• news-banner

    Expert Insights

Counterfeit goods – online platforms and luxury brands take a new collaborative approach

Online retail has been increasing for the best part of a decade due to a shift in consumer behaviour and even more so during the Covid-19 pandemic with high street and luxury brands forced to close their doors to comply with government restrictions.

Naturally with the increase in online retail comes the inevitable risk of potentially purchasing counterfeit goods. Infringers will attempt to sell their counterfeit goods through well-respected and extremely popular online platforms, such as Amazon, eBay and Facebook, as third party sellers.

Last month, it was reported that social media platform, Facebook, and luxury brand, Gucci, have filed a joint lawsuit in California against a counterfeiter who had allegedly been using Facebook and Instagram accounts to sell counterfeit Gucci products. This joint lawsuit follows numerous attempts by the platform to take down over 100 Facebook and Instagram accounts, which repeatedly kept reappearing.

The lawsuit is based on the unauthorised use of various trade mark registrations owned by Gucci. The famous trade marks were applied to inferior quality goods and made available for sale on the social media platform. Such activity is also in breach of Facebook’s terms of use. The acts of the counterfeiter ultimately resulted in misleading the public as to the origin, and quality, of the goods.

Commentary:

Due to the increase in online retail and the various different retail channels available to consumers, brands will want to protect and preserve their reputation as much as possible in the midst of this change in consumer behaviour. As such, it is so important (now more than ever) for brands to be vigilant and, where necessary, take action against counterfeiters to protect their reputation and value in their brand.

This joint action filed with Gucci is a first for Facebook, although Amazon has already taken such an approach with filing lawsuits along with luxury brands such as Valentino and Ferragamo. This strong, collaborative approach shows a shift in the attitude of dealing with online counterfeit goods.

It has not been uncommon to see luxury brands taking action against online platforms for not preventing the sale of counterfeit goods, but now efforts appear to be turning towards the counterfeiters themselves. Arguably, not a surprising shift in approach to counterfeit goods by brands themselves, but what is surprising is the shift in action of the online platforms. In the past, submitting takedown notices to the platforms would be the normal course of action, however, due to the now modernised, sophisticated counterfeiter, it looks like the mere use of takedowns is not enough.

Online platforms are now under more pressure to be more proactive in their approach to tackling the ever-escalating issue of counterfeit goods, particularly in the US, which this lawsuit demonstrates. There has been some increase in pressure over the last decade from the EU Commission, which adopted two reports concerning Memoranda of Understandings, which requested signatories (including online platforms and rights holders) to adopt certain measures and ‘enhanced co-operation’ with authorities, in order to tackle the issue of counterfeit goods online. However, it would certainly be interesting to see whether such pressures mount in the UK and EU following the outcome of this case in the US and whether such joint actions will become prevalent going forward.

Watch this space!

Our thinking

  • Mastering Claims Against Estates: A Guide to Debt Enforcement in Switzerland

    Remo Wagner

    Quick Reads

  • The new UK-India Free Trade Agreement – a significant development for both nations

    Kim Lalli

    Quick Reads

  • Token2049 week - what's on the horizon?

    Racheal Muldoon

    Quick Reads

  • Rebecca Steer writes for Artificial Lawyer on GenAI, copyright and the future of innovation

    Rebecca Steer

    In the Press

  • Computing quotes Gareth Mills on a major antitrust case involving Google

    Gareth Mills

    In the Press

  • Charles Russell Speechlys advises long standing client Puma Growth Partners on its investment in LOVE CORN

    Ashwin Pillay

    News

  • Global Insight quotes Shirley Fu, Tom Wong and Victoria Younghusband on trends in corporate activity in China

    Shirley Fu

    In the Press

  • PRC amends its AML Law to regulate specific non-financial institutions

    Shirley Fu

    Insights

  • New Government guidance for businesses on section 54 statements under the Modern Slavery Act

    Kerry Stares

    Insights

  • Buyouts Insider quotes Darren Bailey on private equity's increasing interest in sports

    Darren Bailey

    In the Press

  • Government received 11,500 responses to AI and Copyright Consultation

    Rebecca Steer

    Quick Reads

  • City AM quotes Darren Bailey on the compliance of NBA Europe's format and salary cap with EU law

    Darren Bailey

    In the Press

  • Dubai free zone companies can now access mainland

    Mo Nawash

    Quick Reads

  • Data protection in the UK: Charities anticipate green light to rely on direct marketing exemption

    Courtney Benard

    Quick Reads

  • UK Government’s Consultation on Copyright and AI: What’s Next for AI Developers and Creators?

    Rebecca Steer

    Insights

  • Charles Russell Speechlys ‘Client Conversations’ features Giles Pocock – VP of Brand and Marketing at Bowers & Wilkins

    Simon Ridpath

    News

  • Corporate Transparency Act: I’m still alive but I’m barely breathin’

    Timmoney Ng

    Quick Reads

  • Guide to launching online consumer brands in the UK – 10 essential steps

    Rebecca Steer

    Insights

  • Retail Week quotes Ilona Bateson on the strengths of the Fast Retailing and Uniqlo brands

    Ilona Bateson

    In the Press

  • Insights for companies from recent ISSB publications on materiality and voluntary application of the ISSB Standards

    Kerry Stares

    Insights

Back to top