Our first article in this series highlighted the financial and reputational damage counterfeiting causes to brand owners and the significant societal consequences associated with the reproduction, sale and dissemination of counterfeit products around the globe. We looked at how having strong Intellectual Property (IP) protection, selling through social or e-commerce platforms that have rigorous seller verification processes and educating consumers, retail and social platforms about the difference between genuine and counterfeit products, are all fundamental strategies which can be effective in the fight against online counterfeiting. Supplementing these steps with strategic enforcement action and IP protection measures are equally important.
Enforce: Use Platform IP Right Tools
If you do not act against infringing listings on platforms, what incentive is there for e-commerce and social platforms to proactively monitor for misuses of your brand? Understanding and engaging with the IP protection tools offered by social and e-commerce platforms is essential to protecting your IP. As technology advances, we will see more platforms use artificial intelligence and machine learning to detect and automatically take down infringing listings. Engaging now with these platforms and taking proactive action to enforce your brand via the tools they currently provide, will ensure the platform and market is educated about your brand. As noted by Ms. Maral Behnam-Garcia, then Senior Director of Brand Protection and IP at Wish:
“[T]he number one advice I would give to brands is to partner with us (Wish, ecommerce platform) … partnerships are extremely important. And for us, we are in the same boat as the brands are. We are trying to combat the same exact problems that brands are trying to combat. And if we work together and we solve this in a collaborative fashion, it helps us achieve a common goal, which is to get rid of these counterfeits as a whole”.1 (brackets added)
Platforms understand that their IP protection tools are critical in reducing counterfeits and to gaining seller and buyer confidence in their platforms.
The table below summarises some of the free tools offered by some popular e-commerce and social platforms to IP owners which can be utilised to combat IP infringements, including counterfeits. Generally, the platforms will require you firstly to register and submit information and documents evidencing your IP rights. Once these are verified, you will then be able to submit take-down notices or file IP infringement complaints against suspected infringing product listings.
If you have not already, you should make it a priority to register your IP rights with all the major platforms, so you are poised to act if problematic listings arise.2
Report an IP Violation/Take Down an Infringing Listing
Verify Your Product Authenticity
Automatic Removal of Counterfeit Product
Members of the International Trade Mark Association (INTA) can now undertake a new Online Takedown Certificate Program, which gives in-depth training on each platform’s enforcement requirements.5 Your IP lawyer can assist with online takedown procedures.
Enforce: Plan to Track and Litigate
In serious cases of counterfeits, utilising these online tools will not be enough. It will be essential in some instances to undertake further investigations, track the operator at the source and take litigation action for infringement of your IP. No matter the size of your business, having a clear IP Policy on what your business will (and will not) act on, which has approval from the executive team and an approved budget, and will ensure swift decisions can be made to pursue action against the most damaging instances of IP infringements.
Technology as a Weapon: Can you use Technology to Authenticate Your Product?
There are technologies that IP owners can use to give consumers confidence that they are buying genuine products. Unique identifiers, radio frequency identification (RFID) tags, holograms, QR codes, or near field communication (NFC) tags help consumers verify the authenticity of products. Products can be embedded with RFID tags, which are scanned to verify their authenticity. Hologram stickers containing a unique serial number are placed on products, which are linked to a database that verifies the authenticity of the product. NFC tags are small chips embedded in a product and can be scanned with a smartphone and can be linked back to a website which confirms its authenticity.
Fashion brands have been quick to adopt technology in the fight against counterfeits. It is commonly reported that luxury handbag brands use RFID tags and holograms which are scanned to verify authenticity or microchips with authenticating details digitally embedded inside the bags.6
To protect their effectiveness (and from being mimicked by counterfeiters) some brands do not disclose the exact technologies they use. However, most will explain the technology to consumers in-store or near product listings on platforms, helping consumers to verify genuine products.
Blockchain technology can also be used in tracking a product and verifying its authenticity. Blockchain creates a ledger that records the history of a product; each movement of the product through the supply chain is time-stamped and securely recorded and cannot be changed. This transparent and incorruptible tracking helps ensure the authenticity of the product. A product’s unique identifier can also be recorded on the blockchain, giving manufacturers and consumers an easy way to verify the product’s authenticity, making it difficult for counterfeiters to reproduce. IP protection is insurance for your innovation, ideas, products and branding and must be at the forefront of your mind when running a successful business. Similarly, utilising the protections and tools offered by e-commerce and social platforms from the very beginning of selling online and thereafter maintaining a collaborative partnership with these platforms is essential to protecting against the devastating effects of counterfeits.
Footnotes:
1 ‘M. Behnam-Garcia, Senior Director of Brand Protection and IP at Wish’, Heroes of Brand Protection, (Red Points, 9 September 2021) at 11:37 mins.
2 For example, in recognition of the damage to IP rights holders and legitimate businesses and harm to consumers that occurs from counterfeits, the UK Intellectual Property Office recently released a Guide to Protecting IP Rights on e-commerce stores, which is equally helpful for Australian businesses. United Kingdom Intellectual Property Office, Protection Intellectual Property Rights on e-commerce stores (Web Page, 20 March 2025), https://www.gov.uk/government/publications/protecting-intellectual-property-rights-on-e-commerce-stores/protecting-intellectual-property-rights-on-e-commerce-stores.
3 Alibaba IP Protection Platform covers the following Alibaba E-Commerce platforms: Taobao.com, Tmall.com, Tmall.hk, 1688.com, Aliexpress.com and Alibaba.com.
4 These also can be used for IP violations on Instagram.
5 INTA, Online takedown procedures certificate program, (Web Page, Undated), https://www.inta.org/resources/online-takedown-procedures-certificate-program/.
6 See, for example, https://www.kewaybags.com/en-GB/new-microchips-louis-vuitton-bags, https://www.bagreligion.com/blogs/expert-opinions/guide-chanel-microchip-nft-blockchain-authentication-2021?srsltid=AfmBOopFAskAJ7hDIn4ws6PazsJ4Ot_vQEnpcDibbCc6NVAWxklpIwVC
