Online IPR Protection in China and South-East Asia€¦ · Online IPR Protection in China and...

Online IPR Protection in China and South-East Asia

Soazig THEMOIN

French and European Trademark & Design Attorney

Conseil en propriété industrielle

Mandataire agréé auprès de l’Office de l’Union Européenne de la PI (EUIPO)

BRUSSELS, 26 JULY 2017

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Helika JurgensonProject Officer

South-East Asia IPR SME Helpdesk

China IPR SME Helpdesk

26 July 2017 Copyright © 2017 South-East Asia & China IPR SME Helpdesk. All rights reserved.

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Today’s Speaker

Name: Soazig THEMOIN

Firm: Vidon IP GroupLocation: France

• Soazig started her career in 1994 as a lawyer, Trademark and IP legal expert. Her expertise in Intellectual Property Law and her active participation in the firm’s development led her to work extensively on IP issues in Asia.

• As a Partner, and Managing Director of the VIDON IP Law Offices in France and in Asia, Soazig assures the development of the legal Department of VIDON IP Law Group, the Management of a team of European Trademark and Design Attorneys and Lawyers, working on a daily basis with Chinese and Thai Attorneys, while managing directly files, essentially in strategy of appropriation and valuation of the signs and the other creations, and associated disputes.

526 July 2017 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved.

Intellectual Property Issues for EU Businesses in China & South-East Asian’s Major Countries


TOPIC NO. 1 (« ONLINE »)

ROBUST ONLINE SELLING STRATEGY IN CHINA

TOPIC NO. 2 (« ONLINE »)ROBUST ONLINE SELLING STRATEGY IN SOUTH-EAST ASIA

How to Develop a Robust Online Selling Strategy in China & South East Asia

1. Specificities of China’s E-commerce

2. Specificities of E-commerce within the ASEAN

3. Legal Frameworks

4. Case Studies

5. To-Do List When Selling Online in China and/or South East Asia


OUTLINE TOPICS

Topic 1. Specificities of China’s E-commerce1.1 Statistics

• Worldwide largest e-commerce market

• Great percentage of online sales as compared with total retail sales


590

342

496

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100

200

300

400

500

600

700

China USA EU

Online Sales in Total Retail Salesin 2015 (USD bn)

Source: PRC National Bureau of Statistics, US Department of Commerce, Eurostat

Topic 1. Specificities of China’s E-commerce1.1 statistics• Mobile-first market (almost mobile-only)

• Companies should adjust their strategies accordingly (social networks, applications)


Source: European B2C E-commerce Report 2015

Topic 1. Specificities of China’s E-commerce1.2 Major players


Source: chinadaily.com.cn

Tmall is the business-to-consumer platform counterpart to Taobao(consumer-to-consumer platform like eBay)

JD.com was primarily in 1998 an e-retailer (i.e. Jingdong was the seller). It however opened later on to third-party sellers in 2004: it had become a business-to-consumer platform. E-retailing still accounts for more than 60% in 2016.



• Website for online shopping (consumer-to-consumer platform)

• Operated in China by Alibaba Group• Outperforms US competitors

0

50

100

150

200

250

300

350

400

450

2012 2013 2014 2015

Gross Merchandise Volume (USD bn)

Alibaba Amazon eBay



• Instant messaging service, and also payment service• Developed by Tencent in China• Over 1 bn created accounts• Widely used in China but less popular overseas

1712

1000

806

218

0

200

400

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800

1000

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1600

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Facebook (USA) WhatsApp (USA) WeChat (CN) Line (JPN)

Active Users in Social Networks (mln)

Facebook (USA) WhatsApp (USA) WeChat (CN) Line (JPN)



• Search engine• Over 80% market share in China• 2015 revenue: RMB 66 bn

• Baidu urged to overhaul advertising results following scandal in 2016 (a student died after receiving experimental treatment which he learned of from a promoted result)

Note: Google search sites are no longer accessible from mainland China since 2010.

Topic 1. Specificities of China’s E-commerce1.3 Shopping agenda


Source: Saatchi & Saatchi (2016)Western dates Chinese dates

Topic 1. Specificities of China’s E-commerce1.3 Shopping agenda


• Singles Day: "Double Eleven" on 11 November• Between the National Day and CNY• Launched in 2009 by Alibaba• Ideal for online selling strategies

• 11/11/2015: Key Figures- 467 millions of packages were delivered in 24h.- 10 billions yuan (€1,5 billions) of merchandise sold within 12 minutes 38 seconds (26 fewer minutes than in 2014!)- 710 millions transactions registered by Aliplay (Alibaba'spayment system)- 70% of the purchases were made trough a smartphone- Purchasers came from 232 countries- The overall winner of the day: Xiaomi (100 000 connected wristlet, 81 000 box, 66 000 Tv monitors sold within 24h)

Topic 2. Specificities of ASEAN’s E-commerce2.1 Figures & Statistics


2017 Data* Thailand Indonesia Malaysia Singapore

Population 68 million 265 million 31 million 6 million

Internet Users41 million

(2/3rd of the population is connected)

130 million 21 million 5 million

Social Media Users

60% of the population Facebook: 47 millionInstagram: 11 million

Twitter: 9 million1 out of 2 transactions

are made online, via social media or smartphones

39% of the population

41% of transactions made online

69,6% Facebook: 19 million

80% of the population Facebook: 4 million

Internet penetration rate60%

Internet growth of approximately +

1,700% compared with 2000

50% 69,6% 80%

* Sources: http://www.internetworldstats.com/stats3.htm#asia

https://wearesocial.com/special-reports/digital-in-2017-global-overview

http://www.internetworldstats.com/stats3.htm#asia

https://wearesocial.com/special-reports/digital-in-2017-global-overview

Topic 2. Specificities of ASEAN’s E-commerce2.2 Statistics


Malaysia

Indonesia

7 million of the country’s consumers shop online per month-8 out of 10 Malaysians shop online.In 2015, Malaysia’s ecommerce market was estimated at $1billion, which constitutes 1.1% of country’s total retail sales.Malaysia’s ecommerce market is on a par with Singapore notonly in market size, but also in terms of the well-developedinfrastructure within the country compared to the rest ofSoutheast Asia.

The country is on track to become one of the biggest markets in Asiawith the potential to comprise 52% of Southeast Asia’s entireecommerce value by 2025.Despite the country’s attractive $46 billion ecommerce valuationThe size of the counterfeit goods market in Indonesia is huge: 3.8%inpharmaceuticals, 8.5% in food and beverages, 12.6% in cosmetics,33.5% in software, 37.2%in leather goods, 38.9% in apparel and49.4% in printer ink, according to data published by MIAP.More than 50% of fraudulent medicines are being sold on theInternet, resulting in BPOM’s cooperation with Kominfo in closingdown sites selling illegal medicine. More than 10,000 sites wereblocked in 2014.

Sources:https://ecommerceiq.asia/top-ecommerce-sites-malaysia/https://ecommerceiq.asia/top-ecommerce-sites-indonesia/

https://ecommerceiq.asia/top-ecommerce-sites-indonesia/



Topic 2. Specificities of ASEAN’s E-commerce2.2 Statistics


Singapore

Thailand

Singapore accounted for 25% of Southeast Asia’s 2013 online retail value, larger than the region’s largest market, Indonesia that contributed 20%. Singapore’s ecommerce market is valued to reach $5 billion in 2025, making up 6.7% of retail sales in the country.

Ecommerce spending expected to grow overthe next 5 years at 18.2% - Country’secommerce market is worth $58.4billion(ETDA)

Sources:https://ecommerceiq.asia/top-ecommerce-sites-singapore/https://ecommerceiq.asia/top-ecommerce-sites-thailand/

https://ecommerceiq.asia/top-ecommerce-sites-thailand/



Topic 2. Specificities of ASEAN’s E-commerce2.3 Major players


Lazada Group operates Lazada, Southeast Asia’s number one onlineshopping and selling destination, with presence in Indonesia, Malaysia,Philippines, Singapore, Thailand and Vietnam.Lazada is pioneering eCommerce in the SEA regionApril 2016: Alibaba group acquired a controlling stake in Lazada

Source

https://www.lazada.com



‘’How does Lazada Identify counterfeits?:• Screening by Lazada• Customer’s complaint when customer received : Low quality; Fake

serial number; Different product from seller’s information• Lazada reserves the right to deem good as fakes and does currently

not allow to prove authenticity of certain product families, as thesecertifications cant be verified either. ’’

In practice:

Customer has just the following options to return product & No option is called ‘’FAKE’’:

Lazada provides the « Zero Tolerane on Counterfeits (2017/02/22) :

Source




‘’all of products sold are 100% authentic and sourced directly from the manufacturers anddistributers.’’

However, here-after samples:

http://www.lazada.com.my/louis-vuitton/?searchredirect=louis+vuitton

Source




Qoo10 and Giosis Pte. Ltd.: joint venture company formed with eBay.One of the largest online marketplace, to become Asia's leading onlinemarketplace.Qoo10 provides an online marketplace platform that allows its buyers “enjoyhighly secure and convenient shopping experience”.Giosis Group currently operates 7 localized online marketplaces in 5countries including Japan and Singapore and plans to expand into more Asiancountries in the near future.

Some of the QbrandeSafe Member listof Brand owner Company : GoPro, Unilever Malaysia, Bose, l’Occitane, Casio Computer, Crocs…

Source: http://www.qoo10.sg/gmkt.inc/Qsafe/QsafeMemberRegHist.aspx



‘’Qoo10 does not allow listing, selling item that imitates name-brand product.Qoo10 have strict restrictions on imitation even the seller does not acknowledge items’ authenticity.Furthermore, it is not allowed to sell imitation item even seller announce that it is not genuine one.’’

Source : http://www.qoo10.sg/gmkt.inc/CS/NHelpSecurityList.aspx?kind=02

Specificities of ASEAN’s E-commerce2.4 Major marketFocus on medicines & Fake sold through Internet


One SANOFI’s study carried out in May 2015 made it possible to highlight the perceptions of the nationals ofseveral countries of the Asian continent regarding counterfeit medicines.

Countries concerned are China, Indonesia, Malaysia, the Philippines, Thailand and Vietnam. Overall,nearly nine in ten people have heard of counterfeit drugs (89%).Two-thirds of Asian countries consider counterfeit medicines to be dangerous (67%) and less than onethird to be potentially hazardous (31%).

Indonesians are 86% considered dangerous and 14% potentially dangerous. The Malaysians and theFilipinos are more divided: the dangerousness is accepted but it is only potential for 45% and 41% of themrespectively. More than one in two Indonesians considered themselves to be insufficiently informed on thesubject (55%), while three-quarters of the Thais (76%)

In all countries, the majority of respondents consider that the risk of obtainingcounterfeit medicines is highest (64%) by purchasing medicines on the Internet. Thailand and Malaysiashow the highest scores with more than 70% of respondents.

Source : Results of the SANOFI’s Study - Results of the Happycurious opinion poll for Sanofi conducted in May 2015. Online questionnaire with a sample of 4005 people.

3. Legal Framework3.1 State of play on online platforms in China

IP LAWS AND REGULATIONS

• Draft e-Commerce Law (published for comments on December 2016, not enacted for the time being)

Limited liability of platforms (already set out in the 2006 Regulations on the Protection of Rights to Information Network Communication)

Notice and takedown procedures (same, platforms shall take necessary measures)

Contracts

Payments

Protection of users’ data

Bad/good faith mentioned in 3 provisions

IP infringements lead to fines ranging from 30 to 100,000 RMB + revocations of business licenses


3. Legal Framework3.1 State of play on popular platforms in China


Two main legal risks-> facing indelicate competitors-> infringing third parties rights

Who is liable ?Regulations on Protection of the Right of Communication through Information Network (2006), Article 22 (also on the Draft e-Commerce Law)

A network service provider [...] bears no liability for compensation if: [...](3) it does not know or has no reasonable grounds to know that the work, performance, or sound or video recording made available by the service recipient is an infringement; [...](5) upon receiving a written notification of the right owner, it removes [...] the work, performance, or sound or video recording which the right owner believes to be an infringement.

3. Legal Framework3.1 state of play on popular platforms in China


• Products subject to comments (see the Taobao screenshot below)• Authenticity of goods viewed as a major concern by consumers

Good review possible

Bad review clicked

Comment from a purchaser: "Definitely not an authentic good"

3. Legal Framework3.2 IP Laws in major countries


3. Legal Framework3.2 Specific Laws in SINGAPORE

2926 July 2017Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved.

Network Service Provider Liability in SINGAPORE (Section 26(1) of our Electronic Transactions Act (“ETA”)):Network Service Providers (“NSPs”) are, subject to certain exceptions, immune from civil or criminal responsibility for third party content byvirtue of Section 26(1) of our Electronic Transactions Act (“ETA”). Section 26(1) provides that:

-Liability of network service providers26.—(1) Subject to subsection (2), a network service provider shall not be subject to any civil or criminal liability under any rule of law inrespect of third-party material in the form of electronic records to which he merely provides access if such liability is founded on —(a) the making, publication, dissemination or distribution of such materials or any statement made in such material; or(b) the infringement of any rights subsisting in or in relation to such material.(1A) Subject to subsection (2), a network service provider shall not be subject to any liability under the Personal Data Protection Act 2012 inrespect of third-party material in the form of electronic records to which he merely provides access”.

The e-commerce law in Singapore do not deal with claims against counterfeiters.

One exception to Section 26(1) is Section 26(2)(d) of the ETA which provides that NSPs are subject to the provisions of the Copyright Act(“CA”).Under the CA, NSPs are granted immunity from copyright infringement for activities that are integral to its functions such as transmission,routing and provision of connections, system caching and storage and information location, provided the NSPs comply with the requirementsunder the CA.Instead, the CA provides other avenues for copyright owners to deal with infringing material online. Copyright owners can, in such instancesof infringement, issue notices (commonly referred to as “take-down notices”) to request NSPs to either disable access to a website thatcontains purportedly infringing materials or remove such content from its network.

Since 2014, changes to the copyright regime also allow copyright owners to apply directly to Court for injunctions disabling access toflagrantly infringing sites, without having to claim against NSPs and establish their liability for copyright infringement.

3. Legal Framework3.2 Specific Laws in SINGAPORE


Latest developments : Combating Online Piracy in SINGAPORE:

New sections 252CDA, 252CDB and 252CDC “Order to disable access to flagrantly infringing online location” inserted in the Copyright(amendment) Act 2014.

Purpose: allow copyright owners (or Exclusive Licensee to apply directly to Court for injunctions disabling access to flagrantly infringingsites, without having to claim against NSPs and establish their liability for copyright infringement.Before: “take-down” procedure only i.e. notice to be sent to the NSP or ISP to request the removal of the copyright infringing material. It isonly if the intermediary failed to reply to the above notice that right holders were eligible to request an injunction order to the Court (bysuing the ISPs and establishing their liability for copyright infringement).

Judicial Site Blocking - Process

Source:https://www.mlaw.gov.sg/content/dam/minlaw/corp/News/Annex%20B%20-%20Copyright%20Act%20judicial%20process.pdf

https://www.mlaw.gov.sg/content/dam/minlaw/corp/News/Annex B - Copyright Act judicial process.pdf

3. Legal Framework3.2 Specific Laws in MALAYSIA


Malaysia:

Malaysia has a plethora of laws, but no specific e-commerce law:• Trademark act 1976;• Trade Descriptions Act 2011;• Copyright (Amendment) Act 2012;• Trade Description (Optical Disc label);• Price Control (Labelling by Manufacturers, Importers, Producers or Wholesalers);• Optical Disc Act 2000 and Optical Disc Regulations 2000;• Border measures;• Criminal prosecution;• Civil enforcement.

Anti-counterfeiting online:For online platforms, a specialised IP enforcement forensic unit has been created in order to monitorwebsites which offer online counterfeit and pirated materials.In terms of legislative provisions:Ministry of Commerce may invoke its powers under Section 5(1)(b) of the Trade Descriptions Act 2011,which states that it is an offence for any party to supply or offer to supply any goods to which a falsetrade description is applied in order to seize counterfeit goods that are sold online

3. Legal Framework3.2 Specific Laws in INDONESIA


Indonesia:

Source: APAA COUNTRY REPORT - INDONESIA ANTI COUNTERFEITING COMMITTEE Prepared by: Justisiari P. Kusumah & Erna L. Kusoyhttp://www.indolaw.org/UU/Law%20No.%2028%20of%202014%20on%20Copyright.pdf)

Network Service Provider liability are regulated by Telecommunication Law and several other regulations related to the internet provideractivities in Indonesia. However these laws do not deal with claims against counterfeiters.

There is no specific e-commerce laws in Indonesia. Action are based on the following laws:- Indonesian IP Laws, i.e. Trademark Law, Patent Law, Industrial Design Law, Copyright Law;- Indonesian Penal Code (“IPC”);- Indonesian Consumer Protection law;- Indonesian Electronic Information and Transaction law; and- Other Indonesian Laws that may be relevant to the case.

Legal consequences for web hosting and/or ISPsTheoretically speaking, relevant laws indicate that the web hosting and/or ISPs could potentially be liable for any trademark infringementoccurring in their areas of authority. In such case, the web hosting and/or ISPs could arguably be subject to the criminal provisions set outunder Article 56 paragraph 2 of the Penal Code. And/orArticle 56 deals with the participation of a party who deliberately provides assistance, opportunity, instruments/means or information tocommit a criminal action. The web hosting and/or ISP could potentially be liable on the basis of complicity. Article 56 of the Penal Codeprovides that: “An accessory to a crime shall be punished: 1. if it deliberately assists in the commission of a crime; 2. if it deliberately providesopportunity, means or information for the commission of a crime”.

To tackle online infringement, the new copyright law has dedicated a section (Chapter VIII of New copyrightand related rights in theinformation and communication technology Act 2014 gave new powers to the Ministry of Information to block access to infringing materialfound on internet. : aticle 55 and 56.

http://www.indolaw.org/UU/Law No. 28 of 2014 on Copyright.pdf

3. Legal Framework3.2 Specific Laws in INDONESIA


Indonesia:

Source: APAA COUNTRY REPORT - INDONESIA ANTI COUNTERFEITING COMMITTEE Prepared by: Justisiari P. Kusumah & Erna L. Kusoyhttp://www.indolaw.org/UU/Law%20No.%2028%20of%202014%20on%20Copyright.pdf)

Chapter VIII of New copyright and related rights in the information and communication technology Act 2014

Article 55: (1) Every person who knows Copyright infringement and / or related rights over electronic systems for use

Commercially can report to the Minister.

(2) The Minister shall verify the report referred to in paragraph (1).

(3) In case of insufficient evidence based on the results of the verification report referred to in paragraph (2), at the request

of the complainant Minister recommend to the minister who held government affairs in the field of telecommunications and

informatics to cover part or all of the content that violates the Copyright in the electronic system or make an electronic system

service can not be accessed.

(4) In the case of closure of Internet websites referred to in paragraph (3) shall be conducted as a whole, within a period of 14

(fourteen) days after the close of the Minister shall request a court warrant.

Article 56: (1) The Minister who held government affairs in the field of telecommunications and informatics based on the

recommendation referred to in Article 55 paragraph (3) can close the content, and / or permissions of the user who violates

Copyright and / or related rights in the electronic system and make the service system Electronic inaccessible.

(2) Further provisions on the implementation of the closure of the content and / or permissions of the user who violates Copyright

and / or related rights in the electronic system or electronic system renders services as referred to in paragraph (1) shall be

determined by joint regulation of the Minister and the minister whose tasks and responsibilities in the field of communication and informatics.

http://www.indolaw.org/UU/Law No. 28 of 2014 on Copyright.pdf

3. Legal Framework3.2 state of play on popular platforms in ASEAN


Thaïland:

There is no specific e-commerce laws in

Thailand.Overall position for online intermediaries:liability exemption i.e. they can neither be heldresponsible for the counterfeit goods and illegaldata uploaded on the Web by third parties, northey are bound by an obligation to monitor theinformation and products offered for sale.However, there are legal tools for IPR owners totake action against online IPR infringement.

Thailand has recently updated its IP laws to combat the rampant online counterfeiting (fake products) and piracy (e.g. pirated movies, music and content):

The Computer Crime Act (No. 2) B.E. 2560 (2017), which takes effect on May 24, 2017:


3. Legal Framework3.3 Actions taken by online platforms

3. Legal Framework3.3 Actions taken BY PLATFORMS


Notice and Takedown procedure AliProtect IPR Policy (for Alibaba and AliExpress)

• Available in English• Create a user account and submit proof of your IPRs (trademark, copyright, invention

patent, utility model or design patent) and your ownership of those IPRs• Review by AliProtect ending in approval or rejection of the documents provided• Submit complaints• AliProtect notifies the opposite party• The opposite party potentially files counter-notices• AliProtect removes (or retains) the items in issue and withdraws points

- 12 points: the site is blocked for 7 days- 24 points: the site is blocked for 14 days- 36 points: the site is blocked 21 days- 48 points: the membership is terminated

• No charge



Notice and Takedown procedure



Notice and Takedown procedure Taobao IPR Policy

• Only in Chinese and accepts only IPRs registered in China• Create a user account• Provide identification and evidence as to the IPRs in issue (online procedure)• Submit a takedown notice• Taobao takes up to 7 working days to process the complaint (shorter delay possible

depending on the quality profile of the IP owner)• The seller has 3 days to submit a counter-notification• Good faith users are users that have a takedown rate of 90% or higher• Bad faith users are users that have a success rate of 45% or less• Points system similar to that of Alibaba: Taobao can temporarily block the shop,

close it down or take other measures, depending on the seriousness of the infringement

• No charge



Notice and Takedown procedure Jingdong (JD.com) IPR Policy

• Available in Chinese and English• Upload all relevant documents• Submit a takedown notice• Points system (withdrawals not necessarily IPR-related)• The seller has 2 days to file a counter-notice, together with all supporting documents• Jingdong removes (or retains) the items in issue and may take other measures

depending on the seriousness of the infringement



No Takedown procedureIPR Policy available

DECLARATIONLazada provides the « Zero Tolerance on Counterfeits (2017/02/22) :‘’It is the seller’s responsibility to ensure their listing follows theseguidelines. If counterfeit being detected for times, Lazada will inactiveyour account forever, and charge USD500 as penalty ’’.

3. Legal Framework3.4 Foreign pressure


Aug. 26, 2016 letter to Alibaba by EU stakeholders

Courtesy J. B. Barbier, INPI

2016-17 ECC IPR WG Key RecommendationsStrengthen the enforcement framework to tackle online infringement

ConcernRemoving infringing material currently burdensome and not discouraging repeat infringers.

Assessment- contrast between easiness to infringe online and difficulty to connect such infringements with targets in the offline world, - costs of taking offline enforcement are of particular concern to the working group.

Recommendations• Improve notice-and-takedown procedures for all online platforms.• Find sustainable and reasonable levels of preventative action to be taken by online

platforms and impose an obligation to act where reasonable levels of monitoring are technologically feasible.

• Create a framework for prompt and effective offline enforcement.

3. Legal Framework3.4 Foreign pressure


4. Case Studies (China Mainland)


Orange Hotel v. Alibaba (2009)

• Orange Hotel is a budget hotel chain.

• It claimed that a search for its name on Yahoo China, an Alibaba-owned website, produced a link to the website of Green Tree Inn, a Shanghai-based competitor, at the top of the results list, with the words: "Instead of booking Orange Hotel, you better come to Green Tree Inn".

• Orange Hotel accuses Yahoo China of thus allowing its rival an unfair advantage.

• The Beijing court has ordered GreenTree Inn to pay RMB 67,000 compensation to Orange Hotel Group for unfair competition in relation to its search engine results. Alibaba's China Yahoo, a second defendant in the case, reportedly settled with Orange Hotel Group out of court.



• As a result, E-Land sued both the seller and Taobao• Taobao claimed that

1) it was not aware that the products were counterfeits; and2) it had removed the item from the website whenever requested

• The Shanghai Intermediate Court ruled that Taobao should have adopted additional measures in January 2011

• The Higher Court rejected Taobao’s appeal in April 2011

E-Land v. Taobao Case (2011)- trademark and copyright infringement -

• E-Land World is a South-Korean conglomerate• Teenie Weenie was a subsidiary engaged in youth fashion

apparel• From December 2009 to February 2010, counterfeit

garments of poor quality were sold on Taobao, leading to revenue loss and reputation tarnishment

→ This case was a major step for stricter actions from online platforms, despite significantly low damages awarded (RMB 3,000)



Zaigle v. Tmall (2015)- patent infringement -

• Zaigle is a South-Korean barbecue manufacturer• It owns a patent over an infrared cooker• Zaigle found that tens of online shops from Tmall and Taobao (both run by Alibaba

Group) were selling a barbecuing device undoubtfully infringing Zaigle’s Chinese Patent

• Zaigle claimed that 1) a third-party seller infringed said patent; and 2) Tmall had failed to remove those products following the patent holders's notice

• The case went to the Supreme Court, which ruled that such platforms, whenever notified, shall either directly remove the products in issue or forward the notice to the seller

• Consequently, Tmall has failed in its duty and is therefore jointly and severally held liable for the revenue loss (RMB 50,000)

4. Case studies (Singapore)


High Court Suit No 1102 of 2015Calvin Klein, Inc and another v HSInternational Pte Ltd and others[2016] SGHC 214

Sources:http://www.davies.com.au/ip-news/calvin-klein-online-trademark-infringement-in-singaporehttp://www.singaporelaw.sg/sglaw/laws-of-singapore/case-law/free-law/high-court-judgments/18621-calvin-klein-inc-and-another-v-hs-international-pte-ltd-and-othershttp://www.allenandgledhill.com/pages/publications.aspx?list=LBulletinAreas&pub_id=1283&view=dhttp://www.bakermckenzie.com/-/media/files/insight/publications/2017/03/singapore-ip-newsletter/nl_singapore_ipnewsletter_march2017.pdf?la=en

http://www.davies.com.au/ip-news/calvin-klein-online-trademark-infringement-in-singapore

http://www.davies.com.au/ip-news/calvin-klein-online-trademark-infringement-in-singapore

http://www.singaporelaw.sg/sglaw/laws-of-singapore/case-law/free-law/high-court-judgments/18621-calvin-klein-inc-and-another-v-hs-international-pte-ltd-and-others

http://www.allenandgledhill.com/pages/publications.aspx?list=LBulletinAreas&pub_id=1283&view=d

http://www.bakermckenzie.com/-/media/files/insight/publications/2017/03/singapore-ip-newsletter/nl_singapore_ipnewsletter_march2017.pdf?la=en

5. To-do List When Selling Online in China and South-East Asia


Business-Wise

• Set up the relevant strategy (as a rule of thumb, not specific to online selling)• Segment the relevant market; • target a consumer segment; and• position the goods/services based on competition

• Adjust adequate timing (shopping festivals)• Use services with great local market exposure (Taobao, WeChat, etc)

Legal-Wise (1/2)

• Register IPRs before entering the Chinese market (not specific to online selling)• Monitor your IPRs online• Enforce your IPRs (online, offline)

5. To-do List When Selling Online in China and South-East Asia


Legal-Wise (2/2)

Enforce your IPRs (online, offline):

• Collect evidence et analyse facts• Evaluate strengths and weaknesses of your IPR vs. evidence collected and• Set up strategy of enforcement, typically:

• File a takedown notice with the platform • File a civil/criminal/administrative case if relevant• If appropriate, file a domain name arbitration dispute for transfer of domain

name (Uniform Domain-Name Dispute-Resolution policy with ICANN, WIPO Arbitration and Mediation Center…)

Q&A____________

www.vidon.com


• Soazig THEMOIN• Firm: Vidon IP Group (Europe – Asia)• Email: [email protected]• 47 IP attorneys, agents and lawyers in 8 offices in Europe and Asia: Bangkok, Hong Kong, Shanghai

mailto:[email protected]

Thank you for your attention!

____________

www.vidon.com


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WE ARE HERE TO HELP YOU GROW...”

The China and South-East Asia IPR SME Helpdesk provides free, confidential, business-focused advice to European Small and Medium Enterprises (SMEs) relating to IPR in China and South-East-Asia.

To learn about any aspect of intellectual property rights in Vietnam or elsewhere in South East Asia, including Local partners Due diligence IP audits Or to simply learn about the local landscape and adapt your IP plan

accordingly – something which can save you EUR in the long term


Online IPR Protection in China and South-East Asia€¦ · Online IPR Protection in China and...

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