Global IP Matrix - Issue 3 - Jan 2019

Keywords
no prohibition of the use of contentious
keywords in the listings (i.e. “replica”)
no prohibition of terms implying the
products’ counterfeit nature (“A-class” and
“mirror-class” in Korean)
Procedure
unreasonably stringent enforcement
requirements
cumbersome takedown procedure
requiring official complaint with a
physical print out of all infringing URLs
takedown documents must be signed/
stamped/scanned by company
representatives and sent via email for
assessment
Proactiveness
lack of proactive measures to detect illegal
listings
weak system for vetting of sellers
shortcomings with regards to proactive
detection/identification/removal of
counterfeit listings or
no proactive measures employed for
detection or removal
some platforms use image recognition
systems to identify violations but other
automatic technologies are also needed
in order to help analyse and correlate
product, price, and image related
information to flag suspicious listings for
further analysis
Timeliness
unreasonably long processing time for
removals
some sellers allowed up to 5 days to remove
reported listings
The List - An Effective
Tool, to…
raise consumer awareness concerning the
environmental, product safety and other
risks of purchasing on these marketplaces
encourage the operators and owners to
take the necessary actions and measures
to reduce the availability of IPR infringing
goods or services
encourage responsible local authorities
and governments to maximise their efforts
to investigate reports of IPR infringements
in such marketplaces, and to pursue
appropriate enforcement actions
raise awareness to consumers that might
be buying products in those marketplaces
raise consumer awareness concerning
environmental, product safety and other
risks of purchasing on these marketplaces
thwart the deception of online shoppers
by these e-commerce platforms misusing
such rogue merchants as a marketplaces
urge the owners and operators of these
marketplaces to adopt business models
that rely on the licensed distribution of
legitimate content and products
promote a better partnership between
the owners / operators / right-holders /
enforcement authorities
encourage their operators and owners to
crack down on intellectual property abuse
The commission also proposes to
encourage the specialisation of national
judges for IP and the systematic
publication of national judgements in
IP enforcement cases and has provided
guidance on existing EU laws.
“With the planned Watch List the
Commission intends to identify
concrete physical and online
marketplaces, located outside the
EU, which engage in or facilitate
IP infringements, in particular,
counterfeiting and piracy.”
What did the report
mean for brands?
effective international rules and a solid,
predictable legal system for rights-holders
What the report does not mean for brands?
IPR owners cannot expect any immediate
effect from this initiative
ultimate responsibility still on brand
owners to enforce their IPRs worldwide
sole monitoring of online marketplaces is
not enough and other tactics must also be
employed (i.e. Offline Enforcement)
physical factories must be identified,
supply chains made transparent and
physical evidence obtained (i.e. test
purchasing, etc)
E-Commerce
Recommendations
The Recommendations aim in particular at
clearer notice and action procedures and calls
for the following;
more effective tools and proactive
technologies to detect and remove
counterfeit listings and other illegal
content
more transparency on online platforms
closer cooperation with right-holders and
enforcement authorities
more effective measures to detect and
remove counterfeit offers
increased level of cooperation with rightholders
and enforcement authorities
more clarity of the platforms’ terms of
service regarding prohibiting their use
to sell or otherwise trade in counterfeit
goods and services
more effective vetting of the sellers who
are trading on the platforms
more effective automated risk
management tools to identify high-risk
behaviours and potential red flags
The “Nice” List
The following platforms are not listed in EU’s
Counterfeit and Piracy Watch-List.
Aliexpress.com
Amazon.com
eBay.com
Taobao.com
Tmall.com
1688.com
Despite ongoing efforts by Aliexpress,
Amazon, eBay, Taobao, Tmall, and 1688.com,
there is still a significant volume of counterfeit
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goods being offered for sale. On these sites,
however, regards the above-listed e-commerce
platforms, it was also reported that;
a higher level of compliance with
the recommendation on measures to
effectively tackle illegal content online
better cooperation with right-holders
apply both proactive and reactive
measures to detect and remove counterfeit
offers
apply terms of service that include IPR
protection policy prohibiting the use of
their platforms to sell counterfeit products
or to provide other infringing services
adopt a number of good practices to
enforce the terms of service vis-à-vis
traders and to cooperate with rightholders,
including tools allowing
right-holders to register their brands,
report counterfeit listings and fast-track
takedown procedures
some platforms also reportedly partner
more closely with brand owners and
content creators to optimise detection
models
some platforms apply different
technological measures seeking to reduce
the availability of counterfeit offers, such
as
automated risk assessment tools
image recognition
semantic recognition algorithms
item-tracing authenticity services to
help consumers verify the authenticity
of products
Further progress is
still required
However, according to stakeholders, further
progress is needed to ensure that offers of
counterfeit products disappear from these
platforms or are significantly reduced
improved trader vetting systems
adoption or improvement of automated
risk management and detection tools
to identify high-risk behaviours and
potential red flags, including dealing with
repeat infringers and suspicious offers
better responsiveness to takedown
requests
more consistency in dealing with similar
cases
increased cooperation with right-holders
(i.e. by simplifying access to the brands’
registers)
The following indicators are not sufficiently
relied on by the platforms when proactively
identifying suspicious listings:
unusual low price level
overly long shipping time
seller history and feedback
lack of pictures of actual products offered
unauthorised use of catalogue pictures
use of pictures that are not showing
labels of the product
an absence of information in the
listing description (often making
it impossible for brand owners
or consumers to determine the
authenticity of the products
An Example of Existing
Best Practice
Real Deal Online Code of Practice http://
www.realdealmarkets.co.uk
The Real Deal Online programme has been designed
to assist administrators of social media selling groups
in discharging their legal responsibilities in relation
to consumer sales by means of their sales group.
The programme requires administrators to liaise
with their local enforcement authorities, to welcome
enforcement officers as members of the group and to
agree to the Real Deal Online Code of Practice, which
comprises just five simple steps:
to prohibit the sale of counterfeit and other illicit
goods
to act on information from IPR owners/
representatives reporting the sale of illegal goods
to notify law enforcement if they believe that
illegal goods are being sold within the group and
to exclude the sellers of such goods
to highlight warnings and advice notices posted
by law enforcement
to make sure that all members of the group are
aware of its fake-free policy
“The Watch-List is clearly a step in the right direction,
but we need more collaboration and continued
commitment from all stakeholders to continue
developing best practice methodologies such as the
excellent example set by the UK’s Real Deal Online
Code of Practice” Lisa Lovell, CEO, BEUK.
www.gipmatrix.com
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