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 Welcome to the Webinar!

Helika Jurgenson Project Officer

South-East Asia IPR SME Helpdesk China IPR SME Helpdesk

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• 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.

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

• Worldwide largest e-commerce market • Great percentage of online sales as compared with total retail sales

Online Sales in Total Retail Sales in 2015 (USD bn) 700 590 600 496 500

400 342 300 200 100 0 China USA EU

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

26 July 2017 8 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 1. Specificities of China’s E-commerce 1.1 statistics • Mobile-first market (almost mobile-only) • Companies should adjust their strategies accordingly (social networks, applications)

Source: European B2C E-commerce Report 2015

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 Source: chinadaily.com.cn 2016.

• Website for online shopping (consumer-to-consumer platform) • Operated in China by Alibaba Group • Outperforms US competitors

Gross Merchandise Volume (USD bn) 450 400 350 300 250 200 150 100 50 0 2012 2013 2014 2015 Alibaba Amazon eBay

26 July 2017 11 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 1. Specificities of China’s E-commerce 1.2 Major players • 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

Active Users in Social Networks (mln) 1800 1712 1600 1400 1200 1000 1000 806 800 600 400 218 200 0 Facebook (USA) WhatsApp (USA) WeChat (CN) Line (JPN) 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.

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

• 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's payment 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)

2017 Data* Thailand Indonesia Malaysia Singapore Population 68 million 265 million 31 million 6 million 41 million 130 million 21 million 5 million Internet Users (2/3rd of the population is connected) 60% of the population Facebook: 47 million Instagram: 11 million 39% of the population 69,6% Facebook: 19 80% of the population Social Media Users Twitter: 9 million million Facebook: 4 million 1 out of 2 transactions 41% of transactions are made online, via made online social media or smartphones

60% Internet penetration rate Internet growth of 50% 69,6% 80% approximately + 1,700% compared with 2000

* Sources: http://www.internetworldstats.com/stats3.htm#asia https://wearesocial.com/special-reports/digital-in-2017-global-overview

26 July 2017 16 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.2 Statistics Malaysia 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 $1 billion, which constitutes 1.1% of country’s total retail sales. Malaysia’s ecommerce market is on a par with Singapore not only in market size, but also in terms of the well-developed infrastructure within the country compared to the rest of Southeast Asia.

Indonesia The country is on track to become one of the biggest markets in Asia with the potential to comprise 52% of Southeast Asia’s entire ecommerce value by 2025. Despite the country’s attractive $46 billion ecommerce valuation The size of the counterfeit goods market in Indonesia is huge: 3.8%in pharmaceuticals, 8.5% in food and beverages, 12.6% in cosmetics, 33.5% in software, 37.2%in leather goods, 38.9% in apparel and 49.4% in printer ink, according to data published by MIAP. More than 50% of fraudulent medicines are being sold on the Internet, resulting in BPOM’s cooperation with Kominfo in closing down sites selling illegal medicine. More than 10,000 sites were blocked in 2014. Sources: https://ecommerceiq.asia/top-ecommerce-sites-malaysia/ https://ecommerceiq.asia/top-ecommerce-sites-indonesia/ 26 July 2017 17 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.2 Statistics Singapore 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.

Thailand

Ecommerce spending expected to grow over the next 5 years at 18.2% - Country’s ecommerce market is worth $58.4 billion(ETDA)

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

26 July 2017 18 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.3 Major players Lazada Group operates Lazada, Southeast Asia’s number one online shopping and selling destination, with presence in Indonesia, Malaysia, Philippines, Singapore, Thailand and Vietnam. Lazada is pioneering eCommerce in the SEA region April 2016: Alibaba group acquired a controlling stake in Lazada

Source https://www.lazada.com

26 July 2017 19 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.3 Major players Lazada provides the « Zero Tolerane on Counterfeits (2017/02/22) : ‘’How does Lazada Identify counterfeits?: • Screening by Lazada Source https://www.lazada.com • 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 these certifications cant be verified either. ’’ In practice: Customer has just the following options to return product & No option is called ‘’FAKE’’:

26 July 2017 20 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.3 Major players ‘’all of products sold are 100% authentic and sourced directly from the manufacturers and distributers.’’ Source https://www.lazada.com However, here-after samples:

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

26 July 2017 21 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Topic 2. Specificities of ASEAN’s E-commerce 2.3 Major players Qoo10 and Giosis Pte. Ltd.: joint venture company formed with eBay. One of the largest online marketplace, to become Asia's leading online marketplace. Qoo10 provides an online marketplace platform that allows its buyers “enjoy highly secure and convenient shopping experience”. Giosis Group currently operates 7 localized online marketplaces in 5 countries including Japan and Singapore and plans to expand into more Asian countries in the near future.

Some of the QbrandeSafe Member list of 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

One SANOFI’s study carried out in May 2015 made it possible to highlight the perceptions of the nationals of several 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 one third to be potentially hazardous (31%).

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

 In all countries, the majority of respondents consider that the risk of obtaining counterfeit medicines is highest (64%) by purchasing medicines on the Internet. Thailand and Malaysia show 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.

26 July 2017 24 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.1 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

26 July 2017 25 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.1 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.

26 July 2017 26 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.1 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"

26 July 2017 28 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.2 Specific Laws in SINGAPORE 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 by virtue of Section 26(1) of our Electronic Transactions Act (“ETA”). Section 26(1) provides that:

-Liability of network service providers 26.—(1) Subject to subsection (2), a network service provider shall not be subject to any civil or criminal liability under any rule of law in respect 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 in respect 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 requirements under the CA. Instead, the CA provides other avenues for copyright owners to deal with infringing material online. Copyright owners can, in such instances of infringement, issue notices (commonly referred to as “take-down notices”) to request NSPs to either disable access to a website that contains 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 to flagrantly infringing sites, without having to claim against NSPs and establish their liability for copyright infringement.

26 July 2017 29 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.2 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 infringing sites, 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 is only if the intermediary failed to reply to the above notice that right holders were eligible to request an injunction order to the Court (by suing 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

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 monitor websites 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 false trade description is applied in order to seize counterfeit goods that are sold online

26 July 2017 31 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.2 Specific Laws in INDONESIA Indonesia:  Network Service Provider liability are regulated by Telecommunication Law and several other regulations related to the internet provider activities 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 ISPs Theoretically speaking, relevant laws indicate that the web hosting and/or ISPs could potentially be liable for any trademark infringement occurring in their areas of authority. In such case, the web hosting and/or ISPs could arguably be subject to the criminal provisions set out under Article 56 paragraph 2 of the Penal Code. And/or Article 56 deals with the participation of a party who deliberately provides assistance, opportunity, instruments/means or information to commit a criminal action. The web hosting and/or ISP could potentially be liable on the basis of complicity. Article 56 of the Penal Code provides that: “An accessory to a crime shall be punished: 1. if it deliberately assists in the commission of a crime; 2. if it deliberately provides opportunity, 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 the information and communication technology Act 2014 gave new powers to the Ministry of Information to block access to infringing material found on internet. : aticle 55 and 56. Source: APAA COUNTRY REPORT - INDONESIA ANTI COUNTERFEITING COMMITTEE Prepared by: Justisiari P. Kusumah & Erna L. Kusoy http://www.indolaw.org/UU/Law%20No.%2028%20of%202014%20on%20Copyright.pdf)

26 July 2017 32 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.2 Specific Laws in INDONESIA Indonesia:  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.

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

Thaïland: There is no specific e-commerce laws in Thailand. Overall position for online intermediaries: liability exemption i.e. they can neither be held responsible for the counterfeit goods and illegal data uploaded on the Web by third parties, nor they are bound by an obligation to monitor the information and products offered for sale. However, there are legal tools for IPR owners to take 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:

26 July 2017 35 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 3. Legal Framework 3.3 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

• 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

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

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

Aug. 26, 2016 letter to Alibaba by EU stakeholders Concern Courtesy J. B. Barbier, INPI Removing 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.

• 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.

26 July 2017 43 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. 4. Case Studies (China Mainland) 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 • As a result, E-Land sued both the seller and Taobao • Taobao claimed that 1) it was not aware that the products were counterfeits; and 2) 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 → This case was a major step for stricter actions from online platforms, despite significantly low damages awarded (RMB 3,000)

• 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)

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

Sources: 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

• 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)

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…)

26 July 2017 48 Copyright © 2017 China and South-East Asia IPR SME Helpdesk. All rights reserved. Q&A ______• 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

www.vidon.com

______

ขอขอบคุณคุณ ! www.vidon.com

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