- David Goldstein -
Counterfeits online, from medicines to jewellery to sporting goods and so much more, are a scourge of the internet. The internet, explains the International Trademark Association (INTA), provides the ideal setting for counterfeiters to thrive in plain sight. Shoppers can order goods from counterfeiters online and they never know their identity. Consumers that purchase counterfeits, knowingly or not, end up with inferior and often dangerous goods, that’s if their “purchase” ever turns up at all. A global association of brand owners and professionals with a long tradition of leadership in the fight against counterfeiting worldwide is INTA. INTA’s position has long been that counterfeits should be stopped wherever they are found – including on the internet.
INTA has observed 2020 saw counterfeiters take “advantage of consumers’ increased demand to buy goods online due to the COVID-19 pandemic, and brand protection professionals have seen further growth in the already enormous quantity of counterfeits available online.”
This year did not just bring a rise in counterfeiting on the internet, but also the beginning of a re-evaluation by governments of ecommerce laws in some of the globe’s largest economies. These include China, India, the European Union, and the United States. To help combat counterfeiting INTA has been working with governments in these jurisdictions to better help protect brand owners and consumers.
In Europe, INTA is engaging with the European Commission on a proposed amendment of the 2000 E-Commerce Law through the Digital Services Act (DSA) that aims protect online shoppers. INTA submitted comments to the public consultation highlighting best practices that could be implemented to mitigate harms to consumers.
It’s also an Act ICANN has been giving feedback on. In their comments, ICANN highlighted “that the proposed DSA, in its current form, is not sufficiently specific with regard to the scope of applicability to DNS services.” ICANN went on to note “it is unclear which DNS services are targeted and whether they would fall under the general scope of application of the DSA, because DNS services are not clearly within one of the three intermediary services categories of the DSA (namely, ‘mere conduit,’ ‘caching,’ and ‘hosting’ services). In turn, concerns arise as to the liability exemption for third-party content foreseen in the DSA when it comes to DNS services.”
INTA gave some examples of programmes that could be emulated and expanded such as the trusted seller programme for pharmaceutical products under Regulation (EU) 699/2014 and the Spanish Antipiracy Commission, which uses an administrative process to safeguard copyrights in a digital environment. INTA also supports the development of national enforcement coordination centres, based on the U.S. National IP Rights Center.
INTA’s submission on the DSA “highlighted the unintended effects of the EU General Data Protection Regulation (GDPR) on IP enforcement, namely, its effects on a platform’s ability to share data with rights holders and the redaction of data, including the owner’s name and contact information, within the domain name registration data system known as WHOIS. If trademark owners are unable to determine a counterfeiter’s identity, they are unable to enforce their rights and protect their consumers from the harms of substandard counterfeits.”
Another of INTA’s efforts has been engaging “in the policy development process taking place at ICANN regarding WHOIS. However, there has been controversy and confusion over what types of access and disclosure are permissible under the GDPR.”
Further afield in the United States there are three major pieces of anticounterfeiting legislation pending in Congress that INTA is having input into. “The Stopping All Nefarious Toys in America Act or “SANTA Act” was referred to the Senate Committee on Commerce, Science, and Transportation. The SANTA Act, introduced in December 2019, sets requirements for online marketplaces selling toys to verify seller information and disclose it to consumers.”
Second is the SHOP SAFE Act (Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act of 2020) that “proposes amendments to the Lanham Act to provide for contributory liability of ecommerce platforms with third-party sellers offering counterfeits goods that represent health and safety risks. Ecommerce platforms would be exempted from liability only if the third-party seller is available for service of process in the United States and the platform demonstrated reasonable steps to prevent counterfeiting.”
Thirdly, there’s “the Integrity, Notification, and Fairness in Online Retail Marketplaces for Consumers Act or the ‘INFORM Consumers Act’ that requires online marketplaces to disclose verified information about the third-party sellers of consumer products to consumers.”
All three of these pieces of U.S. legislation aim to foster consumer trust, one of the main pillars of INTA’s mission.
In China and India, INTA has been active submitting comments on proposed regulation of ecommerce in the former and is ready for an expected consultation in the latter.
Utilising their global membership, INTA continues to advocate for stronger measures against counterfeiters and to protect brands, working with ecommerce platforms and governments, as well as finalising a study of the issues in social media that was to be discussed among members late in 2020.
