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After the slowdown of the Covid-19 pandemic, digital sales and purchase activities still continues to experience robust growth. Now, consumers are accustomed to purchasing their favorite things without visiting shopping centers or storefronts. E-commerce websites or platforms serve as a bridge between buyers and sellers, connecting them and addressing all of their needs. When the anti-IPR infringement mechanism on e-commerce platforms/websites is still weak, the explosion of transactions on e-commerce platforms/websites is also posing challenges for intellectual property rights holders. Meanwhile, the fact that so many online sales accounts and adverts have been formed makes it impossible for consumers to discern who are legitimate business entities and which are real products.
Foellie, a women's fragrance brand, is experiencing copying, brand impersonation, and copyright violations on e-commerce websites and platforms in Vietnam. The owner of the Foellie trademark, Laorganic, has authorized KENFOX IP & Law Office to carry out legal procedures in Vietnam to protect this asset. KENFOX IP & Law Office and Laorganic have determined that preventing rampant advertising and selling of counterfeit goods is an urgent action that should be prioritized and implemented as soon as possible to minimize damage and negative impact on the Foellie brand's reputation, while simultaneously protecting the health of consumers.
With nearly 20 years of experience in dealing with IP infringement, KENFOX IP & Law Office has recommended strategies to deal with this effectively. The meeting between KENFOX IP & Law Office with Lazada, Shopee, Korean Law Firm and the official distributor of the Foellie brand was held at the offices of Shopee and Lazada. Below are some photos taken during the meeting.
During the meeting, the parties discussed the realities of IPR infringement on e-commerce websites, emphasizing the damages that rights holders are suffering and health risks posed to consumers. Mr. Quan, Nguyen Vu stated that in order to effectively handle IPR infringements, e-commerce websites need to respond more quickly to IPR infringement claims from rights holders, receive and set up a quick and convenient handling process, and cannot compromise with those who sell counterfeit goods and infringing IP rights goods, even “hand-held” products because they are tax evasion items that results in losses of the state budget. In addition, Shopee and Lazada must strengthen their oversight of sales accounts created on their e-commerce platforms.
Mr. Quan added that approved online sellers are required to provide written assurance that they will not sell counterfeit or infringing products. If they are sanctioned for infringing intellectual property rights, after six to twelve months they will not be granted online sales accounts. If Shopee or Lazada receives a complaint from the IPR holder alleging that their online sales accounts are selling counterfeit or IPR infringing goods, those online sales accounts may be asked to provide a written explanation and evidence of the things being offered for sale. If Shopee or Lazada gets a complaint from the IPR holder, the concerned online accounts may be compelled to submit a written explanation and authenticity proof.
Representatives of Shopee and Lazada greatly valued the insights and experiences given by Mr. Quan. The parties have reached an agreement on the priority actions, while still complying with the IP rights infringement complaint policies established by the two e-commerce websites.
In fact, when detecting that a third party advertises or offers products that are suspected of being counterfeit or infringing on IP rights sold on e-commerce exchanges, the rights holder should consider performing the following four-step process:
First, determine which Vietnamese distributors have been authorized for sales.
Second, identifying the identities of the sales accounts. In the product description part of Shopee or Lazada, it is possible to get the seller's name, address, and phone number. You must collect this information in order to identify the infringer and include it in a petition or complaint to the Vietnamese Enforcement Agency for IPR handling.
Third, send a complaint to Lazada or Shopee on the e-commerce platforms, complying with the requirements and details in this platform.
Fourth, to prevent potential infringing objects, it is required to check and identify those who sell counterfeit goods on a big scale, and then to take strong measures to create a deterrent effect.
Guidance on handling complaints about IPR infringement on Shopee: here
Documentation to be provided for each complaint field:
1. For “counterfeit goods” or “trademark infringing goods” in Vietnam
(i) Power of attorney (if the complainant is not the owner);
(ii) Certificate of trademark registration in Vietnam;
(iii) Pictorial instructions / Price List;
(iv) Complaint in conformity with Shopee form (signed, stamped and showing the link of the complained product/seller account). => A template of a complaint to be downloaded here
2. For "copyright" infringement in Vietnam
(ii) Certificate of Copyright Registration in Vietnam; if any
3. For "Industrial design" infringement in Vietnam
(ii) Certificate of industrial design registration;
(iii) Complaint in conformity with Shopee form (signed, stamped and showing the link of the complained product/seller account). => A template of a complaint to be downloaded here
4. For “inventions” infringement in Vietnam
(ii) Patent Certificate;
Lazada encourages IPR holders in Vietnam to submit IP infringement complaints through the IPP platform. Please download their guidance here
First, you need to register for the IPP Platform "Register for an intellectual property protection platform account" at this link
Then, login to: (IPP Platform)
Or you can file a complaint by filling in the fields at the end of this link: link
