Anticounterfeiting Committee Addresses Online Counterfeiting Around the World

Published: December 16, 2019

INTA’s Anticounterfeiting Committee (ACC) has been active in recent months working with government partners to address online counterfeiting. As part of this work, the ACC launched its best practices document, “Addressing the Sale of Counterfeits on the Internet,” and has been working to collaborate with stakeholders to come up with solutions to the problem of online counterfeiting. The ACC’s efforts has centered on meetings with brand owners, submissions to government consultations, and policy dialogues to discuss the current state of the problem.

Comments to the U.S. Department of Commerce

The ACC has submitted comments through its United States Subcommittee to the U.S. Department of Commerce (DOC) in response to its efforts to create a report on the state of counterfeit and pirated goods trafficking and recommendations. The DOC report is being drafted in response to a Presidential Memorandum focused on counterfeiting and piracy on the Internet.

INTA’s comments have also been used in follow-up meetings with government partners and have served as discussion points on how to promote collaboration between private sector brand owners, intermediaries, and government partners. Additionally, Chairman of U.S. Senate Finance Committee Senator Chuck Grassley presented the ACC’s study, “The Fight Against Fakes,” in which INTA’s comments are cited. The Association will continue to build on the momentum in Washington, D.C.

Stakeholder Meetings and Policy Dialogues

The ACC has been meeting with global stakeholders in various jurisdictions to discuss cooperation and action items that can be taken to work together to combat online counterfeiting.

Tokyo, Japan

The ACC’s East Asia & Pacific Subcommittee, together with the Japan Trademark Association, organized a Japan Border Enforcement Forum on October 25, at the offices of TMI Associates in Tokyo, Japan. The discussion focused on current and future policy in relation to online counterfeits and featured representatives of industry, government, and Japanese e-commerce platforms.

Makoto Sakata, Director of the Office of Intellectual Property Rights, Customs Clearance Division, Customs and Tariff Bureau, Ministry of Finance of Japan, focused on cross-border e-commerce and importation for personal use, and customs efforts to continuously improve border enforcement. Takayuki Tsutsumi (Union des Fabricants Tokyo, Japan) discussed the challenges brand owners face to protect their rights online and the limitations of importation for personal use that can affect brands and consumers. ACC East Asia & Pacific Subcommittee member Hideki Katano (ASICS Corporation, Japan) shared his company’s experience protecting its brand in Japan and other jurisdictions in Asia, including best practices and cooperation in the marketplace. Katsumi Hanaue (Rakuten, Inc., Japan) discussed her company’s policy in dealing with online counterfeits and repeated infringers.

ACC East Asia & Pacific Subcommittee Chair Brian Law (Eversheds Harry Elias, Singapore), together with Committee members Mitsuko Miyagawa (TMI Associates, Japan), Shogo Matsunaga (Sonderhoff & Einsel Law and Patent Office, Japan), Miki Hanawa (Adobe Systems Co., Ltd., Japan), and INTA Anticounterfeiting Advisor, Asia-Pacific Valentina Salmoiraghi coordinated and moderated the event.

Jakarta, Indonesia

INTA members from numerous industries (including lubricant products, sportswear, pharmaceuticals, and consumer goods) on September 23, met with representatives of major e-commerce platforms operating in Indonesia and the Indonesia Association of e-commerce platforms. These discussions, which took place in Jakarta, Indonesia, were led by the ACC’s East Asia & Pacific Subcommittee and focused on the experiences of brand owners addressing counterfeiting on e-commerce platforms in Indonesia. Discussions focused on current take-down protocols and opportunities for improvement, priorities of Indonesian e-commerce platforms in relation to self-regulation, managing the expectations of clients and customers, and the deployment of technological innovations in identifying counterfeits sellers and repeat infringers. E-commerce platform representatives from Bukalapak, Lazada, and Tokopedia joined the discussion, which was moderated by Ms. Salmoiraghi, along with ACC members Andrew Conduit (SKC Law, Indonesia), Emirsyah Dinar (AFFA Intellectual Property Rights, Indonesia), and Nick Redfearn (Rouse, Indonesia).

Shanghai, China

Members of the China Subcommittee met with representatives of e-commerce platform Pinduoduo on September 24, in Shanghai, China. This was INTA’s first formal meeting with Pinduoduo, and Committee members introduced the ACC’s objectives and INTA’s Strategic Plan to Pinduoduo’s brand protection team. Pinduoduo’s team shared details of its brand protection program and its desire to work with brands to develop a plan to protect legitimate products on its site, as it maintains a zero tolerance policy towards counterfeits. The meeting was part of the Subcommittee’s objective of engaging with emerging platforms in China.

Amsterdam, the Netherlands

The ACC’s Western European Subcommittee hosted a policy dialogue in Amsterdam, the Netherlands, on June 16, with online intermediaries and brand owners Bertil van Kaam (Van Kaam IP & Media, the Netherlands) and Linda Mustonen (Darts-ip, the Netherlands). Graham Clemence (Alibaba Group Services Limited, Hong Kong SAR, China) discussed the platform’s offline investigation efforts as part of its anticounterfeiting program and provided insight into the effects of offline investigations. Dustin Todd (Amazon, USA) spoke about the exchange of information with rights holders, a recurring topic throughout the day. Finally, Sandro Chiesura (eBay, Germany) gave a presentation on eBay’s approach to intellectual property infringements.

Next, it was the brand owners’ turn to provide insight. Meriem Bourahla-Loudiyi (Servier, France) provided a presentation on the pharma industry’s collective approach to anticounterfeiting. Marijke Breeuwsma and Dana Kabela (Adidas, the Netherlands) discussed best practices from the perspective of rights owners. Guido Baumgartner (Coty Beauty, Germany) discussed e-trafficking of counterfeits.

Follow-up discussions touched on Alibaba’s offline investigation, the launch of Amazon’s Project Zero, which uses machine learning and a brand owner self-service tool to remove counterfeits from the site, and brand owners’ active participation in take-down procedures.

Finally, ACC Western Europe Subcommittee Chair Huib Berendschot (AKD Benelux Lawyers, the Netherlands) provided closing remarks and emphasized the positive and constructive tone and atmosphere during the dialogue.

For more information on INTA’s anticounterfeiting activities, please contact INTA’s Anticounterfeiting Manager Maysa Razavi at [email protected], Anticounterfeiting Advisor Tiffany Pho at [email protected], or Anticounterfeiting Advisor Asia-Pacific Valentina Salmoiraghi at [email protected].

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2019 International Trademark Association