INTA 2015: Navigating the 'minefield' of online counterfeits
Brand owners have been encouraged to register their rights in multiple jurisdictions to avoid a potential “minefield” when looking to protect their rights online, a roundtable discussion has heard.
The warning came during a breakfast table meeting hosted by online brand protection company NetNames at the International Trademark Association’s (INTA) annual meeting in San Diego today (May 6).
David Franklin, NetNames’s global sales director for brand protection, was joined by lawyers from China, India and Canada to discuss the growth of online counterfeiting and the best strategies for protecting IP online.
Running through some statistics related to Chinese online e-commerce company Alibaba, Franklin said that sales on the platform are currently higher than eBay and Amazon combined.
He added that overall e-commerce sales in China have overtaken those in the US and that between 2013 and 2017 sales were expected to increase from $300bn to $700bn.
“Clearly this is a vast scale but the problem we have is that China, as well as being a counterfeit hub, is now also an online marketplace for genuine brands,” he said. “The country’s increasing affluence has lead to more genuine brands trying to target Chinese consumers.”
Franklin was then asked about the best way for a brand owner to ensure success when sending a take-down notice to an online marketplace.
“You will need to have a registration at home as well as in the base of the relevant online retailer,” Franklin said. “For example, Alibaba is happy to accept a US or EU-registered trademark when assessing a take-down notice on its main site (alibaba.com), but to have a claim on Alibaba’s Chinese website (alibaba.cn) you would need a Chinese trademark certificate.
“If a brand found its trademark was being infringed or it was being counterfeited, it would have to rely on a registered trademark in China even if the product was being shipped to customers in the EU or US where it does have protection. “It can be a bit of a minefield to navigate,” he added.
Ajita Patki, legal associate at law firm R. K. Dewan & Co in Pune, India, then asked what would usually happen after a take-down request is sent. “Can a seller simply re-submit the product or are they put on a block list?”, she asked.
Franklin said Alibaba operates a “three strikes and out” policy whereby a seller is blocked if three take-down requests are sent.
“Alibaba gives a seller the right to counter claim. If they are legitimate, they will issue a counterclaim and Alibaba will ask what they want to do about it.
“Most online marketplaces have the same method; a take-down request should probably be sent to the platform and not the seller as it takes the emotion and heat out of the discussion.”
Kevin Fan, partner at An, Tian, Zhang & Partners in Beijing said that, based on what clients had revealed to him, 90% of e-commerce customers in China were using Alibaba and its platforms Taobao and T-Mall.
NetNames also hosted a second roundtable this morning on the lessons learned from the first phase of the new generic top-level-domain programme.
The INTA annual conference finishes today.
