How To Remove Counterfeit Goods From E-commerce Sites In South-East Asia
How to Remove CounterfeitGoods from e-commerceSites in South-East AsiaFor free, confidential, business-focusedIP advice within three working daysE-mail: question@southeastasia-iprhelpdesk.eu1. South-East Asia: Counterfeit goods and the internetSouth-East Asia: Counterfeit goods andthe internetHow to spot infringing content onlineLiability for selling counterfeitsTools provided by popular e-commercesites in South-East AsiaHow to use online infringements in yourIP enforcement strategy in South-East AsiaCase studiesTake away messages8Glossary of terms9Related links and additional informationA growing middle class coupled with increasing internet access has ledto fast-paced e-commerce growth in South-East Asia (SEA) in the pastdecades. The middle class population of ASEAN, according to expertestimates1, may grow from 190 million in 2012 to 400 million in 20202.Additionally, there are approximately 200 million people in South-EastAsia with access to the internet and this number is expected to growthree-fold by 2025. As a matter of fact, e-commerce sales in the regionare expected to increase from USD5.5 billion (approx. EUR4.7 billion) in2015 to USD88 billion (approx. EUR 7.5 billion) in 2025.Apart from being a forum for legitimate vendors and original products,the internet is also used by unscrupulous businesses as a platform for thedistribution of counterfeit goods which infringe intellectual property rights(IPR). The explosive growth in access to the internet has resulted in a shiftin the modus operandi of counterfeiters to move their illegal activitiesonline. Online e-commerce websites might become easy and anonymousoptions for counterfeiters to reach out to potential customers as wellas popular social media platforms. A recent study reported that 20 % of750 000 posts on the popular social media platform Instagram alone, inrelation to well-known fashion brands, involved the offer of counterfeitproducts for sales, with many of the vendors identified as being based inChina, Malaysia and Indonesia among others3.Beyond the avenues of online e-commerce and social media platforms,there has been a growing trend of counterfeiters making use of personalcommunication channels to affect their sales (such as mobile applicationsoftware and Facebook pages). These online sellers are technologysavvy and liberally use popular messenger applications such as Telegram,Whatsapp and WeChat to peddle their wares. Especially these messengerapplications are often secured with end-to-end encryption which allowscounterfeiters to operate in privacy and free from any official over-sight.123Nielsen corporation’s 5/?IR TThe study, Social Media and Luxury Goods Counterfeit: a growing concern for government,industry and consumers worldwide (available here via The Washington Post’s website)
2How to Guide - How to Remove Counterfeit Goods from e-commerce Sites in South-East Asia2. How to spot infringing content onlineThis guide aims at providing you with information onthe regulations governing e-commerce and a practicalintroduction on how to have infringing products removedfrom the largest e-commerce sites popular in South-EastAsia in case the issue may arise.The majority of countries in South-East Asian countriesprovide legal protection of IPRs including trade marks,copyright, designs and patents on the online sphere.Regulations relating to the internet stipulates that if any IPprotected material is uploaded without the right holder’sconsent, he/she may request, in writing, that the e-commercesites removes the infringing good, or removes the relevantwebsite from the e-commerce platform and disables accessto the IPR infringing material. This kind of written warning isknown as a ‘take-down notice’. The general rule is that if thee-commerce site removes the infringing content followinga ‘take-down notice’ it will not be held liable for any IPRinfringement. If however, the ISP knew or should haveknown about the infringement, the e-commerce site maybe held liable jointly along with the person who uploadedthe infringing content. Please note that different countriesin South-East Asia may apply different regulations in thisrespect and therefore it is recommended that EU SMEs wouldconsult with local experts to understand the local laws andregulations applicable in the country of their interest.Some of the top e-commerce sites in South-East Asia areCarousell, Lazada, Shopee, Taobao and Zalora. EU SMEsdoing business in South-East Asia should include thesepopular e-commerce websites and platforms when activelymonitoring possible infringements in their routine onlinechecks.Checking these websites could be a good starting pointwhen screening for counterfeit products in South-East Asia.While searching for names which are identical or similar toyour brand or product name, when searching for counterfeitproducts on these e-commerce sites, you may wish to typein the following keywords that could allow you to quicklyidentify counterfeit products:1)2)3)4)Brand name / Product name “Grade AAA”Brand name / Product name “Replica”Brand name / Product name “Inspired”Do not forget to search for your brand or product namealso in local scriptsSome useful indicators that counterfeit or unlicensedproducts are being offered for sale are as follows:1) The products are sold at a much cheaper price below itsmarket value;2) The seller is not part of your official distribution orauthorised channel in South-East Asia;3) The seller has a large number of listings and many unitsfor sale (i.e. powersellers);4) The product is listed several times with a wide variationbetween prices for each listing.
Free Business Tools to Manage your IP in South-East Asia33. Liability for selling counterfeitseIn order to avoid liability, various e-commerce sites havedeveloped systems to aid ‘take-down notice’ processes totheir websites and platforms which can be used by IP rightholders that deem their rights have been infringed. EU SMEsshould always remember that exercise a ‘take-down notice’is different from actual IP enforcement legal actions andtherefore do not constitute a legal decision nor an executiveright in relation to the infringement.In many SEA countries, the sale of counterfeits will alsoattract civil liability along with penal sanctions. When a civilaction is brought before the courts, the IP right holder willbe usually entitled to the following remedies if he/she issuccessful in his/her legal claim: An injunction against the infringer restraining him/herfrom selling counterfeits; Damages or an account of profits; Delivery up of the counterfeit products.The law in each South-East Asia country will vary and itis best to seek legal advice from the country in questionto understand how best to protect your IPRs in differentcountries.It is worth noting, however, that if it turns out that thevendor is indeed re-selling genuine goods or ‘second hand’products, they are regarded as “parallel imports” andnot as counterfeits, and such sales, although generallyunauthorised, are usually permitted in various SEA countries.For instance in Singapore, if threatened by legal action, suchvendors could possibly have a claim against the IPR holderunder the basis that the latter has made groundless threatsof IP infringement. Accordingly, it is always prudent for EUSMEs to ensure that the goods in question are counterfeitsbefore commencing any official correspondence with thee-commerce platform or the vendor.As an example, in Singapore, anyone who sells any goods towhich a trade mark is falsely applied can be found guilty ofan offence. The seller will be liable for a fine not exceedingSGD 10 000 (approx. EUR 6 000) for each good to whichthe trade mark is applied or to imprisonment for a term notexceeding 5 years or both.This is unless the seller:(a) took reasonable precautions against committing anoffence;(b) had no reason to suspect the genuineness of the mark;and(c) on demand made by the prosecution he gave all theinformation in his power with respect to the person fromwhom he obtained the goods.Generally, in South-East Asia, there is no express legislationin place providing for the e-commerce sites’ responsibilityin combating the proliferation of counterfeits being soldonline. Thus, e-commerce sites which confine themselvesto an intermediary role are unlikely to be found liable forIPR infringement. Any process or workflow provided bye-commerce sites to handle counterfeits, outside the scopeof any potential copyright infringement, is a matter ofdiscretion for the e-commerce sites.To address the general gap in legislation, EU SMEs canconsider taking active steps to educate e-commerce sitesand other intermediaries to their trade marks and other IPR,and share concerns about the counterfeiting problem. It isalso encouraged that open dialogue with e-commerce sitesbe commenced so as to establish best practices, such astake-down processes, keyword and content filtering.4. Tools provided by popular e-commerce sitesin South-East AsiaIn many cases, e-commerce sites are willing to work withbrand owners to take down counterfeit products that arebeing sold on their sites. Some of them also take productauthenticity very seriously and launched their own guidelinesto inform users and sellers that the sale of counterfeitproducts on including any products that have been illegallyreplicated, reproduced, or manufactured, is strictly prohibited(for instance in the case of Lazada and Zalora).E-commerce sites also provide general terms and conditionsin their agreements with sellers including policies ad hoc inrelation to the liability for selling of counterfeits promotingresponsibility of the sellers in relation to the goods sold.However, in many countries of South-East Asia where lawsand regulations are not very developed in relation to theinternet activities and online selling or, in countries wherethe regulations are present but however IPR enforcementis still challenging, online infringement is still widespreadand EU SMEs should take a very proactive approach to spotinfringing goods which may damage their reputation onSouth-East Asian markets, especially when these are newmarkets for their products or a launch of new products, aslocal customers are not yet familiar with the features of theoriginal goods to the point to be able to identify the lack ofquality in the counterfeit ones.
4How to Guide - How to Remove Counterfeit Goods from e-commerce Sites in South-East AsiaTake-down Notice: what you need to knowEU SMEs that believe their IP rights have been infringed bye-commerce platforms should issue an immediate take-downnotice to the e-commerce platforms.Necessary documentsGenerally, the set of documents that shall submitted to thee-commerce site are the following:a. Proof of identity - For companies this includes businessincorporation certificate or company license. Forindividuals, their identification documents such as apassport or national identification card are required. Forauthorised agents (when allowed by the local regulations)this includes the above proof of identity plus the relevantauthorisation if the agent is not the IP owner.b. Proof of IPR ownership - The IP registration certificate orcopyright recordal certificate is necessary.c. Links and Webpages - The exact links to the webpages ofthe infringing listings and details of the listings which youare requiring to have removed.The e-commerce site will then handle the complaintaccording to its own policy and terms to remove counterfeits.Please note that the e-commerce site might receivean objection to the complaint by the seller by mean ofsubmitting a counter-notification.Overview of the general processAs mentioned above, once the ‘take-down notice’ is receivedeach e-commerce site will react according to its own policyand this may vary according to the e-commerce site inquestion as well as the laws and regulation of the countrywhere the e-commerce site is based. However, a generalbreakdown of the process can be summarized as follows:Step 1. The IPR owner submits proof of his identity andproof of ownership of IPR in the system on his/ herown initiative after spotting the infringement;Step 2. The e-commerce site performs checks on theformality of the claim;Step 3. The alleged infringer will receive a notification withregard to the IPR complaint from the e-commercesite;Step 4. The alleged infringer can submit a counternotification showing that he/she is an authorisedparty or can confirm the case;Step 5. In case of a counter-notification, the IPR owner caneither accept the counter-notification or submit thecase for dispute;Step 6. According to the policy of the e-commerce sites, thecompany may have created specific programmeswhere IPR holders can register as a member toprovide in advance IP ownership by filling in astandard form notice. The dispute will be handledthrough this programme, and they will decidewhether the listings will be deleted or not.There is generally no charge fee for registration andsubmission of IPR infringement claims though the ‘take-downnotice’.In the case of the two e-commerce platforms Carousell andQoo10, there are for instance clear policy guidelines when itcomes to dealing with counterfeit products.First, Carousell and Qoo10 will force the seller to take downthe counterfeit products from their website once they aregiven notice of the offer for sale. As a brand owner and trademark owner, EU SMEs should send a notice of infringementto Carousell and Qoo10.Second, if there are repeated reports and complaints of aparticular seller who has selling counterfeits, Carousell andQoo10 will either suspend or terminate the seller’s accountentirely.Popular e-commerce platform eBay also has a “VeROProgram” to facilitate the take-down process as stated above.Under the VeRO Program, IPR holders register with eBay asa member under this program and proves ownership over aspecified IPR in question. After becoming a member, the IPRholder is able to complete and send a standard form noticeof infringement to eBay, who will act accordingly to takedown the product listing. The VeRO Program also provides fora standardized system and workflow for legitimate sellers tocontact the IPRs holder to clarify any mistaken takedowns.A similar process has also been created by e-commerceplatform Alibaba as “AliProtect – Intellectual PropertyProtection System”.
Free Business Tools to Manage your IP in South-East Asia5. How to use online infringements in yourIP enforcement strategy in South-East AsiaEU SMEs doing business in or in relation to South-East Asiashall also keep in mind that an efficient IP strategy for thosemarkets shall include a plan for a enforcement strategy inthe event IP infringement is suffered in some markets on arelevant scale.Removing counterfeit goods from e-commerce sites as soonas they appear is a very important goal to achieve and EUSMEs shall act promptly to defend their IP rights. However,online infringements can also be the opportunity to collectvalid evidence to file subsequent legal actions against arepeated infringer or in a more complex litigation case toprove a connection of illicit activities from the same entity orindividual.In this respect, before exercising the request of ‘take-down’,it is recommended to make sample purchases from onlineaccounts to confirm that the products being sold were indeedcounterfeit items and also collect the items and relatedpurchase and shipment documents including information onthe seller.The costs associated with making sample purchases can beavoided and/or balanced with a rigorous assessment of theitems in question based on the seller’s advertisements alone.For instance, if the items are marketed as being obviouslycounterfeit, e.g sold at a wholly disproportionately low priceand/or based on a non-existent product line, IPR holders canconsider skipping the step of making a sample purchase.6. Case StudiesCase study 1:Special types of E-commerce platforms can be held liable for offering for sale counterfeitsBackgroundThe website SGbuy4u was an e-commerce platform onwhich users could purchase a wide variety of goods. Theproduct listings on the SGbuy4u website were an exactmirror and obtained from the listings on Taobao.com. Oncea user had selected and paid for a desired good on theSGbuy4u Website, SGbuy4u would log on to Taobao.com,locate and purchase the selected good, ship it to Singaporeand deliver it to the user.Action takenAfter carrying out two sample purchases, Calvin Kleincommenced an action against SGbuy4u. Calvin Klein claimedthat the SGbuy4u offered for sale on the SGbuy4u Websitegoods that bore Calvin Klein’s trade marks. They applied forsummary judgment against the defendants.OutcomeThe Singapore court found that SGbuy4u was not a merecourier or freight forwarding service. It provided services thatwent above and beyond traditional delivery services, such as5receiving payment for goods from the users of the SGbuy4uwebsite, placing orders on Taobao.com and paid sellers onTaobao.com for the goods. Therefore it was held liable foroffering counterfeits for sale in its own right. As the case forSGbuy4u’s liability was so clear, the court entered summaryjudgment on this matter, which obviated the need for a fulltrial.Lessons Learnt Consult a lawyer to find out what specific strategywould be most effective for you. Sometimes, individualtake downs might be time-consuming and ineffectiveespecially if you can take action against the platformdirectly for IPR infringement. It is worth noting that it was due to the unique businessmodel adopted by SGbuy4u which paved the way forCalvin Klein’s success in court. Depending on the facts, it may be more challenging tohold other e-commerce platforms directly liable for IPRinfringement.
6How to Guide - How to Remove Counterfeit Goods from e-commerce Sites in South-East AsiaCase Study 2: Challenges in liaising with e-commerce platforms and sellersBackgroundExact replicas of Brand X’s goods were being sold onCarousell. The products looked identical to that being sold byBrand X in its official website and stores.OutcomeAlthough Carousell took down the listings and terminatedthe seller’s accounts, the seller never contacted the law firmand to settle the matter.Action takenThe brand owner engaged a law firm to assist in the case.The seller had two accounts on Carousell, and the lawfirm acting for Brand X made sample purchases from bothaccounts. It was confirmed that the products being soldwere indeed counterfeit items. Thereafter, the law firm wroteto Carousell to request for the removal of the listings andsuspension of the seller’s accounts. Carousell complied withthe law firm’s request and further provided the seller withthe law firm’s details, requesting the seller to contact thelaw firm and settle the matter.Lessons Learnt In general, e-commerce sites are quick to respond to IPRsholders’ take-down requests and suspend seller accounts. It is important to confirm that the goods are indeedcounterfeit items by taking measures such as samplepurchases as advertising materials employed by theseller online may not be indicative of the authenticity ofthe products in question. Owing to the anonymity afforded by the internet, it couldbe problematic for IPRs holders to contact sellers.7. Take away messages EU SMEs that deem their IP rights have been infringedon e-commerce platforms will have the options ofeither:a. Taking direct action against the e-commerceplatform for IPRs infringement; orb. Working with the relevant e-commerce platformto take down the sellers.In general, option (b) is the more common approachtaken by IPRs holders.It is important to confirm that the goods offeredfor sale on the e-commerce platforms are indeedcounterfeits, to avoid any claim for groundlessthreats of IPRs infringement by the seller and/or thee- commerce platform. It is recommended that EU SMEs start a dialoguewith e-commerce platforms to encourage bettercollaboration and develop best practices to handleany IPRs infringement and to sign up for anydedicated program kick started by. Consult local lawyers to develop a strategy to tacklethis growing problem of online counterfeit sales.
Free Business Tools to Manage your IP in South-East Asia78. Glossary of terms9. Related links and additional information Alleged infringer - Refers to a seller who is suspected ofselling or offering for sale counterfeits. Visit our Country IP Factsheets of each countries inSouth-East Asia uides Counterfeits - Refers to goods to which a trade mark hasbeen applied without the consent of the proprietor or itslicensee. E-commerce sites - Websites which serve as an intermediaryplatform to facilitate transactions in the sale of productsbetween buyers and sellers. Parallel imports - are genuine goods, in the sense that theyoriginate from the proprietor or licensee of the relevant IPR,and sales and resales of such products are usually regardedas legitimate in various SEA countries like Singapore Powersellers - Refers to a person who sells high volumesof products. Trade marks - A trade mark is a word, phrase, symbol,and/or design that identifies and distinguishes the sourceof the goods of one party from those of others. Forexample, brand names, slogans, and logos can be trademarks. Visit other publications at South-East Asia IPR SMEHelpdesk website - www.ipr-hub.eu Visit the Helpdesk blog http://www.yourIPinsider.eufor related articles on IP in South-East Asia and China
Free South-East Asia IP advice for European SMEs For more information and to discuss how we can work together,please contact us:Tel: 84 28 3825 8116 Tel: 32 2 663 30 51Email: question@southeastasia-iprhelpdesk.euOnline: www.ipr-hub.eu If you have a question about protecting intellectual propertyin any South-East Asia country, please contact our freeconfidential helpline at:question@southeastasia-iprhelpdesk.euProject implemented by:PRACSIS European Union, 2020.Reuse is authorised provided the source is acknowledged.The reuse policy of European Commission documents is regulated by Decision 2011/833/EU OJ L 330, 14.12.2011, p.39.Vietnam Guide developed in collaboration with: Ravindran AssociatesGuide last updated in: November 2017The contents of this publication do not necessarily reflect the position or opinion of the European Commission. The services of the SouthEast Asia IPR SME Helpdesk are not of a legal or advisory nature and no responsibility is accepted for the results of any actions madeon the basis of its services. Before taking specific actions in relation to IPR protection or enforcement all customers are advised to seekindependent advice.The paper used in this product is manufacturedfrom managed forests and is FSC certified.Luxembourg: Publications Office of the European Union, 2020Print ISBN 978-92-9202-773-5 doi: 10.2826/452528 EA-04-19-796-EN-CPDF ISBN 978-92-9202-772-8 doi: 10.2826/992817 EA-04-19-796-EN-NPhotos: Shutterstock.comA initiative of theEuropean Commission
also encouraged that open dialogue with e-commerce sites be commenced so as to establish best practices, such as take-down processes, keyword and content filtering. 4. Tools provided by popular e-commerce sites in South-East Asia In many cases, e-commerce sites are willing to work with brand owners to take down counterfeit products that are
6. Reporting and quarantining of counterfeit electronic parts and suspect counterfeit electronic parts. 7. Methodologies to identify and rapidly determine if a suspect counterfeit part is, in fact, counterfeit. 8. Design, operation, and maintenance of systems to detect and avoid counterfeit electronic parts and suspect counterfeit electronic .
Misuse of Small Parcels for Trade in Counterfeit Goods (2018) and Trends in Trade in Counterfeit and Pirated Goods (2019). The results are alarming. They show that trade in counterfeit and pirated goods amounted to up to 3.3 % of world trade in 2016; when considering only the imports into the EU, they amounted to up to 6.8 % of imports.
The Counterfeit Kit – by T. Fernandez COUNTERFEIT MONEY DETECTION In the past, the most common way to detect counterfeit bills was with the use of a counterfeit detection pen. This method relied on the fa
Counterfeit Gods Tim Keller A Study Guide Prepared for Leroy Community Chapel. Counterfeit Gods Study Guide 2 A Study Guide to Counterfeit Gods By Timothy Keller Counterfeit Gods is a book that examines the issue of idolatry throughout the Bible and our world today. It reveals and exposes how we each fall victim to the subtle temptations to .File Size: 247KB
Subject matter of contract of sale-Goods. Goods may be classified as :-2. Existing Goods- a) specific goods, b) ascertained goods, c) unascertained goods. 3. Future goods- which do not exist with the seller at the time of sale. the contract thus is an agreement to sell. 4. Contingent goods - a type of future goods, the acquisition of which .
Proceeds from other crimes also feed into the production and dis-tribution of counterfeit goods. There have been reports of authori-ties uncovering operations where proceeds from drug trafficking were channelled into counterfeiting, and where profits from the sale of counterfeit goods were used to further criminal's other il-licit operations .
the 2016 Trade in Counterfeit and Pirated Goods: Mapping the Economic Impact. The report showed that trade in counterfeit and pirated goods amounted to up to 2.5 % of world trade in 2013; when considering only the imports into the EU, they amounted to up to 5 % of imports.
Oct 09, 2008 · released SAE AS5553, “Counterfeit Electronic Parts; Avoidance, Detection, Mitigation, and Disposition.”3 n Industry to improve counterfeit reporting, develop counterfeit parts con
