The coronavirus pandemic has brought an intense focus on the importance of anti-counterfeiting, the brand protection heads at Diageo and Mattel told Global Legal Post’s Anti-Counterfeiting World Law Summit this week.

In a keynote interview at the online event on Tuesday (22 June), multinational toy company Mattel’s associate general counsel and global head of trademarks and copyrights Michael Moore said: “These trends were already there prior to the pandemic, but now we’re in a situation where counterfeiters can reach out directly and sell to consumers in the US and Europe and hide on the internet and be anonymous.” 

Government-imposed lockdowns around the world have forced customers to flock online to shop for their favourite brands. Moore, who was being interviewed by conference co-chair Louise Butler, global head of brand protection at drinks giant Diageo, said Mattel’s online sales accounted for a third of its revenues at the end of last year – a milestone the company hadn’t expected to hit for another five years.

Butler said the pandemic had also increased Diageo’s focus on online sales – something the company was less focused on pre-Covid. But that broader shift online meant the volume of counterfeit goods had increased.

She said: “One of the concerns we have is a lot of the consumers of our products who are going to be purchasing online will be doing so for the first time, and are much more likely to be duped into buying counterfeits, so we’ve really had to accelerate our response to the online threat.”

Combating counterfeit sales online meant investing in technology, said Moore. “There is really no way to conduct a proper anti-counterfeiting programme online now without technology, you can’t do it manually like we used to,” he added. 

Given there are hundreds of online marketplaces around the world, brands need to adopt technology that can gather data from all of those sites so they can identify offending parties and maintain an enforcement programme that is effective for their business, Moore said.

Moore said that Mattel realised the value of having a robust anti-counterfeiting programme following an experiment the company carried out in 2018 with its Uno card game brand. Mattel successfully removed around 1,800 counterfeit listings in three months, with sales surging by almost 200% over the same period.

“We started selling so many that we ran out and that really woke the business up to the importance of online anti-counterfeiting,” he said.

However, Moore added that it was vital that in-house legal teams partnered with their business on anti-counterfeiting measures in order to demonstrate the value and return-on-investment such programmes can deliver.

He said: “If you don’t partner with them and you just start off on your own programme, at the end of a three-month period… sales might go up, but a lot of time the sales team might take credit—so you really have to partner with them so they can see the ROI really clearly.”

Other speakers at the inaugural summit included Ed Barker, head of IP and legal governance at Manchester United Football Club and Ryan Adams, international legal counsel at NBC Sports, who discussed anticounterfeiting strategies in sport.

Hoffmann-La Roche's chief trademark officer, Tapio Blanc, was also on hand to highlight the dangers of counterfeit vaccines, treatments and medical equipment and outline strategies for combating them with conference co-chair, IP writer and commentator James Nurton.

The event’s sponsors were Epstein Drangel, AA Thornton, Cervieri Monsuarez, Colt & Mosle, Curtis Mallet-Prevost, Horus, Kestenberg Siegal Lipkus, Reinhold Cohn Group, SICPA, Smart Protection and tesa scribos. 

Further reading

'We are in something of an arms race' - IP chiefs on the global fight against fakes