Getting Counterfeit Products Removed from China Websites

Our China IP team regularly oversees requests to Chinese websites to take down counterfeit products. The success rate on getting these products removed within a week or so is North of 99%.

The following email (modified very slightly) crossed my computer the other day. It is from one of our China IP lawyers who does these takedown requests to another of our lawyers who needed information regarding the process. I am publishing it here to show that if the IP facts (and that typically means China IP registrations or in some cases, registrations in your home country) are in your favor, getting counterfeit products removed from Chinese websites is possible and usually terribly difficult. But you do need to be persistent and it certainly helps to be able to read and write and speak Chinese. Here is that email:

I have worked on numerous takedown matters across multiple websites, many on behalf of __________, _________, and _________. Every Chinese website has its own protocols, and you need to follow that site’s protocols before you should even think about going to court (and I’m sure the client could care less about court, as they just want the products taken down ASAP). You are also correct that only the copyright or trademark or patent owner or its authorized representative can make takedown requests. However, sites vary as to the sort of authentication they need for a Power of Attorney. We rarely deal with any that require a POA [Power of Attorney] to be authenticated or notarized — this is a big time sinkhole when you have to deal with government agencies, but not so much with private companies.

The most important thing is that if you want to get traction, you will need to show proof that the IP (copyright or trademark or patent) has been registered, and for some sites you will need to prove it has been registered in China. China is obligated to recognize copyrights registered in any Berne Convention signatory nation, but try explaining Berne Convention obligations to a 21-year-old customer service representative at a Chinese online marketplace and see how far you get. This issue is where a lot of complainants get bogged down, because in some situations, by the time they get their China copyright registration and can submit a takedown request, the damage has been done. How many people will still be downloading today’s big game six months from now?

Another thing to consider is that the more sophisticated/well-heeled the website, the more likely they have a formal takedown procedure, or perhaps even a full-fledged website for submitting complaints. This is what Alibaba does. For the smaller websites, you generally have to contact someone directly and hope for the best, because the instructions on the website are hopeless. But unless the website is an out-and-out pirate site, the IP complaint people at these websites are usually helpful, albeit within their highly limited constraints. They don’t want to host counterfeit or pirated content, and so long as you do all the work for them, they’ll be happy to take it down.

Finally, you should be aware that once this process begins, it’s pretty much ongoing. The pirates and counterfeiters don’t just give up because their first counterfeit product upload got taken down. We constantly need to monitor and report.

See also Removing Counterfeits from Alibaba, JD.Com, DHGate, Taobao, etc.

We will be discussing the practical aspects of Chinese law and how it impacts business there. We will be telling you what works and what does not and what you as a businessperson can do to use the law to your advantage. Our aim is to assist businesses already in China or planning to go into China, not to break new ground in legal theory or policy.