News & Insights

Most people would be familiar with the basic rules of rugby – the common feature being a team carrying a ball from one end of the field to the other, without being tackled.

Imagine if your favourite team just stood there and let the other side take the ball and run past to score. It might sound silly, but your business might be the one being scored on.

Online platforms and the race to catch the fakes

Similar to sports, brands are in hot competition online – the main playing fields are social media platforms and e-marketplaces. Whether you like it or not, your brand is probably on one of these sites in one way or another. You can be using a platform authentically to make sales, by customers reselling items, or by infringers selling fake goods and rip-offs. You’d be amazed at the lengths scam sellers can go to make use of these platforms, some even being larger businesses that set-up smaller fake accounts to try and fly under the radar of competitors.

These infringers operate knowing that they can rack up points from businesses while they stand idly by because while you might not notice a fake brand account or product, your customers typically will. If customers can’t be confident whether the products they see online are legitimate, there can be grave consequences to product sales and reputation, making your brand seem untrustworthy.

Customers for example, expect most businesses to have an online presence that extends beyond an official website, such as a social media account or e-Marketplace presence, where they may offer special deals. Fakes or scams may negatively affect consumer confidence which is more than enough to call foul.

Employing a monitoring and takedown strategy

Businesses, in particular, B2C businesses, should have a social media and e-Marketplace monitoring and takedown system in place to protect the reputation of their brand. While it’s tempting to try submitting takedown requests yourself, just like with sports, it’s usually better done by the professionals.

Each platform has its own rules and processes that differ from each other and change fairly regularly. As one example, Macpherson Kelley’s IP team received a message from Google’s legal team (below), which gives an important update to the way Google’s search engine takedown system operates, effective from 24 July 2023.

(Copyright disclaimer: reproduction exempted under fair use for critical review s41 Copyright Act 1968 (Cth) and the authorship is clearly acknowledged as Google in the above article and via this disclaimer).

From a legal standpoint, our team believes the amendment made by Google is sensible and a smart way to ensure takedowns are filed responsibly against particular items, and not allow larger organisations to just issue blanket generic takedowns. However, this change also reinforces the fact that, as blanket takedowns aren’t being accepted anymore, businesses will need to ensure they have an active and ongoing strategy, executed by a takedown team.

Another item to keep in mind here that that Microsoft and its Bing search engine has its own completely different system, which is becoming more important as the browser becomes more popular. That is, there is no generic browser/search engine takedown system, each has its own processes to be followed.

Takedown submissions must be legally sound

It’s important to note that in submitting takedowns, the statements and processes used need to be valid from a legal perspective. Without legal guidance, you may jeopardise your ability to escalate a matter against a seller who turns out to be a large competitor or part of a more sophisticated infringement scheme. Think of this as the difference between making a legal or illegal tackle – you don’t want to be caught out by the referee on a technicality!

Gather your players and build your takedown team

If you don’t have a takedowns team in place, Macpherson Kelley can keep you onside. We have a range of options and smart pricing arrangements to suit most businesses.

Our team has proven experience acting regularly for household Australian brands in managing their takedown programs (in addition to safeguarding their intellectual property portfolios), so reach out if this article raised questions for you.

The information contained in this article is general in nature and cannot be relied on as legal advice nor does it create an engagement. Please contact one of our lawyers listed above for advice about your specific situation.