Strategies for countering online infringement

By Frank Liu and Jerry Huang, Tiantai Law Firm,
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With the rapid development and wide reach of internet smartphones and new media, modern forms and models of e-commerce are becoming an irreplaceable part of our lives. Apart from the widely known and traditional e-commerce platforms like Taobao, Alibaba, JD.com and Suning, platforms with different characteristics and positioning such as Xiaohongshu, Xianyu (Idle Fish) and Vipshop have gradually joined the competition.

infringement
Frank Liu
Partner
Tiantai Law Firm

During the COVID-19 pandemic, consumers have turned their attention and time to online platforms and thus the influences of online infringement have also been amplified.

At this point, there are several reports of illegal behaviours springing up. It is no longer challenging to publish hundreds, or even thousands, of posts that could constitute infringement through the internet and the various applications. Not only is the cost of online infringement extremely low, but new methods are continually emerging, causing distress and creating risks for rights holders.

News and official statistics show that the number of online infringement cases has now surpassed offline infringement in some regions, indicating that online infringement is a very serious concern. These behaviours may highly affect brand awareness and market share, as well as cause dilution of businesses’ brand value.

infringement
Jerry Huang
Associate
Tiantai Law Firm

In response to various online infringements, rights holders need to choose from different effective remedies. For example, if an individual online infringement is found, the rights holders can selectively deal with the infringement according to the specific situation and the rights holder’s own needs.

To deal with the issue in a quick and low-cost manner, the rights holder can submit the necessary material, such as identity proof, rights basis proof, specific reasons for their complaint, and the evidence for it, to the platforms, which usually have channels for raising such complaints. The rights holder can require the platform to delete the infringing link or information and punish the infringer accordingly, based on the platform’s complaint redressal policy or mechanism.

For platforms that do not have an official channel of complaint, the authors suggest that the affected parties prepare a complete set of complaint materials and proactively contact the platform by telephone, email, fax, etc. The rights holders can expound on the infringements and require the platform to comply with the Tort Liability Law and other relevant provisions concerning the infringement.

Unfortunately, the processing time and the level of attention paid to infringements from this type of platform are uncertain. The rights holders can take the initiative to negotiate with the platforms and follow up several times within a short period of time, as the case may require dealing with the infringing information quickly and effectively.

If the rights holders find that there are multiple online infringements on one platform or different platforms, and considering the caseload of rights protections, the cost, and the number of infringing entities, a batch processing method can be adopted. The rights holder can categorize the situation based on the infringement entities, types of infringement, basis of rights, and then make a complaint to all the platforms in one go.

Depending on the mechanisms of the different platforms, the infringing party may face severe penalties, including shutting down their online stores, when infringing information or links reach a specific threshold. Rights holders can also use the rights protection mechanism to draw a list of trademarks that face frequent infringement, and work with the platform to agree on a possible protection instrument.

Some platforms will notify infringement cases in real time by monitoring them while the product’s promotion information is being uploaded, saving rights holders time and improving the efficiency of the protection mechanism.

When facing online infringement, the authors recommend that rights holders conduct a detailed analysis of the infringement, and start an online or telephone investigation from the beginning. Rights holders may also seek offline rights protection if there is evidence that the infringement has spread beyond online, or in the case of rights that are more important to the holder.

Some of the offline remedies available are on-site investigations for collecting more specific infringement details (infringing entity confirmation, infringement method, the degree of maliciousness, etc.). To find evidence online, on site, via telephone, etc., the rights holders may conduct all kinds of necessary notarizations. They can also contact the infringing party by sending a lawyer’s letter, work with the relevant regulatory authorities to take anti-counterfeiting actions, and initiate litigation if necessary.

Once the relevant administrative authorities’ decisions or judgments are in favour of the rights holders, it will have a deterrent effect on other infringing or potential infringing entities in the market, encouraging them to cease acts of infringement, or making them wary of such actions.

The above-mentioned actions demonstrate not only the commitment and determination of the rights holders to eliminate infringements, but also help promote awareness about the rights holders’ brands, and serve as evidence of popularity in later cases.

The market is constantly changing, and online infringement methods are evolving accordingly. Rights holders need to monitor the markets daily and take precautions before new forms of infringements develop, so as to avoid having to invest more energy and money when infringements have reached a critical scale in the future.

Integrating online rights protection into a rights holder’s comprehensive intellectual property protection strategy, while adjusting measures to suit conditions and practical realities, are important in the authors’ experience. Only by adopting the most suitable methods to cope with online infringement and being prepared with IP rights establishment and offline rights protection can a rights holder establish a complete and effective IP protection system.

Frank Liu is a partner and Jerry Huang is an associate at Tiantai Law Firm.

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