E-commerce provides an excellent mechanism for Australians to sell products to consumers around the world, including China, the world’s largest e-commerce market.
However, Chinese e-commerce platforms may contain counterfeit, copycat or other IP-infringing products. These can weaken genuine product sales, damage brand reputation and erode consumer trust.
China’s laws and regulations provide IP rights owners with tools to tackle counterfeits, both online and offline. Any business selling products to China should consider developing and implementing an online brand protection strategy.
E-commerce platform notice and take-down mechanisms
Most e-commerce platforms have a notice and take-down mechanism for handling IP complaints. IP rights owners typically need to register an account on the platform and upload evidence of their IP rights before they can file IP complaints. To take action against product listings in China, Chinese platforms will generally only accept registered Chinese IP rights, such as a Chinese trade mark registration certificate, or a granted Chinese patent (invention patent, utility model patent or design patent). Copyright may also be used as the basis of an IP complaint, with proof of copyright ownership established by a Chinese copyright registration certificate or other evidence. Platforms may accept Australian IP rights in limited circumstances, such as if the complaint relates to an offer of sale within Australia.
In order to help rights owners, we have listed some major e-commerce platforms and provided links to their IP complaint systems below.
However, it can be time consuming for rights owners to monitor e-commerce platforms and submit IP complaints themselves, and can be expensive to engage external lawyers or IP attorneys to do this work. A time and cost-effective way to manage this process is often to engage a specialist online brand protection service provider. These services use advanced technology and data analytics to identify and remove counterfeit goods across multiple online platforms. IP owners may engage these services directly themselves, or manage this through their external lawyers or IP attorneys, who can also advise on how to pursue high value targets further, including through offline actions.
In addition to online enforcement, in order to have a meaningful impact on the source of counterfeit or IP-infringing goods, it may be necessary to pursue investigations and take enforcement actions on the ground. Available actions may include administrative and criminal enforcement through local authorities, and civil litigation (for more, see Enforcing IP in China). Chinese Customs can also seize IP-infringing goods entering or leaving China’s borders (for more, see Customs seizure of goods). Law firms experienced in enforcing IP rights in China can advise on an appropriate enforcement strategy.
The Alibaba Intellectual Property Protection Platform (IPP) is used to report infringing listings on any of the Alibaba Group platforms, including Taobao.com, Tmall.com, Tmall.Global, 1688.com, Alibaba.com and Aliexpress.com. Instructions on how to use the IPP are provided in English at https://ipp.alibabagroup.com/instruction/en.htm. You will need to create an IPP account. Once logged in to the IPP, a more detailed IPR protection guide provides illustrated examples of what evidence and descriptions will be most effective. Once you have uploaded proof of your IP rights, and Alibaba has verified these documents, you will be able to submit IP complaints.
Alibaba also provides a no-registration submission channel for IP complaints available at https://ipp.alibabagroup.com/complaint/onlineForm/online.htm. However Alibaba encourage registering an IPP account, which allows users to store IP rights information on file, track the status of complaints, and enjoy faster processing times than the no-registration submission.
You can file an IPR complaint on JD.com via its English IPR protection system (http://enipr.jd.com). You will need to register a Joybuy account following the instructions and upload your IP documents and ID documents. You cannot proceed to the next step until your submission is verified and approved. JD accepts documents in Chinese and English only. JD also has a brief guide to its IPR system at https://help.joybuy.com/help/question-312.html. A comprehensive operation manual (Chinese only) is available on the complaint submission page.
Vip.com offers a no-registration online IPR complaint system. You can report multiple infringing brands and listings in one complaint along with a statement of your claim. You will receive the result of your complaint via email. As of November 2019, Vip.com were upgrading their online IP complaint system, and instead receiving IP complaints at IP@vipshop.com.
To report an IP violation at Suning.com, you need to register an account and have it verified with your identity documents. Once your account is verified, you will be able to access Suning’s IP protection centre where you can file and manage IPR complaints. Currently the system is in Chinese language only.
China’s most popular instant messaging tool also serves as a social media and payment platform. WeChat is now widely used as a trading platform, and is seeing an increasing amount of IP-infringing products. Users can advertise and sell products from either public or private accounts. To protect IP rights, WeChat has launched an app-based online complaint system for IPR owners to report any infringing activities. Step-by-step instructions are available online in Chinese only.
WeChat has also launched the Brand Protection Platform (BPP) to work with major brand owners to identify and remove counterfeits. Brand owners with active enforcement programs may wish to join the BP program. More information on the BPP program is in the following bilingual guide.
Pinduoduo is another major app-based social e-commerce platform in China. Pinduoduo uses a business model similar to Groupon, where users receive a discount for purchasing as a group. Pinduoduo generally sells very low cost products, which can sometimes include fake goods.
Pinduoduo launched its online IP protection system in November 2018, providing a notice and take-down mechanism similar to other e-commerce platforms. Individual user’s ID information or enterprise credentials must be checked by the platform before accessing the reporting and management features of the system.
A large cross-border B2B e-commerce retailer, DHgate is another major platform through which IP-infringing products may be sold from China to the rest of the world. DHgate has an Intellectual Property Protection System (IPPS) that allows registered and verified users to report infringing listings.
Red points brand protection have produced a step-by-step guide that outlines the filing process.
Although not a Chinese platform, IP-infringing products originating in China may be sold on ebay.com. eBay’s Verified Rights Owner (VeRO) program allows IP right owners to report infringing listings by submitting a Notice of Claimed Infringement (NOCI). Once the report has been processed, eBay will provide information regarding subsequent actions required. You can find out more about eBay VeRo Program at the customer service page, and report rights violations here.
Amazon is another major platform to monitor for IP-infringing products. Brand owners can protect their registered trade marks from potential violations on Amazon by registering with the Amazon Brand Registry. A no-registration public infringement form is also available for anyone to report general IP infringements such as copyright and patent concerns. For more information, visit https://services.amazon.com.au/brand-registry.html.
Trade Me is New Zealand’s largest e-commerce platform, and an important platform for Australians selling product in New Zealand. Trade Me operates an IPR programme which has over 800 brands registered. More information for IP rights holders is available at https://help.trademe.co.nz/hc/en-us/articles/360010982552