do you show your clients the value of brand protection?
More often than not, a brand owner engages K2 Integrity when it has a strong suspicion or demonstrated evidence of a meaningful counterfeiting issue and needs investigative support beyond its own internal capabilities.
Working closely with internal stakeholders and outside counsel, as appropriate, we help the brand owner understand the scope of the issue and remediate it quickly and effectively. Our intelligence gathering is instrumental in helping clients trace counterfeit product back from its point of entry in the marketplace to its source and understand the methods by which their products are being counterfeited.
For complex investigations that proceed to litigation, we work closely with brand owners to support the litigation from the first phase through post-judgment recovery, ensuring that our clients are supported and well informed at every step.
What hobbies or causes are you passionate about?
I was never a “sporty” kid, but in my 20s found what’s turned into an enduring love for running. Though I’ll probably never win a race (or even come close!), running has been a great tool for me to practice patience with myself, learn how to operate in and move through moments of discomfort, and have a short memory for bad days.
Can you provide your top 2 best practices for protecting IP?
First, gather solid evidence of infringement. Second, use such evidence to settle early without going to trial. Even if it is clear that infringement has occurred, it is often unclear as to the actual scale of infringement and damages. Japan does not have discovery. And it is usually difficult to force infringers to disclose evidence even in a civil litigation. Thus, I often recommend my clients, especially in case of software piracy cases, to apply the preservation of evidence procedure permitted under Japanese law. In this procedure, a judge visits the infringer's facility to preserve evidence before a civil litigation is filed if there is a threat of destruction of evidence. Through this procedure, the rights holder can obtain solid evidence of the infringement without the need for costly and time-consuming civil litigation. In my experience, when preservation of evidence is conducted, infringers tend to agree to settle voluntarily, which can lead to early and remunerative resolution of the case.
How do you show your clients the value of brand protection?
I always try to explain concretely, based on relevant court decisions, that my clients may suffer enormous disadvantages (dilution, pollution, etc.) when they fail to take measures against brand infringement. I try to resolve cases in a way that brings tangible results (read: compensation) to my clients so that they can properly realize the benefits they will receive from enforcing their IP rights.
What is the most interesting place you have been to?
I have been fortunate to visit many interesting places around the world. My recent favorite spot is Hokuto-shi in Yamanashi Prefecture here in Japan. It is a small city that is about a two-hour train ride from Tokyo. Surrounded by mountains, on a clear day you can see striking views of Mt. Fuji to the south and the Yatsugatake Mountains to the north. The city has the longest daylight hours in Japan, and the vast fields of sunflowers that bloom vigorously in summer are spectacular. In winter, there are several ski resorts where I (attempt!) to fly down the slopes trailing after my wife and kids. The city is also home to some delicious sake breweries and a Suntory whiskey factory (the world-famous "Hakushu" is made there). If you ever have the chance to visit Tokyo, I recommend a trip there.
What 2 things contribute to a successful brand protection program?
1) People to assist with the laborious process of monitoring your IP at the frequency you need.
2) Understanding the most efficient and effective routes to removing infringement such as IACC Marketsafe Program and Amazon Brand Registry.
What’s one piece of advice you can give an SME looking to enforce their IP?
Empower your team with IP monitoring skills and clear categorization of infringements. Consult with an attorney that specializes in the type of IP registration and litigation you need, but develop a process to handle the day to day monitoring of your IP with your own team.
What hobbies or causes are you passionate about?
I love to create videos with my dog Huxley, @HuxleyThePandaPuppy. We document our adventures with over 6 million followers on social media. I’m passionate about using creativity and storytelling to uplift and inspire others. Additionally, I enjoy helping small businesses in reaching a broader audience by optimizing their video strategies.
