Nearly every week one of my law firm’s international IP lawyers will get an email from someone claiming Alibaba essentially stole their IP and asking for our help. We got one just yesterday with the subject “Alibaba fraud, what else?”
Not fraud and not what else. The body of the email talked of how there were 186 “counterfeits” of this company’s products on Alibaba and so far Alibaba had been unwilling to remove them.
Right, and here is why: Alibaba is following Chinese law and you are ignoring Chinese law.
Let me explain.
Alibaba has a formal procedure for requesting and securing the removal of links to material on its website that infringe another company’s IP rights. To secure the removal of such material, one must follow Alibaba’s procedure to the letter. Among other things the process requires documentation proving the IP owner’s existence and rights to the IP in question. If everything goes smoothly, it takes Alibaba a few weeks to remove an infringing link. Our intellectual property lawyers have never once failed to secure the removal from Alibaba of a product that violates our client’s trademark rights when we have sought that removal from Alibaba.
Filing a complaint with Alibaba requires submitting: 1) a copy of your “business license” — typically, a Certificate of Incorporation or a Certificate of Good Standing; 2) a copy of any formal IP registrations relating to the infringing material, such as trademark or copyright certificates. We translate these documents into Chinese to make things easier on Alibaba and to speed thing up.
My law firm has registered an account on Alibaba so we are eligible to seek removal of links that infringe our clients’ IP. We do this by submitting proof of identification and authorization, as well as information regarding the IP which is being infringed upon. This is accomplished by our providing the following to Alibaba: (i) our client’s “business license,” (ii) any formal IP registration documents and (iii) a power of attorney signed by the client, authorizing us to file the complaint on its behalf. We also submit the following information: the IP registration number(s), the title of the IP, the name of the IP owner, the type of IP, the country of registration, the time period during which the IP registration is effective, and the period during which the IP owner wishes to protect its IP rights. After submission, it typically takes Alibaba 2-5 working days to verify our information.
Once Alibaba has verified the information we have provided to it, we can immediately request removal of infringing links. We only need to provide the infringing link. For complaints concerning patent rights, we also need to provide the reason for complaining (i.e., proof of the connection between the infringing material and the IP which is being infringed upon). Alibaba normally takes 5-7 working days to process a complaint, which typically consists of passing along the complaint to the infringing party.
If the infringing party does not respond to the complaint within three working days of receipt (either by deleting the infringing link pursuant to the request or by filing a cross-complaint), Alibaba will delete the infringing link. Absent prior written permission from Alibaba, the infringing party would then be prohibited from posting the same information on Alibaba again. If the infringing party files a cross-complaint, we would then need to deny the cross-complaint, and then Alibaba would handle the “dispute.” Alibaba normally takes about 2-5 working days to resolve such disputes.
As you would imagine, most (so far for us it has been all) counterfeiters do not file a cross-complaint; they just slink away. But, and here is the kicker, every time we have gone through this procedure with Alibaba, our clients have had the offending items removed, and quite quickly to boot. Of course, each time our China lawyers have gone through this procedure on behalf of our clients with trademarks or patents or copyrights registered in China.
We have achieved similar results with China’s other leading and legitimate online marketplaces. But as you would expect, China’s smaller and sketchier marketplaces are more problematic when it comes to IP protection.
Just another reason why you should register your trademarks, copyrights and patents in China.