With the rapid growth of internet use and the increasing dominance of online selling, efficient enforcement of intellectual property rights has become more cumbersome for brand owners. Any infringer equipped with the right technology can easily sell counterfeit goods on e-commerce platforms, and they can often evade responsibility by merely reposting listings or switching vendor names whenever they are challenged.
In this environment, brand owners have found that it is rarely enough to simply request the takedown of infringing pages. Instead, tackling online infringement effectively and stopping the spread of counterfeit products means uncovering the true source, arresting the infringer, and seizing the goods to prevent them from being relisted entirely.
When the Japanese multinational electronics maker Panasonic discovered that fake batteries were being sold in Thailand through e-commerce websites, their first step was to send takedown requests to the platforms hosting the offending pages. However, the problem remained, with several of the counterfeit retailers shifting their advertising of counterfeit Panasonic goods to other posts.
Tilleke & Gibbins thus helped Panasonic attack the problem at its root by seeking to uncover the true identity of the online sellers. We confirmed that the same infringing sellers were continuing to post counterfeit Panasonic items for sale, and during a preliminary investigation, we discovered that five online sellers even shared the same shipping address.
Unsurprisingly, the address was a fake as well—our investigation team found that the given location had nothing to do with the Panasonic counterfeiting operation, and further investigation was required before the team found the hidden location of the real warehouse.
We then shared the results of our investigation with the Economic Crime Suppression Division (ECD) of the Royal Thai Police to alert them to the true identity and address of the online infringer, and coordinated with them to conduct a successful raid action on May 18, 2021. The police seized and inspected 82,464 counterfeit Panasonic items and arrested the actual infringer, a Chinese national who confessed that he had brought over counterfeit Panasonic batteries from Shenzhen, China, to sell and distribute via online channels. He was then charged with possession of goods under a counterfeit trademark registered in Thailand, which is punishable by up to four years’ imprisonment, financial penalties of up to THB 400,000, or both. Based on the value of the goods seized in the raid, the damages amounted to more than THB 2.7 million (USD 86,800)—one of the largest seizures of Panasonic-branded counterfeit goods in the whole Asia-Pacific region.
IP Enforcement in the Digital Age
As this case shows, effective enforcement of intellectual property rights in the digital age requires a sterner course of action by brand owners. While takedown requests are a useful initial tool that can sometimes succeed, more and more trademark owners are finding that takedown requests on their own are insufficient for tackling online infringement, as many infringers respond by simply moving their goods to sell on different platforms. Instead, a thorough investigation that uncovers the root source of the counterfeit goods is a much more effective approach that can ultimately lead to the arrest of the infringer and prevent the sale and distribution of the infringing goods altogether.