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Lazada is a Southeast Asian ecommerce platform headquartered in Singapore and owned by the Alibaba Group – a Chinese ecommerce giant which also owns other leading Chinese online marketplaces, including Alibaba.com, AliExpress, Taobao, and Tmall.
Apart from Singapore, Lazada serves consumers in several Southeast Asian markets such as Malaysia, Indonesia, Thailand, Vietnam and the Philippines. Since being established in 2012, Lazada has managed to solidify its position as one of the two largest ecommerce platforms in Southeast Asia.
Generally, Lazada adopts a strict approach towards the infringement of intellectual property rights (IPR) on its platforms, including but not limited to the sale of counterfeit products via user-generated listings. As a testament to its strong commitment towards IPR protection and zero-tolerance stance on counterfeit products, Lazada had established its IPR Protection Team in 2019 to address IPR issues that rights holders may encounter on its platforms and assist rights holders in removing listings of counterfeit products.
In this guide, we will demonstrate how rights holders may submit requests to remove listings of counterfeit products from Lazada’s platforms. We will also briefly describe the penalty regime that Lazada has instituted to penalize sellers of counterfeit products on its platforms, as well as the means of obtaining a disclosure of information on sellers of counterfeit products on Lazada for further action.
As part of the Alibaba Group, Lazada generally shares the same IPR complaint procedures as other ecommerce platforms under the Alibaba Group. Thus, rights holders or their authorized agents may submit requests to have listings of counterfeit products removed from Lazada’s platforms via the Alibaba Group’s Intellectual Property Protection Platform (IPP Platform). This option is directed at parties that intend to regularly submit IPR complaints to Lazada, or that have a large number of listings to report.
Alternatively, Lazada offers the option of submitting a one-time IPR Infringement Notice via its IP Infringement Online Form for parties that do not wish to register an account on the IPP Platform. This method is also suitable for parties that may only require occasional requests for a small number of listings to be removed.
Step 1: Register an account on the IPP Platform and provide supporting documentation
First, an account on the IPP Platform must be created.
Registrants may register an account on the IPP Platform, with a valid email address and mobile number, as either an individual or enterprise, and also as either the rights holder or authorized agent of the rights holder.
Supporting documentation: Proof of Identity / Proof of Authorization
For individuals, proof of identity such as a copy of their national identity card or passport is required for verification. For enterprises, proof of identity such as a copy of the business registration certificate or license is instead required for verification. In addition, if the registrant is an authorized agent of the rights holder, proof of authorization in the form of a valid letter of authorization or power of attorney issued by the rights holder must be uploaded.
Supporting documentation: Proof of IPR
Once the necessary information and identification documentation has been submitted, registrants must next submit proof of IPR. To do so, registrants should select “IPR Submission” under the “My IPR” tab on the IPP Platform. In respect of trademark rights, registrants must first provide the following basic information:
Registrants are also required to provide certain additional information in respect of any prior renewals, assignments or alterations of the submitted trademark(s).
Finally, copies of valid local trademark registration certificate(s) for the relevant trademark(s) must be uploaded onto the IPP Platform before registrants may submit their proof of IPR for verification.
An advantage of using the IPP Platform lies in the fact that supporting documentation need only be provided once to Lazada at the initial registration stage, unless an account holder wishes to add new IPR to their account for enforcement. This is efficient as compared to the one-time IPR complaint procedures that are typically utilized by most other ecommerce platforms, which would require rights holders or their authorized agents to provide fresh proof of identity, proof of IPR, and proof of authorization (if applicable) whenever an IPR complaint is submitted.
Step 2: Identify listings of counterfeit products and document proof of infringement for the IPR complaint
Listings of counterfeit products on ecommerce platforms are usually identified either by way of a survey of the online marketplace by rights holders, or through consumer complaints.
Generally, the sale of counterfeit products infringes upon a trademark owner’s exclusive right to use their trademark(s) in relation to goods for which the trademark(s) have been registered. It is important to note that counterfeit products may not be exact replicas of genuine products that have been or are being offered for sale by a trademark owner. A key issue for consideration is often whether certain trademark(s) have been applied to the product and/or product packaging without the trademark owner’s consent.
To assist in the identification of counterfeits, trademark owners should consider introducing unique features or identifiers onto their products and/or product packaging that are difficult for counterfeiters to identify and replicate.
This is crucial for two reasons. First, counterfeiters are becoming increasingly sophisticated and the quality of counterfeit products has vastly improved, especially in recent times. Second, while the sale price of a product may indicate whether it is a counterfeit product or not, sellers may nevertheless list their counterfeit products for sale at the same price as a genuine product, or at a slightly discounted price. Accordingly, trademark owners who have implemented unique features or identifiers onto their products and/or product packaging are much more likely to be able to make accurate determinations on product authenticity.
Supporting documentation: Proof of Infringement
Rights holders should also document the relevant proof of infringement before submitting an IPR complaint. This is usually done by way of a sample purchase from suspected listings of counterfeit products on Lazada. Once the sample(s) have been obtained, rights holders should examine the sample(s) and prepare an examination report that sets out the reasons for which the purchased sample(s) have been determined to be counterfeit. In this regard, comparison photos between the counterfeit product and a comparable genuine product (if applicable) would also be useful.
Step 3: Submit an IPR complaint on the IPP Platform
Once an IPP Platform account has been created and the relevant trademark rights have been verified, rights holders or their authorized agents may start to file IPR complaints in respect of listings of counterfeit products on Lazada via the IPP Platform.
To do so, first select “Submit a Complaint” under the “Complaint Submission” tab on the IPP Platform and select Lazada as the corresponding platform/website.
Next, select and key in (as applicable) the following Basic Complaint Information:
Finally, rights holders or their authorized agents may briefly describe the basis for the IPR complaint under “Supplemental infringement reason(s)”, before uploading proof of infringement (e.g. examination reports) and any other relevant documents in the “Proof of Infringement For The Complaint” section and submitting the IPR complaint to Lazada.
Step 4: Wait for Lazada to review the IPR complaint
Upon submission of the IPR complaint, a case number will be generated for future reference. Account holders may manage and track the status of their IPR complaints by selecting “Manage Complaints” under the “Complaint Submission” tab on the IPP Platform.
Once an IPR complaint has been successfully reviewed and accepted, the relevant listings will be removed from Lazada and the “Status” section for the complaint will be updated.
In some cases, a seller may submit a counter-notification to dispute the IPR complaint. Account holders should note that they must respond to a counter-notification within the specified timeframe in the “Status” section, failing which the counter-notification will be deemed as accepted. The IPR complaint will then be treated as withdrawn and the relevant listings will be reinstated.
Rights holders or their authorized agents may also submit a one-time IPR Infringement Notice to Lazada via its IP Infringement Online Form.
To do so, first select whether the IPR Infringement Notice is filed by the IPR owner or an authorized agent under “Identity Information”. Next, select “Trademark” as the IPR type under “Complaint Information”.
As with the account registration process on the IPP Platform, certain supporting documentation must be provided for verification purposes. Under “IPR Information”, the following information or documents must be stated or uploaded:
The filing party must also upload their proof of identity under “Identity Verification”. Once the steps above have been completed, the filing party may select the declaration of accuracy checkbox and sign off digitally on the IPR Infringement Notice before submitting it to Lazada.
Lazada utilizes a point-based system to monitor sellers for their compliance with its existing policies. Under this system, Lazada issues Non-Compliance Points on a daily basis to sellers who have performed a non-compliant action, as stipulated under its various existing policies, including but not limited to its IPR Policy.
Non-Compliance Points are reset every 365 days from the date of issuance, and a seller would usually only receive up to 16 Non-Compliance Points within 7 calendar days.
According to Lazada, the act of listing of counterfeit products on its platform(s) amounts to a violation of its IPR Policy and is likely to result in the removal of the infringing listing, as well as the issuance of up to 16 Non-Compliance Points to the seller.
Generally, sellers who have received not less than 12 Non-Compliance Points would face the tiered penalty system above with increasingly harsh punishments at each penalty milestone. For example, sellers who have received 12 Non-Compliance Points are subject to a basic listing restriction for 7 days, and their listed products will not be editable during this 7-day period. On the other hand, sellers who have received 48 Non-Compliance Points will be terminated immediately and removed from the Lazada platform.
Despite this general penalty framework, Lazada may also exercise its discretion and terminate a seller’s account immediately in serious cases, even if the seller has yet to receive 48 Non-Compliance Points. It is important to note that any account termination is final. Therefore, terminated accounts will not be reactivated even after the seller’s Non-Compliance Points should have been reset.
Sellers who operate on Lazada acknowledge and agree that Lazada has the right to disclose certain information, including but not limited to their personal and business contact information, to rights holders and the relevant authorities if Lazada has reasonable grounds to believe that the seller has breached Lazada’s IPR Policy.
Accordingly, rights holders who wish to conduct O2O investigations or take legal action against a seller of counterfeit products on Lazada may first submit a written request to Lazada for information on the infringing seller to be disclosed.
Generally, where a rights holder has provided evidence of its IPR ownership, and the written request divulges reasonable grounds for Lazada to believe that such IPR have been infringed, Lazada may disclose information on the infringing seller to the rights holder. This disclosure is typically made after a non-disclosure agreement has also been entered into between Lazada and the rights holder.
Lazada’s information disclosure mechanism is particularly useful as it reduces the information asymmetry that rights holders often encounter in online IPR infringement cases, especially with the identities of online infringers. With the disclosure of such information, rights holders should be able to better evaluate the best course of action to be taken against sellers of counterfeit products on Lazada.