Many of us would have turned to online shopping for Christmas gifts. Online shopping, whilst hugely convenient, does have its pitfalls. The main issue being not being able to physically see the product you are buying. The nature of the internet lends itself to the realm of unscrupulous online webpages offering deals that are often too good to be true. These fake websites or counterfeit goods can be very difficult, if not impossible, to detect from online shopping.
The rise of pirate websites and fake products undermines legitimate business and can damage the reputation of the legitimate brand owners. The quality of products is usually inferior and there is often little or no quality control, so depending on the item, can be dangerous for consumers.
Many of the larger online e-commerce platforms which sell a variety of third party products have now developed their own tools for intellectual property rights holders to report and take down infringing listings.
Each platform has their own set of processes, but most follow a similar approach. Generally, the platforms do not wish to be decision makers and thus if an infringing report is filed, the content is often removed then the matter pushed to the parties to sort it out between them.
Often the relevant IP right will need to be evidenced, by way of a certificate. Once this has been uploaded, then the relevant listing needs to be identified and a form can be submitted. The below provides a brief summary of what is available on some of the popular shopping platforms.
Alibaba (including AliExpress)
Alibaba has an established platform in place for IP rights and reporting issues. Once an account has been created, intellectual property rights (IPRs) certificates need to be uploaded onto the system, and if you are acting on behalf of another company, you will need an authorisation form uploading also. There is then a dashboard where complaints can be submitted and the progress of each complaint monitored. They are usually pretty quick at actioning these complaints, but they are not always successful. There are some quirks, such as if you are relying on a Chinese registration, you must have a certificate and then renewal certificates also. This is especially applicable if relying on designations under an International Registration, and national certificates are needed.
Amazon
Amazon has a brand registry tool where IP rights holders can register their brands and utilise a set of tools to manage infringing listings. This is free and relatively straightforward for rights holders to manage internally. Over 350,000 brands have been enrolled on the Amazon Brand Registry since launch and there has been a notable decrease in the suspected infringing listings for brands which have registered.
Sitting within the Amazon IP tools is Transparency which is an item-tracing service. This is where a unique code is applied to each product and Amazon can then use these codes to determine what is authentic prior to it reaching a customer.
eBay
eBay has their own reporting system called Verified Rights Owners Programme – aka VERO. This is a notice and take down process whereby IPR owners fill in a Notice of Claimed Infringement form on the eBay site and then submit via email. eBay are fast at actioning these requests and there also provide assistance from their customer services team.
Facebook (marketplace)
Facebook has a form to fill in to report IP violations, which can be found in their copyright and trade mark policies. There is also a separate tool called ‘Rights Manager’ which allows rights owners to block unauthorised content by uploaded audio and video files which are then scanned for matches on the platform. An additional tool for trade mark owners is the ‘Commerce and ads IP tool’ which allows brands to search their registered trade marks in ads, Marketplace posts and group sale posts.
Shopify
Shopify is a website hosting platform which many retailers use to host their websites. They now have a dedicated online form to be able to report and request take down notices of any infringing listings. Again a trade mark registration is required, and details of this need to be provided together with details of the listing to be removed.
Vinted
Vinted has rocketed in popularity over the last few years and there is an abundance of second hand items, or new items, being sold on this platform. Vinted does operate a relatively stringent listing policy when certain branded items are uploaded for sale and requires photos of different elements to be able to identify and clearly indicate the items’ authenticity. There is also a form to report infringing listings which is relatively user friendly. Vinted do also monitor listings and will contact sellers and take listings down if they do not meet their requirements.
Depop
Another fashion reselling website, Depop also has a dedicated email address for reporting IP infringement. This is slightly more basic in that an email needs to be sent with your contact details, the IP rights and the complained listing. They may request further information but there is no formal form to fill in.
Keeping on top of these listings can be time consuming for IP rights owners to manage. However, once platforms are set up such as the Alibaba platform or registration on the Amazon Brand Registry complaints can be submitted easily and efficiently resulting in problematic listings being removed quickly and efficiently.
This article was prepared by Senior Trade Mark Attorney Rachel Platts