In the next instalment in our regular series where WTR speaks with leading law firms around the world to identify the digital marketplaces that brand owners should monitor as part of their global anti-counterfeiting efforts, we head to Belarus.

Situated in the heart of eastern Europe, Belarus is bordered by Russia, Ukraine, Poland, Lithuania and Latvia. Due to its proximity, it has become a “targeted transit country for crime groups smuggling illicit merchandise between Asian and European markets”, according to Interpol. For that reason, the governments of China and Belarus teamed up in 2017 to tackle the international trade in counterfeit goods. At that time, it was hoped the move would quell the issue of fakes entering and leaving Belarus, and was designed to work within the framework of China’s Belt and Road initiative.

We reached out to Gowling WLG anti-counterfeiting specialist Sergey Meleshko and Beliaevs & Partners partner Daria Dombrovskaya-Beliaeva  to share their experience of fighting fake goods in the digital environment in Belarus. Below are their insights on what rights holders need to know, and the online marketplaces they suggest should be on anti-counterfeiting enforcement radars.

Online anti-counterfeiting enforcement in Belarus at a glance:

In a nutshell, what should a rights holder know about enforcing against counterfeit goods sold online in Belarus?

In recent years, there has been an explosive growth in online commerce in Belarus, resulting in the emergence of multiple major online marketplaces. At the same time, it is difficult to adequately estimate the volume and share of counterfeit goods in Belarus and their presence on online marketplaces. According to some estimates, the share of counterfeit products in certain industries reaches as high as 80%. Following global trends, brands of clothing and accessories, perfumes, watches, and consumer electronics are the most heavily counterfeited in Belarus.

In most cases, major online Belarusian marketplaces develop their own terms of use for the websites they are hosted on. For the most part, such rules contain sections on the protection of intellectual property rights and a plan of action in case of infringements. As a result, when it comes to major online marketplaces, one can count on a website owner’s assistance in taking measures against any infringers.

As a first step against an infringement, a brand owner should submit a complaint to the website owner. The complaint should include the claimant’s contact information, a description of the infringing content, an attachment with links to the content in question, and documents certifying the intellectual property rights of the brand owner.

Often, this one step is all that is needed. In other cases, however, complaints to website owners are not enough. These owners may not take any action at all, or may otherwise stall with such tactics as requiring additional documents (including originals), etc. In these cases, the brand owner can take a number of actions, including: contacting a notary public to get notarisation of the website content (this serves as ironclad proof of the infringing act in case there is any denial in the future); delivering a cease and desist letter to the infringer; filing a petition to the authorities; and filing a lawsuit.

Online counterfeit hotspots you should know in Belarus:

Kufar

Description: Kufar is one of the major online marketplaces for free ads in Belarus and has its own delivery service. Initially, Kufar was positioned and perceived by consumers as an online marketplace for the sale and purchase of second hand goods. Recently, however, more and more entrepreneurs and legal entities selling new goods are posting ads on Kufar. Right holders should therefore pay more attention to monitoring this online marketplace for the sale of counterfeit goods. 

Counterfeit risk factor: Average

Fakes known to be sold there: Counterfeit products can be found in various categories of goods.

How to report counterfeits: Kufar does not contain a special form for filing a complaint about the infringement of intellectual property rights. You can file a complaint to the Kufar support service about a mala fide seller by filling out a special form on the platform’s support webpage. 

Challenges of enforcement at this online marketplace: The absence of a special form for direct filing and the lack of an articulated plan of action could slow things for processing a complaint and the removal of infringing content. In each specific case, the claimant may need a different list of documents and information to confirm an infringement. Also, it only takes a few minutes to publish a new ad, and therefore the infringing content can easily be published again.

Recommendations to brand owners: The best method for countering the sale of counterfeits is monitoring in order to identify the most active infringers; and next submitting a complaint to the website owner requiring the removal of content and the blocking of the seller.

 

Deal.by 

Description: Deal.by began operations in 2008 and currently has over 14 million various categories of goods on sale. The audience of users is constantly growing. The marketplace’s functionality allows sellers to use the deal.by CRM system and to create their own online stores using the virtual constructor.

Counterfeit risk factor: High

Fakes known to be sold there: Counterfeit goods can belong to various categories because the marketplace has no specific specialisation in goods for sale.

How to report counterfeits: The marketplace has a special form for reporting intellectual property infringements.

Challenges: In order to file an infringement report, it is necessary to comply with the requirement to provide several documents. Therefore, the work to submit a complaint may take a significant amount of time.

Recommendations: The best method for countering the sale of counterfeits is monitoring in order to identify the most active infringers; and next is to file complaints to the website owner requiring the removal of content and the blocking of the seller. 

 

Onliner 

Description:Onliner is a major information resource, composed – among other things – of a marketplace that sells household appliances, goods for construction and repair, cars, beauty products, toys, and more. In certain categories, ads can be placed not only by entities, but by individuals. The legal section for this marketplace directly prohibits the use of trademarks when goods are sold by individuals. The same prohibition applies to legal entities when they do not own the trademark. 

Counterfeit risk factor: Average

Fakes known to be sold there: Counterfeit goods can be found in various categories.

How to report counterfeits: The user agreement prohibits the infringement of intellectual property rights. However, the detailed mechanism of action is not regulated by this marketplace. In order to report a fake, it is necessary to file an appeal via a special form on the website.

Challenges: Since this marketplace has no clear mechanism for identifying counterfeit goods, there is a possibility that necessary actions will not be taken to remove materials from the website.

Recommendations: We advise an additional step after submitting the online application form: It would be better to duplicate the letter of claim and to send it by mail, enclosing documents certifying the authority to send this letter and a copy of the trademark certificate.

 

Shop.by

Description: The shopping portal Shop.by is the largest site in Belarusian internet trade. This marketplace offers products from 1,000 online stores in Minsk and throughout Belarus. It has been operating since 2000 and its annual audience is now over 7,000,000 Belarusian users.

Counterfeit risk factor: Average

Fakes known to be sold there: Counterfeit goods can be found in various categories.

How to report counterfeits: The website administrator suggests that brand owners contact violators directly, since it hosts legal online stores owned by the subjects of Belarusian trade and registered in the Trade Register of the Republic of Belarus. If necessary, this marketplace will provide the registration and contact details of the owner of the online store and forward the claim. To do this, you must apply through a special form on the website.

Challenges: This marketplace does not take part in resolving disputes between parties: the removal of goods from the site is only possible via a court decision.

Recommendations: Since sellers are only legal entities and individual entrepreneurs, we recommend contacting them directly, without using the platform, in order to save time. When submitting a claim, be sure to attach a copy of the trademark certificate and a document certifying the authority of the representative.

 

Pulscen 

Description: This marketplace, prior to developing as a portal, has been operating since 1992. In addition to ads, the portal permits creating websites and promoting businesses on the internet. The user agreement states that in the event of claims regarding intellectual property rights, the user shall independently settle all issues with the right holder and shall be liable to the marketplace for possible losses.

Counterfeit risk factor: High

Fakes known to be sold there: Counterfeit goods can be found in various categories.

How to report counterfeits: A complaint about counterfeits can be filed via a special form on the website with an attachment of title documents. However, this form is more suitable for copyright infringement. 

Challenges: This service is not likely to take any action until a court decision is received, since all responsibility for placing counterfeit goods rests on the user.

Recommendations: Directly contact the person who placed the counterfeit goods. If it is not possible to resolve the situation amicably, it is advised to file an official claim.