Signatory brand owners and e-commerce platforms of the Memorandum of Understanding (MOU) to curb counterfeiting and piracy online moved to enhance the agreement after its second solid year of successfully running against infringers.
The Intellectual Property Office of the Philippines (IPOPHL) organized the second review on May 23, 2023. UK Rouse was an observer through its Philippine partner, Baranda & Associates, as represented by its Managing Partner Edmund Jason Baranda. Rouse provided technical assistance in the drafting of the MOU.
Present during the review were representatives from Shopee, Zalora, Golden ABC, Globe Telecoms, GlaxoSmithKline, Unilever, Procter & Gamble, Cambridge University Press, Pharmaceutical Security Institute and Honeywell.
Kristian Nico Acosta, legal manager for Intellectual Property (IP) and Brand Protection of Golden ABC, said their collaboration with Shopee and Lazada has resulted in a dip of counterfeit incidents, as shown in the decline of takedowns of infringing posts, ads and accounts. The company booked 83 takedowns in January to June 2023 compared against the 11,151 takedowns in the prior six-month period ending December.
Golden ABC, which owns the brands Penshoppe, OXGN, ForMe, Memo, Regatta and BOCU, said the MoU also enabled them to provide information to the Philippine National Police (PNP) which resulted in the raids of alleged infringers’ physical shops.
Their physical market surveillance of sellers had also revealed that the latter were operating in Lazada and Shopee and these were subsequently reported to the platforms.
Meanwhile, Laure Catoire, Legal Counsel Brand Protection for Asia Pacific at Procter & Gamble (P&G), said that since they joined last July 2022, Shopee and Lazada have acted quickly and timely on their complaints which totaled to about 12,000 links on both platforms in the last six months.
“The previous and current achievements of the e-commerce MOU to curb the sale of counterfeit and pirated goods over the internet cannot be denied and has even been cited as a best practice in the ASEAN region,” said IPOPHL Director General Rowel S. Barba, citing a 2020 report by the Transnational Alliance to Combat Illicit Trade (TRACIT).
“However, there’s always room for improvement, especially if we are to build a safe e-commerce environment for both consumers and brand owners,” he continued.
Representatives also gave comments and recommendations to enhance the MoU, from fine-tuning its framework and implementation to addressing current trends.
One trend cited by Ramesh Raj Kishore, Regional Director for the Asia Pacific Region of the Pharmaceutical Security Institute, was the influx of pharmaceutical products being sold in the Philippines but are not licensed to be sold in the country.
The importation per se of pharmaceutical products not registered with the Philippines’ Food and Drug Administration (FDA) is also defined as “counterfeit drug/medicine” and is a violation of Republic Act 8203 or the Special Law of Counterfeit Drugs. However, Kishore said these grey market products could also be counterfeits in violation of the IP Code of 1997.
Because of this, Genevieve Aguila, Legal Director for GlaxoSmithKline Philippines, requested a separate wording in the MoU to cover pharmaceutical products that don’t have approval by the FDA being sold in the Philippines, effectively expanding the coverage beyond the definition of “counterfeit” products provided by the IP Code.
Signatories also requested guidelines on providing key performance indicators (KPIs) to monitor the achievements of signatories, the inclusion in the definition of ‘pirated goods’ of the electronic forms of products, the extension of the MoU to cover industrial design, the alignment of the Notice of Take Down (NTD) procedures with current practices of online platforms, and more activities to inform consumers on how to identify specific counterfeit products.
“While IPOPHL is working to facilitate an improved agreement amenable to all parties, we also laud stakeholders for taking the initiative and being proactive in working together to strengthen IP protection efforts in the spirit of the MoU. In the meantime, we encourage more signatories to join this MoU, which would help to strengthen the Philippines’ IP system and promote greater innovation and competitiveness,” Barba said.