INTA Updates Guide on ‘Addressing the Sale of Counterfeits on the Internet’

To commemorate World Anti-Counterfeiting Day 2021, on June 8, INTA published its updated best practices document, Addressing the Sale of Counterfeits on the Internet. The guide provides voluntary, up-to-date measures for all stakeholders involved in online trademark enforcement.

The 2021 guide includes several new, stronger provisions and updates other best practices to reflect the growth of the Internet, technological advances, and the increasing severity of counterfeiting—including global online counterfeiting—in recent years.

Key recommendations in the updated version are aimed at search engines, advertising services, online marketplaces, payment service providers, brand owners, social media sites, registrars and registries, and logistics companies.

For example, the guide recommends that search engine advertising services have an effective complaint process to report ads for counterfeit products and facilitate filtering and takedowns. Another example is that social media sites should use filtering to remove postings that advertise the sale of counterfeit merchandise, and provide upon request the identities of counterfeiters to brand owners whose rights have been infringed.

The new measures also encourage brand owners to keep abreast of the anticounterfeiting policies of online marketplaces, including how they accept reports on users or listings tied to potentially counterfeit goods. Online marketplaces should have ways to facilitate takedowns, including click-through notices, online help pages, email communication, online chat, filters, and/or other communications, the guide says.

The best practices are a central part in the Association’s advocacy efforts to combat online counterfeiting globally and are used as a basis for policy discussions with government officials and the various stakeholders.

INTA first published its guide of voluntary measures for stakeholders in 2008 and updated it in 2017. The 2017 edition featured the addition of important stakeholders, including registrars and registries, logistics companies, and social media sites.

A cross-committee task force of volunteers from the Anticounterfeiting Committee, Enforcement Committee, and Internet Committee prepared the 2021 update. Among the volunteers are representatives of brand owners; online marketplaces; and search engines, as well as intellectual property (IP) practitioners from around the globe. This ensured diversity in thought and equity in recommendations.

Below are key recommendations included in the 2021 update:

1. Search engine advertising services should have a clear and effective complaint process publicly available to report ads for counterfeit products and facilitate efficient filtering and takedown processes in an ongoing, proactive fashion.
2. Search engines should terminate a counterfeit seller’s account and remove the search results leading to the illegal counterfeiting content by delisting the content from their index. Additionally, search engines should prioritize search results for the promotion of authentic goods over counterfeit goods.
3. Online marketplaces should implement proactive removals and take more meaningful and proportionate action against repeat offenders. Online marketplaces should utilize “know your customer” measures to verify the identities and addresses of sellers and improve disclosure policies to facilitate access by brand owners and law enforcement authorities to information about counterfeiters, including seller identities.
4. Payment service providers should have policies in place prohibiting the use of their services for the purchase and sale of goods that are determined to be counterfeit under applicable law.
5. Brand owners should take steps on an ongoing basis to educate online marketplaces, other intermediaries, and the public as to the correct use and appearance of their trademarks. They should actively monitor offers on online marketplace, shopping, and social media platforms, with the aim of identifying counterfeits and notify the platforms (or payment service providers or other intermediaries) if there are concerns.
6. Social media sites should use a proactive filtering program to facilitate the removal of postings that advertise the sale of counterfeit merchandise. Sites should verify the identity of their users selling counterfeit merchandise and provide these details upon request to brand owners whose rights have been violated.
7. Registrars and registries should adopt, publish, and enforce IP rights policies and effect appropriate due diligence to address and minimize misuse of their services. They should clearly communicate appropriate use of such services and indicate it on their websites, as well as include it in the contracts and terms of service that they agree to with their customers.
8. Logistics companies should have comprehensive and detailed “know your customer” measures for consignors and consignees, before providing logistics services. Logistics companies should share information with enforcement agencies and brand owners actively investigating counterfeiting activities, and have mechanisms in place to refuse to provide services to consignors/consignees found to be involved in counterfeiting activities.

Addressing the Sale of Counterfeits on the Internet is a living document that will be regularly updated to address new developments and changes in anticounterfeiting enforcement.

For more information, contact Anticounterfeiting Committee, Enforcement Committee, or Internet Committee.

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

© 2021 International Trademark Association