Interpretation of Alibaba’s amendment of IPR Infringement Disposure Rule

 

The amended IPR Infringement Disposure Rule of Alibaba (hereinafter referred to as ‘new rule’) was formally executed on January 1, 2015. The new rule has intensified penalties on IPR infringements.

I. Classification of the infringements
Points were deducted according to the severity of the infringing behaviors on Alibaba website, while the severity was judged by the specific responsible staff of Alibaba. The new rule classifies the infringements as general infringement and severe infringement.

General infringement includes:
1) improper use of others’ trademark right, copyright, etc. in the product information, store names and domain names, etc..
2) improper use of others’ trademark right, copyright, or patent right, etc. on commodities.
3) releasing product information or other information which may confuse or mislead buyers.

Severe infringement includes:
1) displaying and selling books, audio and video products or software which contain others’ works without authorization.
2) displaying and selling commodities not produced by the registered trademark holders or the trademark licensees from countries that the commodities are originated.

II. Penalty for circumvention tricks

In the past, some infringers on Alibaba website sought circumvention measures to evade the penalty, which made the right holders hard to collect the proof. The new rule adds the penalty against the circumvention tricks as follows:
Other general infringement:
4 points deducted for the first time, while 8 points each time later; 24 points would be deducted for the severe infringements including but not limited to the following circumvention tricks: misplacing catalogues, using anagram, covering trademarks, misleading decoration of the online store and misleading buyers to specific webpage,etc..

III. Penalty for severe infringements

The new rule introduces penalty for severe infringements, which is the strictest penalty in history, i.e., if a member is accused by the same IPR holder for severe infringement for three times and the infringements are confirmed, the account will be directly closed up. In the past, recidivism rate is high as the old rule adopted accumulative point deduction method, making it hard to impose a devastating punishment on the severe infringing members. The new rule is expected to reduce the recidivism rate to some extent, yet the infringements are just recorded for 365 days and would be cleared after 365 days. More details:

Rules for the severe infringements

Severe infringements	Charges of severe infringement in total	Corresponding Penalty
	convicted for the 1st time	To give a warning
	Convicted for the 2nd time	Fettered access to the online member for 7 days
	Convicted for the 3rd time	Fettered access to the member for 15 days	The account will be terminated if one single member is convicted of severely infringing upon the same IP right for 3 times.
	Convicted for the 4th time	Shut down the account
Remark: 1. It will not take into account if the member is accused once again within 5 days upon its last conviction of severe IPR infringement. 2. If the opposing party withdraws the accusation or the member’s defense hold water, the severe infringement record of the member will be removed accordingly. However, the aforesaid does not work for the situation where the infringement convictions of the member reach the standard to shut down the account. 3. The severe infringement records will be totaled on yearly basis, which means, each record will be kept for 1 year, that is, 365 days. 4. As regards those of extraordinary seriousness, Alibaba reserves the right to shut down the account or the other penalties.

4. The old rule VS. the new rule
   http://rule.1688.com/rule/detail.htm?ruleId=1913

5. Suggestions to IPR holders on the new rule

The new rule mainly focuses on strong punishment against severe infringement behavior. As the penalty level is in accordance with the occurrence times of severe infringement, instead of making complaints against all infringing product listings, the intellectual property rights holder might select just one listing of the infringing product that meets the severe infringement definition and make the complaints. And if the online member did not make any rectifications or in the case of re-occurrence of the infringement, the intellectual property rights holder might make a second complaint 5 days after the last complaint. (Repeated complaints within 5 days shall be treated as only one complaint.) And in a rolling basis of a 365-day period, the infringing online member’s account will be permanently terminated if the valid severe complaints reached 3 times. Through several times of complaints, the infringing member’s recidivism will be under effective control.

Finally, we will continue to monitor the amendments to the rules of other online transaction platforms and share to intellectual property rights holders when there is any update.