The sale of counterfeit goods online is as damaging to government efforts and consumer safety as it is to the reputation of the e-commerce platforms and brand owners involved. In this guest piece, Andy Chua, senior vice president of the IP Rights Protection Team at e-commerce giant Lazada, joins Tilleke & Gibbins’ Suebsiri Taweepon and Ploynapa Julagasigorn to discuss how stakeholders can work together to combat the growing threat of counterfeits online – with recent efforts in Thailand a prime example of effective action. This article, which was first published in World Trademark Review, is the second in a two-part series about trademark enforcement against online counterfeits.
Technological developments, government policy and the covid-19 pandemic have brought about significant changes to the lifestyle and behaviour of ordinary consumers. Shopping increasingly takes place on e-commerce platforms as people become more familiar with online transactions, encouraging many sellers to turn their focus to online platforms. While this shift to online retail has brought benefits for many, it has also provided additional ways for sellers of counterfeit goods to peddle their wares.
The sale of counterfeit goods online tarnishes the reputation of e-commerce platforms among users, compromises consumer trust in brand owners’ products and undermines public authorities’ efforts in enforcing anti-counterfeiting policies. This dynamic problem cannot be resolved by a single entity alone. Instead, all stakeholders need to work together to amplify their efforts in consumer and brand protection.
Collaborating against counterfeits in Thailand
We see such collaborations between stakeholders in regions such as Thailand, where the Department of Intellectual Property (DIP) has signed a memorandum of understanding (MOU) with various parties that are committed to combatting the spread of counterfeit products online. The inaugural signing ceremony for the MOU was held on 11 January 2021, with 20 initial signatories drawn from the public sector (eg, the DIP, the Department of Business Development and the Department of International Trade Promotion), rights holders, e-commerce platforms (including Lazada) and law firms (including Tilleke & Gibbins).
Since the ceremony, signatories have been actively participating in activities to ensure the effectiveness of the MOU. The first meeting of members was held on 11 March 2021, where members had the opportunity to:
- share information on infringement activities;
- collaborate in monitoring and reporting counterfeit products across online platforms;
- encourage and work towards the adoption of a standard cross-platform reporting system; and
- discuss obstacles and solutions in pursuing counterfeiters.
By the time of the follow-up meeting on 19 July 2021, a further 10 stakeholders had signed the MOU. At this meeting, members discussed the information that should be required from sellers to register on platforms and the terms that should apply between platforms and sellers. They also discussed strategies for raising public awareness of IP infringement and shared crucial information on successful anticounterfeiting cases.
In October 2021, a focus group of IP owners, law firms and online platforms met to discuss the reporting systems of different platforms, building on the challenges to effective enforcement identified at the previous meetings. Members discussed the IP infringement reporting systems that they use, listing all the documents that are required by each platform and identifying the need to set standard practices for all online marketplaces in Thailand.
The DIP has been entrusted to coordinate with stakeholders to develop guidelines on standard reporting systems. The guidelines will allow users to easily understand and comply with the requirements of any platform, making it much easier for users to work with platforms to protect their IP rights online.
Panasonic case yields positive results through cooperation
Close collaboration between e-commerce platforms, brand owners, law firms and government authorities led to several successful anticounterfeiting activities over the course of 2021.
A prime example of this was the successful raid of more than 80,000 counterfeit Panasonic batteries on 18 May 2021. The case began when Panasonic, which had been monitoring online marketplaces, found suspected counterfeit products being sold on the Lazada platform by several shops sharing the same address.
An investigation was opened, and Lazada worked closely with Panasonic to help identify the infringers. Tilleke & Gibbins then assisted Panasonic in locating and identifying the stockroom containing the counterfeit goods and in coordinating with government officers.
This collaboration led to a raid action by the Thai Police Economic Crime Suppression Division and the seizure of more than 80,000 counterfeit Panasonic batteries – the largest-ever seizure of Panasonic products in the Asia-Pacific region. The cooperation between Lazada, Panasonic, Tilleke & Gibbins and the Thai enforcement authorities resulted in the successful removal of these counterfeit products from the market to the benefit of platforms, brand owners and consumers alike.
While much has been achieved, there are still several significant challenges to combatting IP infringement online. The sale of counterfeit goods on social media, for example, remains a major issue, highlighting the need for social media companies to become signatories of the DIP’s MOU.
Another problem is the way in which infringers obscure their identities by registering fake information with the platforms on which they operate. Rather than taking down individual webpages, brand owners must be able to identify stockrooms in order to uproot counterfeiters completely.
E-commerce platforms, IP owners, law firms and government authorities are continuing to work together to identify and develop solutions to these issues. In spite of the challenges, close and active collaboration between these stakeholders will pave the way to making the Internet uninhabitable for counterfeiters.