On December 14, 2020, the European Commission published the second edition of its “counterfeit spots” list. The first was published in 2018 (iptwins.com, 2018-12-16). This document follows a public consultation (trade.ec.europa.eu). The Commission received 72 contributions (circabc.europa.eu) from owners of intellectual property rights, several chambers of commerce – including the BASCAP program of the International Chamber of Commerce -, associations and federation for the fight against counterfeiting (such as UNIFAB) or against infringements of geographical indications (oriGIn). Some platforms were also keen to make a contribution, including Alibaba, Amazon, and DHGate. These contributions are partly based on the performance indicators introduced by the Memorandum of Understanding of June 21, 2016 (ec.europa.eu) (p. 13).
To set the said list, the European Commission has adopted the following main criteria:
- the estimated quantity of counterfeit products offered on their platforms;
- the low effectiveness of measures to detect and eliminate offers of counterfeit goods;
- the allegedly insufficient level of cooperation with the owners of intellectual property rights and the authorities responsible for their enforcement.
The European Commission recognizes the efforts made by some platforms, namely Lazada, Naver, and Dragon Mart (p. 14).
The platforms most often designated by intellectual property rights holders remain Alibaba, Amazon, and eBay, notwithstanding their continued efforts. However, the Commission mainly insisted on other platforms for their lack of compliance with the recommendations of the Commission to thwart illegal content online (Commission Recommendation on measures to effectively tackle illegal content online, March 1, 2018: ec.europa.eu). Furthermore, the Commission stresses that the platforms belonging to Alibaba, Amazon, and eBay have demonstrated their willingness to cooperate with the rights holders (pp. 36 and 37). The fact remains that “further progress is needed to ensure that offers of counterfeit goods disappear from these platforms or are significantly reduced” (p. 37). Moreover, the Commission also noted:
“Notably, stakeholders urge these platforms to carry out more thorough identity checks of the vendors, and to sanction them for hiding their real identity by removing their accounts” (p. 37).
Stakeholders also called for, among other measures:
- “to introduce caps on a number of identical goods that can be offered by non-business sellers and set out more elaborate identity checks for individual sellers offering high volume of goods;
- to upload more and better photos of the actual goods offered” (p. 37).
- to simplify their brand protection programmes to make them more user-friendly;
Following these criteria and observations, the European Commission has drawn up the list of marketplaces that do not produce enough efforts to fight against online counterfeiting, namely Bukalapak (p. 37), Dhgate (p. 38), Tiu.ru, Prom.ua, Bigl.ua, Deal.by and Satu.kz (p. 38), Mercado Libre (p. 39), Shopee (p. 39), Snapdeal (p. 40), Tokopedia (p. 40), Xxjcy.com and China-telecommunications.com (p. 41).
The reasons are as follows:
- the lack of responsiveness to notifications of infringing listings;
- the lack of proactive action;
- the absence of measures to prohibit the use of specific keywords, such as “replica”;
- the absence of sanctions vis-à-vis repeat infringers.