(As the operator of giant Chinese and international online marketplaces, Alibaba Group sometimes finds itself under fire when independentvendors selling on its websites the intellectual property rights of other businesses. Alibaba has in place appropriate rules and procedures designed to protect IP. But when infringement takes place across borders, putting matters right can be time consuming and complicated by differences between Chinese trademark law and that of other countries.
Understanding these differences is important for Western businesses that discover their products or product images have been illegally copied and displayedon Alibaba websites. To help explain the company’s process fordeleting infringing material, we’ve reprinted the following article, written by attorney Dan Harris, from the excellent and informative China Law Blog:)
Someone left this comment yesterday on a post we did back in 2011 on sourcing product from China by using Alibaba:
“They steal ‚Ñ¢ names and photos and post them on their site. 90% of the images and Google search are stolen TMs Alibaba uses to get traffic to their site. They define fraud.”
Guess what? This is simply not true. At all.
Let me explain.
Nearly every week one of our China lawyers gets an e-mail from someone making the above claim and asking us whether we can help. Got one of these just yesterday with the subject “Alibaba fraud, what else?”
Not fraud and not what else. The body of the e-mail talked of how there were 186 “counterfeits” of this company’s products on Alibaba and so far Alibaba had been unwilling to remove them.
Right. And here is why: Alibaba is following Chinese law and you are essentially ignoring Chinese law.
Again, let me explain.
Alibaba International has a formal procedure for requesting and securing the removal of links to material on its website that infringe another company’s IP rights. To secure the removal of such material, one must follow Alibaba’s procedure to the letter. Among other things the process requires documentation proving the IP owner’s existence and rights to the IP in question. If everything goes smoothly, it takes Alibaba a few weeks to remove an infringing link. We have not once failed to secure the removal from Alibaba of product that violates our client’s trademark rights when we have sought that removal from Alibaba.
Filing a complaint requires submitting: 1) a copy of the client’s “business license” — typically, a Certificate of Incorporation or a Certificate of Good Standing; 2) a copy of any formal IP registrations relating to the infringing material, such as trademark or copyright certificates. We translate these documents into Chinese to make things easier on Alibaba and to speed thing up.
My law firm has registered an account on Alibaba. This makes us eligible to seek removal of links that infringe our clients’ IP. We do this by submitting proof of identification and authorization, as well as information regarding the IP which is being infringed upon. This is accomplished by our providing the following to Alibaba: (i) our client’s “business license,” (ii) any formal IP registration documents and (iii) a power of attorney signed by the client, authorizing us to file the complaint on its behalf. We also submit the following information: the IP registration number(s), the title of the IP, the name of the IP owner, the type of IP, the country of registration, the time period during which the IP registration is effective, and the period during which the IP owner wishes to protect its IP rights. After submission, it typically takes Alibaba 2-5 working days to verify our information.
Once Alibaba has verified the information that we have provided to it, we can immediately request the removal of any infringing links. We only need to provide the infringing link. For complaints concerning patent rights, we also need to provide the reason for complaining (i.e., proof of the connection between the infringing material and the IP which is being infringed upon). Alibaba normally takes 5-7 working days to process a complaint, which typically consists of passing along the complaint to the infringing party.
If the infringing party does not respond to the complaint within three working days of receipt (either by deleting the infringing link pursuant to the request or by filing a cross-complaint), Alibaba will delete the infringing link. Absent prior written permission from Alibaba, the infringing party would then be prohibited from posting the same information on Alibaba again. If the infringing party files a cross-complaint, we would then need to deny the cross-complaint, and then Alibaba would handle the “dispute.” Alibaba normally takes about 2-5 working days to resolve such disputes.
As you would imagine, most (so far for us it has been all) counterfeiters do not file a cross-complaint; they just slink away. But, and here is the kicker, every time we have gone through this procedure with Alibaba, our clients have had the offending items removed, and quite quickly to boot. Of course, each time our China lawyers have gone through his procedure we have done so on behalf of our clients with trademarks registered in China.
We have achieved similar results with China’s other leading and legitimate online marketplaces. But as you would expect, China’s smaller and sketchier marketplaces are more problematic when it comes to IP protection.
Just another reason why you should register your trademark in China.
WATCH THIS VIDEO TO LEARN MORE ABOUT ALIBABA’S IPR ENFORCEMENT PROCESS
