CBBC’s remarks introduced the context of this eighth roundtable meeting over two years of a strategic cooperation agreement with Alibaba, which has already included several valuable pilot projects with tangible results for UK companies.

Alibaba’s intellectual property (IP) protection management team were in attendance.

1. Summary: Key Deliverables & Follow-up Actions

Alibaba made a presentation at the meeting on the big change for Alibaba online IPR complaint systems and expressed willingness to pilot new initiatives including:

• Alibaba will consider a pre-emptive measures pilot project with their Proactive Management team (主动管理团队) to let the brand owners understand its work process better and work together on improving pre-emptive measures’ effectiveness.
• CBBC voiced desire for the formalization of a two-track system for processing simple and complex/disputable design rights. Alibaba will consider application of repeated infringement “three strikes-out rule” for design infringement cases or inclusion of design rights in “Good-faith” takedown mechanism. UK stakeholders to send examples of simple cases for quick processing.

2. Alibaba IPR Complaint Systems Developments

Alibaba introduced the merger of different IPR complaint systems:

• The Aliprotect and Taoprotect will be merged into one system in late October this year
• All the IPR complaint systems for different Alibaba platforms will have only one unified entrance for filing the IPR complaints at ipp.alibabagroup.com/index.htm
• The brand owners / authorized agents can merge or upgrade the account in different systems
• The website and process will be optimized and more friendly for users
• The rules of Aliprotect and Taoprotect are different, and the new rules after the merger will come out at the end of the fiscal year. The trend is to be more open and positive for IP protection. The new rule will more close to the international rules.

3. Retail presentation on pre-emptive measures

3.1. Pre-emptive Measures Pilot Project: Alibaba expressed a willingness to experiment with setting pre-emptive measures to suspect counterfeits and work with Proactive Management team (主动管理团队) accompanying with brand owners and CBBC’s involvements to understand Alibaba’s efforts and process.

• CBBC and brand owners will share EBay and other international e-commerce platforms’ experiences on pre-emptive measures to Alibaba.
• Working with Proactive Management team (主动管理团队) to let brand owners and CBBC understand its internal process within a signed NDA.
• UK brands will provide Alibaba with suggestions on practical keywords to get the ball rolling.

3.2. Trends in counterfeiting behaviour and UK retailers’ suggestions for anti-counterfeit work

• The pages of the infringers’ online store are different on the computer end and the mobile phone end. More and more transactions are completed by mobile phone APP.
• New Alibaba rules included:
  • The disguise of the trademark will be considered as trademark infringement and can be filed at Alibaba IPR complaint system, which applied to repeated infringers “three strikes-out rule”.
  • Product descriptions and illegal use of brand pictures can be applied to the repeated infringers “three strikes-out rule”.
  • The infringers that illegally use brand’s pictures with substantial long-term activities will be given penalty deduction for 48 points, meaning the infringers cannot operate anymore.
• UK brands suggested online stores that are only selling counterfeits could be closed down when they have been found and the counterfeits have been identified.
• In some cases, infringing pictures can be found on the buyer’s comments forum but cannot found in the product description page. However, Alibaba will not accept such complaints as the comments posting by the buyers are difficult to be defined in good faith or bad faith.

4. Design (patent) infringement complaints

• UK design right owners hope that simple patent infringement case shall be processed quickly by Alibaba while there can be a formal two-track system, which may benefit owners of stable and unchallenged design rights.
• UK design right owners hope repeated infringers “three strikes-out rule” can be applied for design patent infringement cases.
• The burden of proof of the brand owners is quite heavy when they file design patent infringement complaint. The brand owners need to do notarized purchase and do a lot of work in order to let Alibaba accept the complaints.
• UK design right owners think that Alibaba might bear the similar “landlord liability” in design patent infringement as it plays the similar role in the online business marketplace.
• The protection of the works of applied-art (实用艺术作品) is also quite difficult in China as there is no clear law to admit and protect this kind of rights. So UK right owners cannot use this right easily as a legal basis for design protection.
• Alibaba do have a lot of patent litigations regarding patent infringement complaints as different officers from IP Office/Court have different opinions on the same case.
• The patent complaint experience in Canton Fair (China Import and Export Fair) is not suitable for Alibaba as the complainant and respondent cannot do a face to face cross-examination.
• Alibaba will consider differentiating the simple design patent infringement case for a quick processing in a long term. At current stage, the patent infringement cases not apply to “Good-faith” Takedown Mechanism.

5. Merchandising rights

• It is difficult for the right owner to prove its ownership over the works as merchandising right cannot be directly protected in China and there is no stipulation of such right in Chinese laws and regulations yet. And the image or character/name itself sometimes also cannot be considered as “works” that can be protected by PRC Copyright Law yet.
• Companies can provide the real POA for TMALL and Alibaba IP team to verify the unauthorized distributors.
• TMALL’s IP strategy is “zero tolerance on counterfeits” to build “Quality Tmall” (品质天猫). Tmall would be glad to cooperate with right owners to verify authorization documents and to assist the authorized distributor to open shop at Tmall.
• If suspected products look very similar to a movie/TV/etc. character, Alibaba may accept complaint of infringement based on general likeness.
• Alibaba already has its own IP online transaction platform Ali Fish (阿里鱼). More merchandising licenses are recommended to be taken place here.
• Alibaba supports the online copyright complaint via “Good-faith” Takedown Mechanism (诚信投诉机制) and “IP Joint-force system” (权利人共建平台). The repeated infringers “three strikes-out rule” applies to copyright infringement complaints, but only for publishing.
• For the offline enforcement, the right owners always face the difficulties to find a duly legal basis for filing complaint to Copyright Bureau and/or Public Security Bureau and the affirmation of the similarity between the piracy and genuine products.

6. Attendees

• Alibaba Group: Wu Yu Jiao(Mu Yao), Platform Governance Intellectual Property Manager
• Alibaba Group: Lynn Chou, IP protection, Assistant Manager
• Alibaba Group: Tang Jie (Kun Lan), Brand cooperation, IPR Protection, Platform Governance Division, Assistant Manager
• Alibaba Group: Liao Pingjun (Xuan Bi), Publishing Specialist, IPR Protection and Innovation
• Alibaba Group: Xie Yufang (An Ji), Senior Safe Operation Specialist
• British Embassy Beijing, Monica Su, IP Officer
• China-Britain Business Council: Mick Ryan, Director of Business Environment and IP
• China-Britain Business Council: Flora Fan, Consultant, Business Environment and IP
• China-Britain Business Council: Michelle Pan, Chief Representative Hangzhou
• China-Britain Business Council: Lillian Zhu, Events Manager
• Burberry: Amily Chen, Senior IP Counsel
• Unilever: David Cao, Assistant Manager Brand Protection
• Dyson: Alice Li, Principal Associate (Gowling WLG, External counsel)
• Entertainment One, Frederic Rocafort, Legal Counsel (Joseph Lee & Associates, External counsel)
• Universal Pictures International, Hongkai Zhang, Brand Development Legal Consultant
• Estee Lauder (Jo Malone), Conan Chen, Security Manager, Global Security & Trademark Protection
• Moet Hennessy Diageo (China) Co., Ltd. (Glenmorange & Ardbeg), Tracy Tan, Brand Protection Supervisor

7. Photo From Day