IP DETECTION

“ A PROSPECTIVE CLIENT OF AN IP INVESTIGATOR NEED NOT WORRY ABOUT THE POSSIBILITY OF OUTSOURCING TO A ‘SMALL-TIME’ PRIVATE INVESTIGATOR. IP INVESTIGATORS ARE NOT RESTRICTED BY BORDERS, MOUNTAINS AND OCEANS”

“Infringement centred on fast-moving consumer goods,” says Ho. “Tey were easy to copy and reached a large consumer base.” Nowadays, counterfeiters have become more of a threat to leading brands. Te extent to which they will go to infringe IP has increased alongside the financial muscle of the Chinese consumer, so much so that it is now possible to get not only quality from copies. She says: “Now a lot of the counterfeit products are launched before the real thing makes it into the market, and as more and more make it into official distribution channels, even retailers cannot distinguish between what is fake and what is real.”

firm. As a result, investigative companies exist as an outsourcing possibility, and though an IP investigator may have a speciality, clients can approach them for all sorts of things. Robinson says: “Our activities range anywhere from investigating the use of a trademark by a third party, all the way up to more complicated issues such as investigating counterfeiting and grey marketing issues, [as well as] the anonymous acquisition of IP assets on behalf of our clients, most typically domain names and trademarks.”

Global investigations

Te ways in which IP can be infringed are matched by the number of distant shores on which infringement can take place. A prospective client of an IP investigator need not worry about the possibility of outsourcing to a ‘small-time’ private investigator. IP investigators are not restricted by borders, mountains and oceans. Robinson says: “One minute we could be investigating a toy-making company in South America, the next minute we could be investigating a producer of counterfeit clothing in Taiwan, and the next minute we could be trying to buy an IP asset from an owner in the States.”

Te emergence of China as a strong economic power has led to it becoming a key battleground for IP investigators. IP infringement began to really take hold in the country about 20 years ago, says Violet Ho, a managing director at risk consultancy firm Kroll. As China opened up to the outside world, its export-orientated economy made it a large producer of consumer products.

Te ability to beat brand owners to the release of a product in China may change the way IP investigators tackle the counterfeiting problem. Usually, an IP investigator on the ground in China focuses solely on doing market sightings and conducting raids, so their entire workload is based on the quantity of counterfeit goods confiscated, says Ho. Tis can lead to investigators conducting ‘fake raids’ to illustrate they are doing something, while the ‘confiscated goods’ quickly make their way back to the market. She says: “When choosing an investigation company, be very wary of investigators who promise everything. Be wary of the wording of their business models —they may be misleading.”

One of the best ways to address counterfeiting may be to establish the link between IP holder and counterfeiter. Te origins of the counterfeit problem may come from within the company itself, says Ho, so the key is finding out where a potential IP leak might occur. “Tere are a lot of investigative methodologies that may be adopted,” says Ho. “A background check on company employees who have access to a company’s IP might illustrate whether they are linked to any external parties or small companies that are engaging, manufacturing or distributing counterfeit products.”

A prospective client may only have a specific issue in need of investigating, so identifying the right IP investigation company to use may be difficult if they all do a little bit of everything. IP investigation companies are similar to some law firms in the sense that they oſten have a speciality, or at least a service that results in repeat business from existing clients. Farncombe International is oſten hired to investigate whether a particular trademark is ‘in use’ and, if so, to what extent it is being used. Tese cases generally open when a client’s marketing department launches a new brand with a new name, says Robinson. Te client’s legal department steps in if the new name has the potential to infringe existing trademarks that are either similar or identical. Te IP

18 World Intellectual Property Review May/June 2010

investigator is then called in to determine what these trademarks are used for, if they are used at all, says Robinson.

Talent pool

As an organisation, an IP investigation company develops its investigative abilities from the personnel that it employs. The common misconception among prospective clients, according to Robinson, is that investigation companies are thought to employ a group of former law enforcement officials, such as ex-police officers. When selecting an IP investigator, prospective clients should remember that they are seeking to hire a corporate-savvy organisation, not freshly retired detectives. He says: “Te personnel [at Farncombe International] are drawn from a wide range of areas, generally from professional backgrounds and disciplines.”

Indeed, not only are some IP investigators familiar with the corporate environment, but they are familiar with IP too. Robinson is from a legal background, having trained and practised as an IP litigation solicitor. Other skills are desirable too. Robinson says: “Te other sorts of people we employ tend to have language skills or IT skills, or to be drawn from various areas of industry where their experience may have applications to the sorts of things that we do.”

Tis is echoed by Taylor, who in fact takes this one step further: he considers his investigators to be “experts” at IP investigations. Almost all of Marksmen’s investigators began their careers in professions other than the IP or investigative fields. Taylor was an actor and a playwright before entering the investigative industry. He says: “Most of them started out in the arts: actors, writers, musicians and stand-up comedians. Tese are good skill sets to have in one’s quiver before employing other investigative strategies.”

IP investigators may be partners in the protection of IP and the prevention of infringement. Tey are familiar with the potential threats to IP, so they know what to look for before infringement happens. Te investigator frequently hunts in many different haunts, so they know the local language, customs and sources—the requirements necessary for successfully conducting an investigation. But it is the job of the client to restrain the IP investigator if the methods they propose do not meet the client’s moral code, because not to ask is not to get. Clients who are explicit in their instructions to an IP investigator will get the most benefit from an outsourced investigation.

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