BUCERIUS IP CONFERENCE 2014:
ENHANCING AND PROTECTING BRAND VALUE IN THE GLOBAL MARKETPLACE

October 2, 2014
Bucerius Law School, Hamburg, Germany


Dr. Paolo Beconcini (Carroll Burdick & McDonough LLP)
Counterfeiting on the Web and Brand Protection in China: The IP Enforcer's Perspective

As e-commerce grows and conquers the world as an efficient, fast and convenient way of trading goods and purchasing products, the risks of trademark infringement activities, particularly those of counterfeiting also increase. If online platforms, such as eBay, Alibaba or Taobao, have certainly changed the lives of many consumers in a positive way, e-commerce has also led to the exacerbation of concerns, among which the circulation of fake goods. Given the fact that producers and sellers of counterfeit products are now able to access the markets worldwide through e-commerce platforms, dealing with online trade of counterfeits is becoming more and more challenging. The complexity of this task can be better appreciated when one considers how hard it is to successfully identify and localize counterfeiters who have the ability to operate from anywhere in the world and to hide behind changeable identities.

The presentation aims at outlining the pros and cons of the present trademark enforcement strategies against online counterfeiting in China and proposes alternative approaches specifically focused on the peculiarities of the Chinese legal, economic and social system. Mass take-downs of e-shops from B2Bs or B2Cs may not be the best and most efficient approach against Chinese e-commerce platforms, such as Taobao or Alibaba. Also, freezing Paypal accounts in the U.S. is but a temporary measure which will not stop infringers, and similarly, suing end users in China will not work as well as in some EU countries. The presentation outlines in particular the important role that B2B and B2C platforms can play as an investigative tool, rather than as a target of enforcement endeavors and shows that consequently there may be better and more efficient enforcement approaches to reduce the impact of online counterfeiting than simply random and massive scale website take-downs.