Administrative authorities in Shanghai, led by the Shanghai IP Office, issued a joint notice on June 8, 2021, which sets out suggestions to locally-based trade platforms for strengthening protection of IP rights. While most of the provisions track national rules and standards, the Shanghai document seems to encourage platforms to reach out to local administrative authorities and unnamed “institutions” for assistance in determining whether particular products are infringing. It remains unclear for now just how platforms will rely on external parties for such assistance. But of equal interest is whether local authorities will now be pressing Shanghai-based platforms to take up disputes which to date they refused to handle on the basis they were “too difficult” and thus better suited to resolution by Chinese courts.
Several Opinions of Shanghai Municipality on the Protection of Intellectual Property Rights in Electronic Commerce (for Trial Implementation)
June 8, 2021
To all relevant units:
In order to guide and regulate e-commerce platform operators to fulfill their intellectual property rights protection obligations, improve e-commerce platform’s intellectual property risk prevention and dispute handling capabilities, and promote the standardized and healthy development of the platform economy, in accordance with relevant laws, regulations and rules, the “Shanghai E-commerce Intellectual Property Rights Opinions on Protection Work (for trial implementation)” is hereby issued. Please follow and implement them.
Shanghai Intellectual Property Office
Shanghai Copyright Administration
Shanghai Municipal Commission of Commerce
Article 1 –In order to guide and regulate e-commerce platform operators in fulfilling their intellectual property rights protection obligations, improve e-commerce platform’s intellectual property risk prevention and dispute handling capabilities, and promote the standardization and healthy development of the platform economy, these opinions are formulated in accordance with relevant laws, regulations and rules.
Article 2 – These Measures are intended to guide operators of e-commerce platforms in the city to establish and improve intellectual property protection rules, and to promptly handle disputes over patents, trademarks, copyrights, and geographical indications.
Article 3 – Intellectual property department and the copyright management departments [MSBs] shall, in conjunction with the commerce department, provide guidance to e-commerce platform operators to establish and improve intellectual property protection rules, organize and support the development of business training in intellectual property rights protection in the e-commerce field, provide guidance to e-commerce platform operators, and provide guidance on handling difficult and complex intellectual property disputes.
Article 4 – E-commerce-related industry organizations shall strengthen industry self-discipline and integrity building, promote the development of intellectual property-related business training, and supervise and guide operators in their industries to participate in market competition in accordance with the law.
Article 5 – Intellectual property rights protection assistance institutions shall perform their rights protection assistance functions and provide services such as legal consultation, evaluation, and appraisal for intellectual property rights holders, platform operators, and platform operators.
Article 6 – E-commerce platform operators [platforms] shall establish intellectual property complaint and report handling mechanisms, improve management mechanisms such as identity authentication, information release, and dispute handling, formulate intellectual property protection rules, and handle intellectual property disputes in a timely manner.
E-commerce platform operators who formulate or modify intellectual property protection rules, and take measures to warn, suspend or terminate services on platforms that violate the intellectual property protection rules, shall be publicized in accordance with the law.
Article 7 – Operators of e-commerce platforms shall establish and improve platform user access management systems, specify in user access agreements and inform platform operators [vendors] not to sell goods that infringe on intellectual property rights of others or provide services that infringe on the intellectual property rights of others, and prohibit the publication of information about goods and services that violate the intellectual property rights of others.
For operators whose store types are indicated as “flagship store”, “brand store”, “specialized store”, “specialized store” and other words on the platform, the e-commerce platform operator shall require them to provide and review relevant evidence of rights [authorizations from rights holders].
Article 8 – Operators of e-commerce platforms shall establish an inspection and monitoring system for operators on the platform and product or service information released by them. E-commerce platform operators are encouraged to establish and improve intellectual property protection big data systems, infringing goods and services identification systems, and regularly review and evaluate intellectual property risks for goods and services on the platform.
For links to suspected infringing products marked with the words “high imitation”, “fake goods”, and “pirated”, and links to infringing products that are re-listed after the complaint is established, e-commerce platform operators shall adopt effective technical means to filter and block them.
In the event that operators on platforms [vendors] have repeatedly and deliberately infringed intellectual property rights, the operators of the e-commerce platform shall take measures to terminate transactions and services.
Article 9 – If the intellectual property right holder believes that the goods sold or the services provided on the e-commerce platform are suspected of infringing their intellectual property rights, they may notify the e-commerce platform operator to take necessary measures. The notice should be in written form and generally include the following:
- The true identity information of the intellectual property right holder;
- Proof of intellectual property rights;
- Information on suspected infringing goods or services;
- Preliminary evidence [to support] suspicion of an infringement exists;
- A written guarantee of the authenticity of the notice.
If the notice involves patent rights, the e-commerce platform operator may require the right holder to provide materials such as an infringement comparison statement or a utility model or design patent rights evaluation report.
If the notice involves copyright, the e-commerce platform operator may request the right holder to provide materials such as copyright infringement appraisals.
Article 10 – After receiving a notice from an intellectual property right holder, the e-commerce platform operator shall take reasonable and necessary measures in a timely manner and forward the notice to the operator on the platform [vendor].
The necessary measures taken should follow the principle of reasonable prudence, including but not limited to removal, blocking, disconnection and other removal measures.
Reasonable necessary measures can be determined by considering factors such as the preliminary evidence constituting the infringement, the likelihood of the infringement being established, and the specific circumstances of the infringement.
Article 11 – After receiving the forwarded notice, the operator of the platform may submit a statement of non-infringement to the operator of the e-commerce platform, and the operator of the e-commerce platform shall forward the above-mentioned materials to the intellectual property right holder. The declaration should be in written form and generally include the following:
- The real identity information of the operator in the e-commerce platform;
- Information on goods or services that require the termination of necessary measures;
- Preliminary evidence to prove an infringement does not exist, including intellectual property ownership certificates, authorization certificates, intellectual property infringement comparison judgment advisory opinion issued by a third-party intellectual property service agency, and other evidentiary materials that can prove that the intellectual property infringement is unfounded.
- A written guarantee of the authenticity of the statement.
Where the declaration involves patent rights, the e-commerce platform operator may require the operator on the platform to submit materials such as descriptions of technical features or design feature comparisons.
Article 12 – Operators of an e-commerce platforms may formulate specific enforcement measures for the notification and declaration mechanism within the platform according to the type of intellectual property rights, the characteristics of the goods or services, etc., in accordance with the law. However, the relevant measures must not set unreasonable conditions or obstacles to the parties’ actions to protect their rights in accordance with the law.
Article 13 – An e-commerce platform operator shall record and preserve product and service information and transaction information in accordance with requirements of integrity, confidentiality, and availability, and cooperate with relevant law enforcement agencies to provide data and information on the platform operator or products and services in accordance with the law. If clues to major infringement cases are discovered, they shall report to the relevant law enforcement agencies in a timely manner.
Article 14 – The e-commerce-related provisions relating to this opinion are consistent with the “E-commerce Law of the People’s Republic of China”.
Article 15 – This opinion shall enter into effect on July 15, 2021.
Translation by SIPS.
Original text in Chinese available here.