24 Aug 2020 The Proliferation of Pandemic
Handbags in the storefront of a fashion boutique store on the shelves
Authored by: Mat Brechtel and Tammy Chu
Vancouver, British Columbia – August 20, 2020
The growth of online retail since this March has been both astounding and sustained. It’s
unsurprising that accompanying that growth is the sale of fakes, and fraudulent websites to exploit
the unwary. In early 2020, much of the activity exploited the huge gap between the demand and
availability of PPE with fraudulent product offerings. The continuing shift towards online commerce
has encouraged a parallel increase in online hucksters and fraudsters.
A New Tool To Hide A Copycat
There are many legal tools to halt wrongful online conduct and pursue those engaged in dishonest
practices. However, on a practical level it may be simplest to prevent them from being found.
Google has recently introduced what may be a new tool to do just that—at least for some.
Recently, Google announced that it will be allowing users to report and remove web pages that sell
or promote the sale of counterfeit goods from its organic search results. Once reported, a Google
employee will then manually review the request to decide whether the web page should be removed
from its search results.
However, this new and relatively direct tool has some significant limitations.
First, it only targets counterfeit goods, being those that “contain a trademark or logo that is identical
to or substantially indistinguishable from the trademark of another” and “mimic the brand features of
the product in an attempt to pass themselves off as a genuine product of the brand owner.”
Second, it is limited to specific web pages selling counterfeit goods, as opposed to an entire
website, so it will be ineffective against anyone willing to quickly replicate a page at a new address.
It is worth noting that the tool mirrors Google’s Digital Millennium Copyright Act (DMCA) content
removal tool used to address copyright infringing material, and expands on Google’s pre-existing
ban on advertising counterfeit goods.
However, there is no suggestion that websites promoting the sale of counterfeit goods will have
their website ranking affected, as is done for persistent copyright infringers.
When Hiding The Copycat Is Not Enough
For those unable to fit within these limited capabilities, there are still many tools to deal with
increasingly frequent attempts to divert business away from those engaged in genuine online
commerce.
Where true fraud is occurring, the RCMP runs the very effective Canadian Anti-Fraud Centre, which
accepts reports of fraudulent online conduct, and can act quickly and decisively in the public
interest.
The Courts are also willing to grant website takedown orders, and orders to disclose identifying information of those who have posted infringing content by web hosts, domain registrars, or even
ISPs. Approaching the issue from the other direction, orders have been granted to have ISPs block
domains entirely for all their users.
Even Google has been ordered to fully de-list websites which are engaged in persistent
infringement.
Of course, there is no shortcut for proactive monitoring, preventative measures like obtaining
trademark registration, and targeted brand protection strategies, which are the necessary first steps
to mitigating reputational risks and financial damages posed by fraudsters and counterfeiters.
Mat Brechtel is an intellectual property partner at global law firm Norton Rose Fulbright in
Vancouver with extensive experience dealing with trademarks, branding and marketing, and Tammy
Chu is an articling student. Norton Rose Fulbright sponsors the HyperGrowth program with BC
Tech.