Trademark Infringement in E-commerce Platform - What can you do to stop it?

It is a leisure Saturday evening. You are scrolling your usual Shopee apps. Out of curiosity, you search your trademark in Shopee. To your horror, you find that there are multiple merchants selling products bearing your mark. The products do not seem to be originated from your company. What can you do?

Unfortunately, Lazada and Shopee are unlikely to entertain your complaint unless you are the registered owner of the trademark which has been infringed by other sellers in their respective platform.

In the Shopee page, it states as follows: ‘Do note that in order to assist us in protecting your rights, we would require sufficient and valid supporting documentation that prove the existence and ownership of the claimed rights in the relevant jurisdiction and that the specific listings complained of constitute or contain an infringement of the said rights.’

In Lazada’s Intellectual Property Rights Infringement Policy, it reads as follows: ‘to submit a notice of IPR infringement, you must either own, or hold the exclusive license to, the IPR which is the subject of the infringement notice or be an agent with written and signed authorization from the rights owner or exclusive licensee to submit notices on its behalf.’

The predicament faced by a party who is not the registered owner of a trademark in enforcing its right against e-commerce platform owner is highlighted in the Kuala Lumpur High Court case of A & M Beauty Wellness Sdn Bhd v Shopee Mobile Malaysia Sdn Bhd. In this case, the High Court refused to grant a temporary injunction against Shopee to compel them to remove the infringing products. The High Court found that the Plaintiff is not the registered proprietor of the trademark and therefore has no right to maintain the legal action for trademark infringement.

Therefore, whether or not you are selling your products online, if your trademark is infringed and you do not have trademark registration, you will be put in a disadvantageous position when it comes to enforcing your rights.

It is definitely an uphill task for you to find out the information of the merchants infringing your trademark and thereafter appoint a lawyer to issue cease and desist letter. This is because the information concerning identity of infringing merchants is not readily available.

In addition, trademark registration also equipped you with the right to seek enforcement action from the Ministry of Domestic Trade and Consumer Affairs including to conduct raid against the infringers and confiscate counterfeit goods. This will ensure that all the effort you put in to build up your mark does not go to drain.

Whether you like it or not, online shopping is already a trend that is revolutionising the way we conduct our business. Given the relatively low threshold of doing business online, there will only be more infringing products selling online.

Contrary to popular belief, trademark registration is affordable. Get it before it is too late.

We have more than 10 years of experience in the field of intellectual property and have successfully assisted in solving many intellectual property issues.

If you encounter any interesting issues on intellectual property, feel free to drop a comment below.