IPOPHL helps build trust between IP rights owners and e-commerce players in anti-counterfeiting, piracy endeavor

February 18, 2020

The Intellectual Property Office of the Philippines (IPOPHL) held on Feb. 17, 2020 a workshop to improve intellectual property (IP) protection in e-commerce, once again offering online retail platforms and brand owners an avenue to thresh out issues and reach effective and mutually practicable solutions in clearing the online trading environment of counterfeiting and piracy. 

The workshop, which tapped Baranda and Associates as facilitator, was organized in collaboration with the UK Prosperity Fund ASEAN Economic Program. 

In its presentation, the law firm identified three kinds of counterfeiters sprawling online: small-scale infringers, which include micro and small enterprises and non-entrepreneurs selling second hand items; repeat small-scale infringers or those who create one or two different seller accounts to dodge any liability or penalty charged to its first selling account; and mass-level infringers whose activity mostly involve copyright infringement and works being very easy to replicate digitally. 

Some of the present concerns tackled were the accurate verification of a seller's identification, tracing the infringer hiding under the guise of a dummy account, recovery of damages for brand owners, filing a criminal lawsuit, site blocking, securing an injunction order from courts. 

Meanwhile, possible mechanisms to resolve these challenges were likewise presented. The solutions were suggested to be part of a broader code of conduct the UK Prosperity Fund proposed the private sector to observe through a memorandum of understanding (MoU). 

The proposed Philippine MoU is based on the 2016 Brussels “MoU on the sale of counterfeit goods via the internet" to which 26 global ecommerce platforms, associations, and brand owners whose IP rights are covered by EU laws, are signatories. A notable signatory to the 2016 Brussel MoU is Facebook, one of the online marketplaces operating in the Philippines.

The proposed MoU shall highlight the importance of e-commerce players adopting a set of uniform and simpler guidelines on receiving and processing complaints from rights owners and on taking down unscrupulous accounts, referred to as notice and take-down (NTD) for short.

The main objective of a uniform NTD mechanism is to simplify processes, save brand owners from the burden of understanding different webs of procedures that, anyhow, lead to one goal: prevent infringers from profiting in their platforms. 

Ideally, the NTD, "should be accessible via the websites of online commerce platforms," as well as "understandable, not excessively burdensome and easy to subscribe to, complete and process immediately," according to the Brussels MoU.

Major e-commerce players present at the IPOPHL workshop were Zalora, Lazada, Shoppee, and Facebook. All expressed their commitment to review the possibility of adopting a single and more simpler standard on NTDs, but underscored the need to be given more time to discuss the guidelines with their respective mother companies headquartered abroad. 

"IPOPHL deeply appreciates and values the participative spirit of e-commerce platforms. Since August 2018, the first time we had called them into our office for a dialogue, they have been consistently showing their willingness to strengthen their IP policies," IPOPHL Deputy Director General Teodoro C. Pascua said.

"With their positive reception of the UK Prosperity Fund's proposal for an industry-wide code of conduct on NTDs, we can expect more engagement with them in the coming months. IPOPHL is willing to hold more forums to bring together rights owners and online marketplaces to strengthen trust and cooperation. We hope these efforts will result in a safer online trading environment pending various legislative bills aimed at setting clear-cut guidelines on the protection of rights holders in the online space, as well as the extent of liability of online platforms," Pascua added. 

The IPOPHL official was referring to the New IP Code Act, which sets out IPOPHL's proposed amendment to the current IP Code of 1998, and the Internet Transactions Bill. Both laws are currently with Congress and are at various levels of progress toward legislation.