China Court Opinion on E-Commerce Platform IP Rights

On September 13, 2020, China’s Supreme Individuals’s Court docket launched the Guiding Opinions on Trial of Civil Circumstances Involving Mental Property Rights of E-commerce Platforms (关于审理涉电子商务平台知识产权民事案件的指导意见). The Opinions could make takedowns of infringing merchandise bought on e-commerce platforms simpler and extra frequent. As Mark Cohen, prior U.S. IP Attaché in Beijing and now at Berkeley, acknowledged, the “The Guiding Opinion ought to additional assist implement obligations set forth in Part 1 (E) of the Section 1 Commerce Settlement relating to ‘Piracy and Counterfeiting on E-Commerce Platforms.’”

Article Three reads,

3. If an e-commerce platform operator is aware of or ought to be conscious of an infringement of mental property rights by an operator [seller] on the platform, it ought to take mandatory measures in a well timed method primarily based on the character of the precise, the particular circumstances and technical circumstances of the infringement, in addition to the preliminary proof that constitutes the infringement and the kind of service. The mandatory measures taken ought to observe the precept of affordable prudence, together with however not restricted to elimination, blocking, and disconnection of hyperlinks. If the operators on the platform have repeatedly and intentionally infringed on mental property rights, the operators of the e-commerce platform have the precise to take measures to terminate transactions and providers. (emphasis added).

That Article Three states “ought to pay attention to” implies a requirement to actively search for infringement on e-commerce platforms and take the mandatory measures specified. Merely responding to IP holder complaints is probably not ample for an e-commerce platform and as a substitute preemptive motion could also be required.

Article 11 defines “ought to be conscious” of as:

1) Failure to carry out authorized obligations resembling formulating mental property safety guidelines and reviewing the working {qualifications} of operators on the platform;

(2) The place there isn’t any overview of the proof of rights of operators whose retailer varieties on the platform are marked as “flagship retailer”, “model retailer”, and many others.;

(3) Failing to undertake efficient technical means to filter and block infringing product hyperlinks containing the phrases “excessive imitation” and “faux items”, and hyperlinks to infringing merchandise which are re-listed after the grievance is established; and

(4) Different circumstances the place affordable overview and care obligations are usually not carried out.

Elaborating on Article 42 of the e-commerce legislation, for a takedown, an IP holder ought to present, per Article 5 of the Opinions, in writing, the mental property proper certificates and the actual identification info of the precise holder; correct info on the accused items or providers; preliminary proof of the infringement; and a written assure of the authenticity of the discover, and many others. Extra particularly, for patent infringement, the e-commerce platform could additional require a comparability of technical options or design options (e.g., declare chart) in addition to a utility mannequin or design patent proper analysis report if the patent isn’t an invention patent (as utility fashions and design patents are usually not examined substantively).

Conversely, submitting false takedown notices “maliciously” in article 42 of the e-commerce is topic to double damages. Article 6 of the Guiding Opinions defines maliciously as “submitting solid or altered certificates of rights; submit false infringement comparability opinions [e.g., claim charts] and Knowledgeable Opinions; sending out notices figuring out that the standing of rights is unstable; figuring out that the discover is mistaken however nonetheless failing to withdraw or appropriate them in time; and repeatedly submitting mistaken notices.

Equally, per Article 8, the operator on the platform (vendor) make malicious statements in response to a takedown discover, together with: offering solid or invalid proof of rights and authorization; the response comprises false info or is clearly deceptive; the takedown discover has been accompanied by an efficient judgment or administrative choice to find out infringement and the operator on the platform nonetheless points a response; or it is aware of that the content material of the response is mistaken, however it nonetheless fails to withdraw or appropriate it in time.

The complete textual content (Chinese language solely) is obtainable right here.