Comparison of Trade Mark Protection Measures Provided by Online Marketplace Platforms

Over the last couple of decades increasing amounts of consumer spending has occurred through online marketplace platforms. While online marketplace platforms have provided many benefits for brand owners, the platforms have also been embraced by counterfeiters.

While counterfeiters use online marketplaces to infringe upon a range of intellectual property rights, this article focuses on the measures available for trade mark owners on online marketplace platforms that are likely to affect the sales and brand reputation of Australian and New Zealand trade mark rights holders.

There is some variation across these platforms in the measures they make available for brand owners to make it hard for counterfeiters to harm their sales and brand reputation. However, online platforms will generally require that take-down requests alleging counterfeit goods be made either by the registered trade mark owner or their agent.

Along with providing proof of the registered trade mark the platform will likely require a statement that clearly specifies where the infringing material is in the listing. Namely, whether the product contains the infringing mark, or whether the infringing mark is on the product packaging, or if it is contained in the product description. Sellers cannot evade a take-down request by stating that their products are fakes, imitations or replicas.

While the ability to request take-downs of listings without having to resort to legal actions is beneficial, it is also important that online marketplaces balance that with measures that minimise the chance of the take-down facility being abused. This will likely involve one or more of the following:

• allowing the party who had a take-down request against their listing to explain why the listing does not breach the platform’s intellectual property policy;
• allowing the party who had their listing removed to explain why the listing does not breach the platform’s intellectual property policy;
• having policies deterring repeated unfounded allegations of infringement or breach of intellectual property rights.

Below is a table of some popular online shopping platforms used by online shoppers from Australia and New Zealand that links to their IP policy and details on whether the platform requires a registered trade mark for the IP policy to be put into effect. This is followed by further details of the processes and tools available on each of these platforms.

Platform     /  Registered TM  /   Application for   
                  /   Required?        /    TM Sufficient?   
Alibaba      /   Yes                   /    No                    
Amazon     /   No                    /    Yes                   
eBay AU    /   Yes                   /    No                    
Temu (AU) /   Yes                   /    No
Temu (NZ) /    Yes                  /    No
TradeMe    /    Yes                  /    No 

Alibaba
Alibaba’s Intellectual Property Protection Platform (IPP Platform) allows rights holders and their representatives to file take-down requests on allegedly infringing product listings. Alibaba’s IPP Platform covers the following Alibaba E-Commerce platforms: Alibaba.com, Aliexpress.com, Lazada.com.ph and Miravia.es. Prior to submitting a take-down request rights holders need to upload documents establishing their identity and copies of their registered trade marks so that Alibaba can authenticate them. When a registered trade mark is renewed it will need to be authenticated again. Once authenticated, the rights holder can then submit hyperlinks to the offending listings and provide reasons and any additional material supporting the alleged infringements. Each time a rights holder reports a listing on the IPP Platform the IPP Platform improves its ability to proactively identify and remove subsequent infringing listings. Once a takedown request has been processed, the affected merchants may submit counter-notices disputing the allegation of infringement.

As with the other platform providers, Alibaba’s IPP Platform material does not discuss the jurisdictional nature of trade mark registrations. The jurisdictional scope of a rights holder’s registrations is particularly relevant for the Alibaba.com and Aliexpress.com platforms, given that they are directed towards multiple jurisdictions. It is not clear whether a party having a trade mark registration in a particular jurisdiction has sufficient grounds for having a listing completely removed from the Alibaba.com and Aliexpress.com platforms or whether the listing would only be geo-blocked or disabled for the relevant jurisdiction.

Amazon
Amazon’s Project Zero program seeks to discourage the sale of pirated or counterfeit goods on its website through the combined effect of its three independent elements.

The first element is Amazon’s Brand Registry, which is an automated tool that utilizes the power of Amazon’s machine learning technology to scan for and remove listings of suspected counterfeit goods on a daily basis. To make use of this feature a participating rights owner needs to upload their registered or pending brand data, which is limited to textual marks or device marks containing textual elements, and these need to match those on the product or its packaging. This feature has resulted in a dramatic decrease in the amount of counterfeit listings. In order to qualify the registration needs to have been issued by at least one of the government trade mark offices in the following countries / regions: the United States, Australia, Benelux, Brazil, Canada, Egypt, the European Union, France, Germany, India, Italy, Japan, Mexico, Poland, Saudi Arabia, Singapore, Spain, Sweden, Turkey the United Arab Emirates, or the United Kingdom. Owners also need to have an Amazon account. Only owners can enrol their brands in the Amazon Brand Registry, but the owners can then authorise agents to be representatives in relation to some or all of those brands.

The second and potentially controversial element gives rights holders the power to remove listings that they consider to be for counterfeit goods. Such removals also feed into and inform the algorithms for the automated removal tool. As a guard against abuse of this facility Amazon requires a very high percentage of the removed counterfeit listings to have been correctly identified as such, failing which a rights owner will be removed from the Project Zero program.

The third element is Amazon’s Transparency service. To make use of this service each unit of a seller’s product needs to be assigned a unique code. Whether fulfilled by Amazon or shipped directly by selling partners, products utilizing this service cannot be listed on Amazon or shipped without valid Transparency codes. The optional product serialization service is offered for a volume weighted per unit charge.

eBay AU
eBay’s Verified Rights Owner (VeRO) Program allows owners of intellectual property rights and their authorized representatives to report eBay listings that may infringe on those rights. Rights owners can submit a Notice of Claimed Infringement along with details of their trade mark rights and the offending listings. If eBay AU removes a listing they notify the affected merchant and provide them with the rights owner’s email address so that they can raise any questions or concerns directly with the rights owner. Rights owners participating in the VeRO Program can optionally have a profile page detailing their claimed IP rights and enforcement policies and/or contact details.

Temu AU & NZ
Temu’s IP Portal allows intellectual property rights owners and their authorized representatives to report alleged infringing listings to Temu for investigation. Details of the registered trade mark rights relied upon are required along with statements of why the listings in question infringe those rights. Temu also allows rights owners to upload their registration certificates and details into its Brand Registry, thereby making it easier to lodge further reports of alleged infringement.

TradeMe
TradeMe allows both rights holders as well as any registered users to report listings that are suspected of infringing an IP right for TradeMe to investigate further. Rights holders can submit their requests here, along with proof of their New Zealand trade mark registration, while registered users can submit via the ‘Report this listing’ feature at the base of each listing page.

Concluding Remarks
This review shows that there is some variation across popular online shopping platforms in the required processes and tools available for removing listings suspected of infringing registered trade mark rights. Some of the larger online shopping platforms are already using AI to proactively assist in removing infringing listings and this is likely to be more widely adopted. As such technology becomes more readily available for implementation there may be scope for future judicial decisions and/or legislative changes that raise the bar on the minimum measures online shopping platforms need to make available for removing suspected infringing listings. There will still need to be mechanisms in place that enable sellers who have had legitimate listings removed to have them reinstated as well as sanctions for rights holders who persist in seeking to remove legitimate listings.

Authors: Quinn Miller and Tom Robertson

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