CBBC-Alibaba IP Roundtable
22 February 2017
Alibaba Xixi Campus, Hangzhou
CBBC led a team of 15 delegates to Hangzhou to discuss what the Good-Faith Takedown
Mechanism and IP Joint-Force System could do for rights owners. The British Embassy were
also in attendance for support.
CBBC’s remarks introduced the context of this tenth roundtable meeting over three years of
a strategic cooperation agreement with Alibaba, which is branching into wider cooperation.
Alibaba’s brand protection cooperation team, including new director Lynn FU, and Alibaba’s
complaint handing team were in attendance.
1. Summary: Key Deliverables & Follow-up Actions
Alibaba gave a presentation that offered updates on the most recent developments in
Alibaba’s online IP Protection Platform and broader strategy, and expressed their position
on a number of issues including:
 Delegates raised the prospect for expedited processing of complaints concerning
infringement of stable and undisputed design rights. Alibaba agreed this request
was reasonable in some instances, and agreed to consider a CBBC proposal on
new procedures;
 There was confirmation that 3D trade mark enforcement is available on the
Alibaba IP Protection Platform complaint system – a key issue for spirt producers;
 Copyright ownership statements will be accepted as evidence for
image/merchandising rights enforcement without recordal;
 Alibaba will compare rights owners’ Authorisation Letters to registration
documents of certain unofficial Tmall stores, in order to assess their validity in
straightforward cases;
 Alibaba agreed to follow up regarding a specific domain name infringement
complaint, and confirmed that Taobao web links cannot infringe trade marks in
the same class;
 Alibaba are considering using special measures for IP infringements in health
and safety risk product categories.
 Alibaba agreed the Brand Cooperation Team should and will still be available for
dialogue in cases where there is an inadequacy of the Complaints Handling Team.
2. Alibaba IPR Complaint Systems Developments
2.1. Good-faith Takedown Mechanism (诚信投诉机制)
 Update: 1201 brand owners are now part of this scheme as of the end of 2016.
 Benefits
- Fast-track takedown complaints processed within 1-3 working days (but on
average actually takes 0.5 working days)
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Simplification of takedown notification including reasons for complaint or
supporting material requirements
Criteria for participating rights owners
- ≥100 complaints made per month
- ≥90 successful takedown rate for complaints submitted
- ≤1.5 successful counter-notification rate by sellers
How to join
Meet the above rate for two consecutive months
Alibaba will manually send an invitation
Sign good-faith declaration agreement
2.2. IP Joint-Force System (权利人共建平台)
 Benefits
“One-click takedowns” system proactively sends dubious listing for rights
owners’ review. The price range for filter is based on the data pool of
listings sent by the system, not the entire Alibaba platform
Share statistics on takedown listings and takedown tracking over time
Share statistics on sales preserved and cost saved by rights owners
Share statistics on merchants subject to penalty
 How to join
Must already be a Good-faith Takedown Mechanism member
Tell your Alibaba designated contact that you want to join
2.3. New Initiatives in 2017
 Alibaba Big Data Anti-counterfeiting Alliance
Special policy for founding members: designated contact, big data analysis
support, online and offline resources, advisory board
 Joint-force System 2.0
Knowledge and data input from brands owners for Alibaba’s pro-active
monitoring
Enhanced data sharing
 3 strikes policy upgrade
Non-identical IP rights will count as a “strike” from Feb 2017 (after 3 strikes
a shop is closed). And the 3 complaints can come from different
sources/rights owners
3. Discussion on Points Raised by Rights Owners
3.1. Communication Process between Brand Cooperation Team (“BC Team”品牌合作
团队) and Complaint Handing Team (“CH Team”投诉受理团队):
i.
Alibaba CH Team take care of the complaints directly and staff (i.e. “Xiao Er”)
in this team are well trained to reply to online enquiries at any stage of the
complaint procedure. Alibaba highlighted the need for brand owners to
send enquiries with clear and simple descriptions in order to improve the
accuracy and efficiency of complaints.
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ii.
iii.
Alibaba BC Team collect feedback from brand owners directly and then
forward their requests to the CH Team.
If brands owners find any inconsistencies between these two teams,
Alibaba suggested direct communication with the teams highlighting the
miscommunication and inconsistencies and they will address the issue.
3.2. Good-faith Takedown Mechanism
 Data errors
Data concerning rights owners’ complaints success records is generated
automatically and may contain errors. This is a concern for rights owners
finding it difficult to achieve ≥ 90% success rates consistency.
Alibaba says that any unexpected results occurring in their system can be
reviewed by the brand cooperation team.
 Design rights
UK design rights owners hope that simple patent infringement cases with
stable and undisputable design rights should be incorporated into “Goodfaith Takedown Mechanism” and processed more quickly by Alibaba.
Alibaba held that design right is not appropriate for incorporation into its
good-faith takedown mechanism.
Patent (even design patent) cases are complicated for Alibaba to assess,
and there is a large, ongoing internal discussion on what Alibaba’s role in
patent infringement cases should be. Alibaba does not want to be act as a
judge in cases of patent infringement.
However, Alibaba believes rights owners’ requests for special treatment for
undisputable design patent is reasonable in cases which are very obvious
infringements. Alibaba, CBBC and right owners need to establish practical
standards to make them workable. Alibaba are willing to receive ideas on
this.
 Infringers’ information
Alibaba agreed to disclose infringers’ information to rights owners, but only
on the condition that rights owners sign a specific undertaking letter (承诺
函).
 Health & safety products
Rights owners recommended that the criteria for successful takedown rate
should be diversified for different industries and product categories. For
example, in the health & safety risk category, the rate can be much lower
than 90% to reflect the need to protect consumers.
Alibaba stated that all industries presently have the same criteria, because
the process of changing the algorithm is very complicated. However,
Alibaba is already considering improvements based on the requirements of
different industries.
 Pre-emptive measures
Rights owners advised that they would like a list of names of infringers
collected from AIC decisions and court judgements as a pre-emptive
measure for spotting high-risk targets.
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Alibaba has its own concerns about this approach, as it wants to ensure that
measures like this do not prevent people doing business equally. They need
to conduct further research to assess the feasibility of such a measure.
3.3. IP Joint-Force System
 Verification system
Some rights owners noted that the quality of listings forwarded by the IP
joint-force system to rights owners is low
Alibaba explained that the listings sent by this system have already been
filtered, therefore they don’t include obvious infringements. Only difficultto-assess listings will be forwarded for verification before Alibaba enforce.
 Seller penalty records
Rights owners requested more transparency of their target’s records,
including how many “strikes” (of the 3 allowed before store closure) the
seller has.
Alibaba said they will not disclose such information to complainants as the
seller’s punishment record might be mixed with different rights owners’
and also customers’ complaints. However, where rights owners are
confident that a seller has breached Alibaba’s three strikes rule, they send
Alibaba the infringer’s information for re-checking.
3.4. Solutions for Other Rights
i.
Copyright issues
 Rights owners have recently found that high volumes of copyright complaints for
picture misuse are rejected and that a court judgement is required by Alibaba.
The CH Team said that judgements are not required for this kind of complaint.
There seemed to be some misunderstanding between CH Team staff (“Xiao Er”)
and right owners.
 Enforcement for film companies
The main complaints are based on copyright for image / merchandising
products / misuse of pictures.
Alibaba CH Team suggested that putting accurate web links and screenshots
of the official website/posters on the complaint form will help the CH Team
understand the facts more easily.
Most of the copyright works do not need to be recorded with Copyright
Bureau. Alibaba suggested that film companies provide copyright
disclaimers for all their works so they not need bear a heavy burden of
proof for the ownership of the copyright.
Film companies could make a clear list of their works and draft copyright
disclaimers accordingly.
 Alibaba CH Team suggested filing complaints with accurate URLs and
screenshots of specific pictures.
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ii.
3C certification products
 Rights owners can file complaints related to 3C certification non-compliance to
Alibaba’s Product Management and Control team (商品管控团队). Alibaba do
have strict control policies over 3C products.
iii.
3D trademark enforcement
 Alibaba will enforce 3D trademarks within the same criteria on required
documents and similarity determination. If a favourable judgement can be
provided, it will help the Alibaba team speed up processing times.
iv.
Domain name infringement
 Some shops’ names and domains mislead consumers as to the origins of a
product sold. Alibaba will enforce against a Taobao shop (bearing a rights
owner’s domain name), if it sells products under the same class of the right
owner’s registered trademark. Alibaba also agreed to look into a specific case
raised in the meeting.
v.
Unauthorized use of trademark on production description page
 If vendors use other’s registered trademarks on their product description page
without authorisation, Alibaba will only take action if the use could be
considered as trademark use (i.e. prominent, large placing of the trademark or
in specific colours or fonts).
vi.
Authorization letters and Tmall
 Alibaba will issue penalties for vendors providing false authorization letters, and
ban them from usage of Alibaba platforms.
 Alibaba will compare rights owners’ Authorisation Letters to the registration
documents of Tmall stores, in order to assess their validity;
 However, Alibaba will only do simple checks on authorization letters as they do
not want to be engaged in any contract disputes between the vendors and rights
owners.
 Alibaba will not disclose the authorization letter of the vendors on Tmall to the
public or rights owners.
4. Attendees:
 Alibaba Group: Lynn Fu, Director, Brand Protection Cooperation, Platform
Governance Department
 Alibaba Group: Xinghao Wang, Senior Manager, Global IP Enforcement
 Alibaba Group: Lynn Chou, IP Protection
 Alibaba Group: Ever Fu, Brand Protection Manager, Platform Governance
Department
 Alibaba Group: Li Qian (Man Jing), Senior Security Operations Specialist,
Platform Governance Department
 Alibaba Group: Xue Kang (Xiao Yue), Security Operations Specialist, Platform
Governance Department
 British Embassy Beijing: Monica Su, IP Officer
 China-Britain Business Council: Mick Ryan, Director, Business Environment & IP
 China-Britain Business Council: Flora Fan, Consultant, Business Environment & IP
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Universal Pictures International Entertainment, Hongkai Zhang, Brand
Development Legal Consultant
Moet Hennessy Diageo (Glenmorange & Ardbeg): Vivian Yao, Brand Protection
Manager
Richemont (Dunhill): Senior Digital Enforcement Manager
Richemont (Dunhill): Yizhen Liu, Incopro, External Counsel
AkzoNobel (Dulux): Christy Chen, Senior IP Counsel
AkzoNobel (Dulux): Cici Xu, IP Paralegal
BP: Zhang Xu, Partner (Hong Fang Law Firm, External Counsel)
Pernod Ricard (Chivas): Sam Han, Assistant IP Protection Manger
Trunki: Zihan Liu, Asia Operations Manager (Yellow Brand Protection, External
Counsel)
Dyson: Sarah Song, paralegal (Trade mark)
Dyson: Alice Li, Principal Associate (Gowling WLG, External counsel, Designs)
Dyson: Peace Peng (Gowling WLG, External Counsel, Designs)
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