It has been widely reported that the COVID-19 pandemic has strongly fostered e-commerce. In Brazil alone, e-commerce sales have increased over 68% in 2020 when compared to 2019, according to the Brazilian E-commerce Association (ABComm). This trend has also led to an expansion on online IP infringements such as illegal streaming, set-top boxes providing unauthorised access to pay-per-view television channels and the sale of counterfeit products on social media and marketplaces.
Other than the online expansion of existing infringements, IP owners are facing an unprecedented escalation in the number of new online frauds. One example of an inherently online IP infringement is the unauthorised use of third parties’ marks and trade dress in application names for mobile phones.
The unauthorised use of trademarks in application names seems at first easy to tackle. A search on the app stores from the two major operating systems would be enough to unveil the infringement and enable take-down requests. However, infringers will often avoid the main operating systems and will use different platforms which have less stringent compliance rules.
Moreover, there have been infringements that go beyond trademark use in the application name and are serious enough to undermine brand reputation. For instance, the Daniel Law team came across financial scam apps which claimed to have a partnership with a giant tech company. The claims were evidently false but were amplified through influencer marketing and helped mislead consumers.
The same financial scam used an application name which was a registered trademark owned by an international company from a completely unrelated industry. As a result, the company started to receive messages from misled consumers asking if this unrelated company had a connection with the infringer.
Finally, the Daniel Law team have witnessed an expansion in the unauthorised use of trademarks in delivery services which have also become extremely popular in the time of the pandemic. As an example, a Brazilian delivery app had its trademark and trade dress reproduced or imitated by over 170 third parties in different local jurisdictions.
In this challenging scenario, IP owners should diversify enforcement efforts through real-time online investigation and monitoring combined with immediate take-down action and further traditional legal measures when necessary.
André OliveiraPartner, Daniel LawE: andre.oliveira@daniel-ip.com
