what we think

By Wendy Chen and Victoria Lei

Taobao and Tmall (both part of the Alibaba Group) are two of China’s most popular online market places, not only for brands but also for counterfeiters. Both platforms have established an elaborate set of rules to counter infringements involving trademarks, copyrights, and patents (inventions, utility models, industrial designs).

For a repeat offender, both platforms adopt more stringent measures. Punitive measures include a warning letter, suspension of the offender’s account for 2 months, or even termination of that account. The intellectual property rights (IPR) owner may assist by providing the platform with evidence proving that the infringer is involved in repeated acts of infringement.

Document Requirements

When filing a complaint, the following should be submitted:

1. ID and contact information of the complainant
   • A natural person complainant must provide a passport or ID card copy; or
   • An entity complaining party must provide a business license or certificate of incorporation.

2. Supporting documentation confirming the existence of the IP right(s), such as:
   • PRC Trademark Registration Certificates
   • PRC Patent Certificates
   • PRC Copyright Registration Certificates or other materials proving ownership of copyright

3. Information on the infringing content, such as:
   • URLs of allegedly infringing product listings
   • Evidence and/or information confirming that the listed products are counterfeit or infringing goods, such as statements, verification letters, etc.
   • IP agents need to provide a copy of a Power of Attorney or authorization document (notarization and legalization not required)

Filing Complaint Procedures

We summarize the main steps in the process:

1. Register relevant IP right(s) with the platform.
2. File an online application for take-down through Alibaba Group’s complaint system, with proof of the registered IP right(s) and supporting documents.
3. If the complaint documents are deemed adequate, the platform will normally take down the infringing links(with possible exceptions). Complainants can track the status of their complaints online.
4. If the target disagrees that it is infringing on IP rights, it can submit a response within a limited time period after the date of the takedown. The platform then transfers the target’s response to the complainant. In that case, the complainant should provide its own response immediately.
5. The platform will then make a decision based on the arguments and materials from both parties.

Other Options 

In recent years the enforcement on Taobao and Tmall has become increasingly difficult, i.e. the platform may refuse to approve the registration of an IP right (especially copyright and patents), or the platform could refuse to take down the links or an infringing store if it deems the evidence submitted by the complainant insufficient, or if the infringer challenges the position. The owner of the IP does have other options, some of the most common are:

• Send a cease & desist letter directly to the infringer to pressure the infringer to remove the store / links, to avoid further legal actions.
• File a complaint with the local Administrative for Market Regulation (AMR) authority, which will investigate the infringement and can (i) order removal of the link / store, (ii) penalize the infringer, and (iii) in serious cases, close the infringer’s business. 
• File a civil lawsuit for an injunction to remove the link / store, and demand compensation for suffered damages.

R&P’s IP team advises international clients on developing their IP portfolio and enforcement. The team manages various applications, appeals, oppositions, invalidation, transfer, cancellations, lawsuits, etc.; represents clients to fight infringement with administrations (incl. online platforms, AMRs, Customs), with the Public Security Bureau, and through Chinese courts. For more information, please contact Victoria Lei at leishijing@rplawyers.com or Maarten Roos at roos@rplawyers.com.