International Trademark Association Releases Updated Guide to Address the Sale of Counterfeits Online

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The International Trademark Association (INTA) today released an updated version of its best practices document to help brand owners, online marketplaces, and other relevant stakeholders combat counterfeiting on the Internet.

The International Trademark Association (INTA) today released an updated version of its best practices document to help brand owners, online marketplaces, and other relevant stakeholders combat counterfeiting on the Internet. The release coincides with World Anti-Counterfeiting Day, June 8, and comes as counterfeit products and services have continued to proliferate globally online and elsewhere, especially in e-commerce during the COVID-19 pandemic.

The guide’s proactive voluntary measures are intended to further safeguard the public from the harms of counterfeiting and provide additional trademark protection to brand owners. In addition, the best practices lay the foundation for INTA’s discussions with policymakers, the intellectual property community, and others about anticounterfeiting—one of the Association’s major policy issues.

Entitled “Addressing the Sale of Counterfeits on the Internet,” 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 in recent years. It supersedes earlier versions released in 2017 and 2008.

Key recommendations are geared specifically toward each of various stakeholder groups: search engine advertising services, search engines, online marketplaces, payment service providers, brand owners, social media sites, registrars and registries, and logistics companies.

Among the new proactive provisions, for example, the guide recommends that brand owners should stay up to date on an online marketplace’s policies addressing counterfeit goods and how the marketplace is organized to accept reports on users or listings connected to potentially counterfeit goods.

In addition, among other stakeholders, the guide states that social media sites should enact a filtering program for the removal of postings that advertise the sale of counterfeit merchandise in publicly available pages or groups; search engines should implement removals as informed by brand owner feedback; online marketplaces should employ mechanisms to facilitate the takedown of counterfeit goods, including click-through notices, online help pages, email communication, online chat, filters, and/or other communications.

“Discussion continues about who is responsible for curbing the dangerous explosion in online counterfeiting. It’s simple—we all are,” said INTA CEO Etienne Sanz de Acedo. “All stakeholders—including online marketplaces—have a role in bolstering enforcement efforts, and as technology continues to advance and ease counterfeiters’ schemes, all stakeholders must continue to adapt their tactics and be even more proactive. The updated guide is an invaluable resource that provides guidance with collaboration in mind.”

A task force of members from INTA’s Anticounterfeiting Committee, Enforcement Committee, and Internet Committee prepared the updated guide.

Also as part of the Association’s recent anticounterfeiting efforts, INTA’s Board of Directors in March approved two resolutions calling on courts and policymakers to implement new mechanisms to strengthen anticounterfeiting enforcement capabilities. The methods include innovative legal frameworks dealing with the seizure and adequate disposal and transfer of confiscated goods and instituting criminal sanctions when genuine products are modified without a brand owner’s authorization.

On the consumer front, Mr. Sanz de Acedo emphasized that World Anti-Counterfeiting Day provides an opportunity to reinforce the dangers posed by counterfeit goods as well as the value to individuals, economies, and society at large of purchasing genuine products. INTA suggests that consumers shop directly at authorized retail distributors both on the Internet and in stores, look for verifiable contact details and real-time customer service for online retailers, and be wary of prices that “seem too good to be true.”

About the International Trademark Association
The International Trademark Association (INTA) is a global association of brand owners and professionals dedicated to supporting trademarks and related intellectual property (IP) to foster consumer trust, economic growth, and innovation. Members include nearly 6,500 organizations, representing more than 34,350 individuals (trademark owners, professionals, and academics) from 185 countries, who benefit from the Association’s global trademark resources, policy development, education and training, and international network. Founded in 1878, INTA is headquartered in New York City, with offices in Beijing, Brussels, Santiago, Singapore, and Washington, D.C., and a representative in New Delhi. For more information, visit inta.org.

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