Photo by Ina Centaur
Barely a day goes by without an American or European company contacting one of our International IP lawyers to get counterfeit products removed from a Chinese e-commerce site. Our lawyers have a near 100% success rate at getting counterfeit products removed from Chinese e-commerce websites like Tmall and Taobao and the same holds true for American e-commerce sites. But our success rate depends largely on the advertised product truly being a counterfeit, as that term is commonly defined by lawyers, not businesspeople.
All of the big American and Chinese e-commerce sites, including the Alibaba family of sites (Taobao, Tmall, Alibaba, AliExpress, 1688.com, etc.), have formal internal procedures for removing product listings that infringe a third party’s IP rights. To secure the removal of infringing listings, you must follow their procedures to the letter. Among other things, you must provide documentation proving (1) you exist and are the IP owner and (2) you as the IP owner still have the rights to the IP in question. Only after you have submitted these documents and had them verified by the e-commerce site can you submit a takedown request.
When you do submit your takedown request (assuming everything goes well), most e-commerce sites will remove the counterfeit products within a week or so. When things don’t go well with a Chinese e-commerce site (which judging from the volume of phone calls and emails is rather frequently) it is vital to have a person on your side who speaks Chinese, understands Chinese intellectual property law, and is experienced in dealing with the particular Chinese website posting the counterfeits of your products. This person is necessary to communicate with higher-level employees at Chinese e-commerce sites to explain why the listing does in fact violate your IP. Sometimes it seems we get products taken down by constantly pushing the problem to higher and higher levels at the Chinese e-commerce company, all the while making clear that things will go easier for them if they take it down than if they do not.
To date, our China IP lawyers have succeeded with nearly every takedown request seeking removal of products that infringe our client’s trademarks or copyrights. But about half the time, we have to tell the potential client they should not retain us for their product removal because there is such a small likelihood of success. The below email from one of our international IP lawyers who regularly works on takedown matters across multiple websites (in China and elsewhere) explains in the below email summary why this is the case:
Every Chinese website has its own takedown protocols and following that protocol to the letter is the key to getting products removed. You mention wanting to sue these websites. We emphatically do not advise that unless and until we have tried and failed to get your products taken down. Lawsuits are expensive and based on our track record in securing takedowns, the odds are overwhelming that we will never need to file one on your behalf.
Note that only the copyright or trademark owner or its authorized representative can make takedown requests and sites vary as to the sort of authentication they require. Virtually all sites ordinarily require Powers of Attorney, but all of the big Chinese sites know our lawyers well enough that they almost never require we provide them with a formal Powers of Attorney to achieve a takedown.
It is critical we can prove you have registered your IP (your trademark or your copyright) somewhere. Some Chinese sites will take down products with foreign IP (i.e., non-China) registrations, but China registrations are always much better. Technically, China is obligated to recognize copyrights registered in any Berne Convention signatory nation, but explaining China’s WTO obligations to a 21-year-old customer service representative seldom works. And as you can probably imagine, securing the removal of copyrighted IP for which a copyright has never been registered anywhere is even more difficult.
The more sophisticated/well-heeled the website, the more likely they have a formal takedown procedure. For the smaller websites, we generally have to contact someone directly (usually by telephone) because there are no instructions on the website or the instructions make no sense or simply do not work. But unless the website is a pirate site (which is rarely the case), it does not want to be sued for hosting counterfeit or pirated items and so long as we do all the work for them, they almost always will take down rogue products and content.
Once the whole takedown process begins, it pretty much continues forever. because the pirates and counterfeiters don’t just give up after their first upload is taken down. Even after we stop one or two of the counterfeiters, we should expect more to pop up. This is why companies hire us to monitor and report and after we remove the existing counterfeits, we should discuss what sort of future programs make sense for your company and your situation. You also should have us try to figure out who is doing the counterfeiting, how they are doing it, and what we can do — if anything — to try to stop it or slow it down. Oftentimes it will be your own factory or distributor.
Our law firm has an Alibaba account that makes us 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 being infringed upon. We do this by providing Alibaba: (i) our client’s “business license,” (ii) any formal IP registration documents and (iii) (sometimes) 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. We translate these documents into Chinese to make things easier on the Chinese website company and to speed things up.
Once Alibaba verifies the above information, we provide the infringing links and removal nearly always occurs quite quickly after that. For complaints concerning patent rights, we also need to provide proof of the connection between the infringing material and the IP being infringed. Alibaba normally then sends our complaint to the infringing party. If the infringing party does not respond to our complaint within three working days — either by deleting the infringing link 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 resolves such disputes within a few days. Counterfeiters almost never file cross-complaints; they typically just slink away.
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 difficult when it comes to IP protection.
If your IP (especially your trademark or your copyright) is registered in China, securing removal of counterfeit products from Chinese websites is usually relatively fast and easy. If your IP is registered in a country other than China, securing the removal of counterfeit products from Chinese websites is definitely possible, but less certain. If your IP (your unregistered U.S. trademark, for instance, or your unregistered copyright) is not registered anywhere, your best strategy for securing removal of infringing products is usually (but not always) to register it first (typically wherever it can be done fastest and cheapest) and then seek removal, rather than to seek removal first. The same generally holds true for US websites, but US websites are much less likely to remove products that infringe on your patent rights than are Chinese websites. US websites typically take the position that you need a US court order stating that the product or products infringe on your patent for a removal based on patent infringement.
If you want to protect your products from counterfeits popping up on the web, plan now with your IP filings for takedowns later. See China Trademarks: Register Yours BEFORE You Do ANYTHING Else.