Melissa: Alright. I think we'll get started. Good morning, good afternoon, good evening, everyone. Welcome to all of our guests wherever you may be in the world. My name is Melissa Tehrani and I'm a partner at Gowling WLG's Montreal office and a member of the Advertising and Product Regulatory group. I am delighted to welcome you to all to the next, and twelfth, installment in our webinar series, The Life Cycle of a Smart Idea. Where in previous sessions we would have discussed the strategy for developing a global brand. Today we're going to be addressing the many ways in which infringing parties can impact the control of that brand online, including by registering domain names, creating social media accounts and even masquerading as a brand owner online. So in order to highlight the strategies that brand owners may use to protect and enforce the rights, I'm going to be playing the role of the global general counsel for a Canadian based ATV company known as Hellranger Inc. But before we begin please allow me to introduce you to today's panel.
So first up we have Eric Macramalla, a partner in our Ottawa office, and a member of the firm's IP group. He's also a legal analyst for TSN. We have got Zoe Pearman, an IP associate in our Birmingham, UK office. Clemence Lapotre, who is a principal associate in our Paris office, specializing in IP and information technology. We have Alexander Dovgalyul, a litigation and enforcement lawyer in our Moscow office, with more than 12 years of experience in IP enforcement and litigation. We've got Jia Ling Quek, a senior associate and lawyer in Singapore, specializing in trademark portfolio management and enforcement. And last, but not least, we have Le Rong, a legal director in our Guangzhou office and leader of the non-contentious team in China.
So the objective of today's webinar is to really canvas the critical issues surrounding online brand protection and enforcement, globally. But if you have any questions, or if there are strategies or recommendations you'd like to discuss further, we invite you to please join our panelists in the virtual breakout rooms that will begin right after the webinar. So there you'll really get a chance to see and speak to the panelists directly and even to engage discussions with some of the other attendees. So as I mentioned for this webinar, I'm going to be playing the role of the global GC at Hellranger, which is a Canadian based company that recently began selling Hellranger branded boots and beverages in 6 key markets. Those being North America, Canada and the US, the UK, Europe, Russia, Singapore and China. So thanks to previous advice from Gowling we did obtain trademark and design registrations for all of those brands, which you can see on screen. But I was recently advised my marketing team that a third party, or potentially third parties, has started to impersonate our company and brand online. Which, as you can imagine, is particularly worrisome at present as online sales is really the sole source of revenue right now for us, as governments continue to impose lockdowns and restrictions on non-essential business. So now more than ever, as COVID-19 continues to accelerate ... ... we really need to protect those platforms and our brand online. It's absolutely critical. So while our team continues to delve into what's going on, I have requested a meeting with our external legal team at Gowling, as I do have a meeting with our CEO this week to discuss our enforcement options and the next steps.
So as you'll see on the screen, as part of their deception, these third parties have been relentless. They've published website content containing infringing Hellranger trademarks. They've created social media accounts across numerous jurisdictions. They've gone so far as to even register multiple domain names and even pay for sponsored link ads. So the objective of today's meeting is going to be explore the cause of actions and the strategical steps that I, as the brand, may take in each of these jurisdictions. So let's being with what we consider to be the most pressing matter. The fact that this infringing party has published website content with our trademarks, our design marks, which to make matters worse are directing traffic to their unauthorized Amazon, eBay and Alibaba e-commerce platforms.
So, Zoe, perhaps you could begin with an outline of our options to address this issue in the UK.
Zoe: In the UK this would bring you into the realm of civil enforcement of your IP rights against the infringer directly. So our first step would be to identify the infringer, if that's not already known. Identification can be difficult as the Registrar and the e-commerce platforms can be reluctant to disclose such information without a court order. So it may require you instructing investigators or applying to court. Once identified we recommend you first send a letter before action to the infringer, but this would not apply in circumstances of extreme urgency such as an injunction, where you would apply to the court immediately. If there's no action through your correspondence with the infringer you'll have to consider whether to commence infringement proceedings. We can rely on trademark infringement here, providing that the use is within the course of trade, but as the infringer's directing traffic directly to it's Amazon and eBay account then this will likely be satisfied. But if there is a hurdle then copyright maybe an option for you in the UK. It's not registrable and comes into being on creation. Where the infringer has used your copyrighted images then you can rely on copyright and we have recently successfully got an injunction based on website content that infringed our client's copyright. There may also be some options around criminal prosecution depending on the infringement.
Melissa: Okay. So ... ... coincidental or whether it's a result of the infringing party's English websites directing to their Amazon and eBay accounts, but we have seen a significant decline in online sales in the UK, specifically. So what immediate action could I take to take those down and how quickly could we expect a resolution?
Zoe: So the e-commerce platforms would be dealt with separately in the UK. Firstly, we would want to establish if the goods being sold were counterfeit or if they infringed your rights. If so we would utilize the specific takedown procedures that are available on Amazon and eBay. The forms are relatively prescriptive and do not let you provide a lot of information. So where infringement is publicated, or if we need to put on an unregistered right, we would also recommend writing to the platform itself with further details. Where it's a clear infringement the platforms can take the listings down relatively quickly. If it's complicated it may take a little bit longer but it's still much quicker than court proceedings. However, if the goods being sold by the infringer are legitimate we would need to consider whether or not your rights can said to be exhausted. This would occur when the goods been placed on the market with your consent in either the UK or the EEA. However, it's worth noting that going forward it's based on the UK market may no longer be considered exhausted in EEA, post-Brexit.
Melissa: Okay so that's an excellent point. It's unclear right now. We're still investigating whether the products that are sold on these websites are counterfeit or grey market so we might need to consider both possibilities. Clemence, is the process in France and Europe more broadly similar in most respects to the UK approach?
Clemence: Yes, indeed, Melissa. The process involves EU and France shares numerous similarities with the UK. However, there are three recommendations that I would like to make here. Firstly, as a preliminary step, I would advise securing evidence of the litigious online content to be able to provide them to court, should we need to go that far. So this is something that can be done simply through screenshots, however, the validity can be challenged before courts. Therefore I would recommend asking a bailiff to draft a report on each litigious website or page to officially establish the display and the offer for sale of infringing goods in France and Europe. It should be noted that the fact that the litigious content can be accessed from France is displayed in French, among other languages, and that the goods can be delivered in France can suffice to trigger French courts jurisdiction. However, it's ... will ultimately depend on the infringers location. Secondly, as Zoe mentioned, Hellranger on the basis of its IP rights can use the specific takedown procedures available on Amazon, Alibaba and eBay. So has hosting providers this platform must respond and react diligently. In this respect it should be noted that the ... Service Act, which is an EU Act, will further strengthen the obligation of market places to fight against illegal content and thus enable a rapid and effective response, which is crucial in our case. In the inventive complex matters I would also recommend sending a separate written notification to this platform. In any case, what we need to know is that such process will result in the takedown of the litigious offers for sale and eventually sanctions against the infringers, but only from the concerned platform. So, finally, if Hellranger is willing to obtain additional remedies it will be required to bring a court action. So, what is particularly interesting here is that if Hellranger holds European rights we will be able to go to the competent EU court and obtain pan-European injunctions to seize the litigious acts, to destroy the infringing goods and to pay financial damages, for instance. If not, to obtain similar remedies we will have to bring an action in each Member State on the basis of national rights. We can choose, for instance, to go before French courts that are known as IP rights friendly or before German courts, for instance, whose procedures are recognized for their rapidity. So, there is a lot of options and now we'll be happy to give more details on this topic in the breakout room session that will take place later.
Melissa: Thanks, Clemence. It looks like we do have quite a few options in France. Turning to Russia now, Alex, do the takedown measures or civil recourses differ in Russia?
Alex: In general, takedown measures and civil recourses are similar in Russia. But in case website content is not removed after takedown requests, or after direct demand letter to the infringer, I would suggest that we take a closer look to the unfair competition action rather than a civil action. Unfair competition cases in Russia held by the Federal Antimonopoly Service and its local branches. Unfair competition is a very broad definition which includes various kinds of infringements such as actions causing confusion, which is trademark infringement, and passing off copyright infringement and misrepresentation. In other words, every action that an infringer commits on our information website. Unfair competition proceedings are administrative proceedings which means that they are rather public than a private action. Remedies resulting from successful proceedings before affairs takes a form of an order and directs the infringer to cease the infringement. FAS also imposes a fine on the infringer and I can say that usually infringers tend to comply very quickly with FAS orders and this option so not very quick but can be considered as quite effective to go against website infringements. This is a long story and if you want to discuss this in more detail you can join me in our breakout room session after this webinar.
Melissa: Thank you. So it sounds like unfair competition proceedings before the Federal Antimonopoly Service would be the most advisable to get the infringing party to cease and desist from using our trademarks on their site. Le Rong, what rights would I need to take these up sites down in China?
Le Rong: Yes, you surely have actions to take in China. There are quite similar to what can be done in other jurisdictions (ie: complaints with the website and court actions). Most e-commerce platforms in China have its IP rights complaint mechanism, like Alibaba, Taobao, Tmall, three different websites but they all belong to Alibaba group so they have a shared IP complaint mechanism. Other popular Chinese e-commerce platforms such as JD.com, VIP, Kaola is that they also have complaint channels. Consequently, what our IP enforcement team in China would do is we will, firstly, conduct internet monitoring on major e-commerce platforms. Helping to brand our product owners, like Hellranger, to identify the infringing links from the e-commerce platform. Once suspicious links are found they will be able to make complaints on behalf of the client and takedown the infringing links. I have invited my colleague, Sophia Liu, to join me in the breakout room so we can discuss later on. Sophia is a senior associate based in China. She specializes in IP enforcement so do join us in the breakout room. Although actions to take are quite similar in most jurisdictions, I do want to draw your attention on the following. The Chinese e-commerce ... effectiveness are in first generation, as of 2019, gives e-platforms the ability to recover the infringing links should no administrative or court actions are taken by the brand owners within 15 days, since the links are taken down. Therefore should ... wants to do a complete clean up job you should ultimately commence court or administrative actions such as AMI or custom seizure actions. We do not really recommend filing an unfair competition case if a trademark infringement case could be filed because provisions of the Chinese unfair competition law is pretty vague and therefore it's quite hard to navigate a case. That's it for China. Jia Ling, what's position is Singapore?
Jia Ling: For Singapore we can seek an interim injunction to stop the infringing use which may be granted if the balance of convenience lies in favour of granting the injunction. If there is no arguable defense to the claims at issue we can even obtain some re-judgment. Hellranger's trademark registrations can form the basis for initiating the infringement suit. Its trading activities can also give rise the common law rights which also can be a basis. Lastly, we can also argue that Hellranger's trademark is a well known mark in Singapore. So which basis we choose to take will really depend on Hellranger's activities in Singapore. Prima facie, on the facts since the third party appears to be impersonating the company and brand online, we can possible argue that a counterfeit treatment was being used. So Hellranger will be able to get additional damages if we succeed on this basis. The consequences of counterfeiting a trademark in Singapore are also serious and this can be mentioned in a demand letter to the infringer before we decided to take action. Just to highlight a few other points, there can be trademark use even if the trademark has not been seen anyone in Singapore. So this can counter a possible defense that if the infringing website has not been viewed by anyone. Trademark use in Singapore is also rather widely construed. There can be use of the infringing sign on any commercial document including any such document in any medium or even using the signing advertising. So on the topic of trademark use, I was once told that trademark use in advertising, that's not considered trademark infringement in Canada. I'll turn this over to Eric to clarify.
Eric: Thank you and happy to be here talking with you. Even happier to learn that I didn't sell all of my suits. Look, I've been doing this since Al Gore invented the internet and every case is different and they all fall along a spectrum. The first question we always ask, before we take any action is, how much harm is being inflicted on the business? How much harm is being inflicted on the brand owner, and in this case, Hellranger? Based upon that answer then we take the appropriate action. If the website you've identified, the third party website infringing Hellranger's rights, is inflicting that harm then you want to get that site down as soon possible. If that site's misappropriated copyrighted works, which we presume would be the case and trademarks, then you can issue a letter to the hosting company and knock that site down. Once you knock the site down that could help assist in bringing this to a premature end. If that site resolves to online market places, Amazon, eBay, Lazada, Alibaba, I mean the list is endless, then you have to deal with each of those market places. Again, you assess; are these sites a big deal? Because the whole goal here is to move as efficiently and cost effectively as you possibly can. But taking the site down, I think is really important, if you can do that in the first instance. Then you ask herself, "How else are they misappropriating IP with a view to extracting a financial gain by piggybacking on your trademark rights?" Via social media, using the domain names, sponsored advertisements, it has to be a holistic assessment. Take the site down but if you feel like this site is a huge, huge issue and you can establish jurisdiction over that potential defendant than another option is to file a court action, to get that interim relief to pull that site down. So you have a lot of options available to you with respect to addressing the harm being inflicted on you and the brand. The key issue here, and this is the same respect to any action you take, is making sure you pick the right course of action and that's going to mean efficiency and cost.
Melissa: Thanks, Eric. Some of these up sites in numerous jurisdictions are definitely critical right now. They're affecting our brand. My understanding is that website takedown measures are far more expeditious and efficient than domain transfers which is why I did want to tackle that first. But I still do want to address the multiple domain names that were being registered globally. So, not only do all of the infringing domain names include the Hellranger brand. Some also include disparaging content within the domain name itself. So there's one that's 'hellrangersucks', I believe. Obviously it's unclear at this time whether all the domain names in issue are being registered by the same or multiple parties but I did want to address both the disparaging ones and the top level domain names that were registered. So there's a dot.store, there's a dot.shop. There are also top level country code domain names such as dot.com, dot.ca, dot.co.uk, etcetera, you get the gist. These bad actors are really relentless and they're going after simulate our key global markets. So, I mean Eric, since you have home court advantage perhaps you could outline what our options might be to address these issues in Canada and in the US.
Eric: Thanks, Melissa. Across my 22 years practicing at Gowling, it's where I started, my statement claim when I sue someone it's really changed. 22 years ago it was just a sign up at a place of business and it's like, "Hey. Take the sign down now." It's a website, online market places, social media, domain names, sponsored links, so there's as lot going on and, in my experience, we are seeing these infringing parties utilize each of these different instruments with a view to extracting financial gain. With respect to the specific question related to domain names, I mean my goodness, I mean there are so many top level domains. Melissa mentioned dot.com, net, there's org, dot.info, dot.biz, dot.cc for Cocos Islands which has become a generic top level domain. You've got your country codes. Dot.ca for Canada. Dot.de for Germany. Dot.jp for Japan. Dot.com, dot.cn for China. On and on and on and then you have 1,200 new domain name extension. 1,200. Dot.shop, dot.store, dot.xyz, dot.contractor, on and on and on. So if you have an infringing party that is using, has misappropriated your trademark in the domain name, so if the second level domain name, the part before the dot.com, the part before the dot.de, then you ask yourself, "Do we take action against a domain name?" Now, if it's a situation where this party is just going crazy misappropriating all of your IP, I don't know if the best course of action is to go after the domain name exclusively. The way you would do that is filing a UDRP complaint for dot.com, net, org, info and then a lot of the country codes either submit to the UDRP or have their own local dispute resolution policies. If it's just a domain name you can do that. But if it's part of a larger matrix of infringement then maybe you wrap it up in a statement of claim on the US in a complaint, or other jurisdictions, and you sue the person. But you have options available to you when it comes to domain names. I mentioned the UDRP, local dispute resolution policies. On top of that you could always sue. The US has the ACPA, the Anticybersquatting Consumer Protection Act, which was inserted into the Lanham Act, the US trademark legislation that allows parties, plaintiffs, to address unauthorized domain name registrations executed in bad faith. The reason the ACPA can be a pretty compelling piece of legislation is because it provides for punitive damages of $100,000.00 per domain name in the instance where someone is a serial cybersquatter or has engaged in really naughty behaviour. That's important because you don't need to have a domain name owner who lives in the US, or a plaintiff who resides in the US, to use the ACPA because the ACPA contemplates non-US parties using that legislation to go after domain names. So it can be an important tool to extract leverage, but it's pretty expensive, but ultimately when it comes to domain names you have a number of different options available to you, and again, it comes down to let's make sure we've picked the right option.
Melissa: Certainly. Zoe, what actions would be available in the UK? I do like the options that Eric just mentioned in the US but what's available in the UK?
Zoe: In the UK, if we were looking to takedown the dot.uk domain names, there are kind of three main steps that you would take. The first step would be to submit a complaint to the Registrar and ask them to deactivate the account. In some previous matters we have seen the Registrar comply but we will probably face some pushback. But if we can enter into a dialogue with them we can see what progress can be made. If this is successful it would allow for relatively cheap and cost effective resolution. Our second step would be to write to the infringer, if they can be identified. Following GDPR it can be quite difficult to identify the infringer in the UK, as much as the publicly available information has been redacted for privacy purposes. As Eric mentioned, when there's a serial infringer it's good to kind of take a focused attack on them rather than just singling out one domain name, because in the long term going against the infringer could be much more effective. Whereas if you just go after one domain name they can take it down and instantly re-register it with another Registrar. Then your final option, if neither of these succeed or if you can't identify the infringer, you would follow the Nominet, the dispute resolution procedure. Nominet is the official registry for dot.uk domain names. Similarities with UDRP policies that Eric mentioned and you would first have to show that you have rights which are enforceable in the UK, which are identical or similar to the infringing domains, and that the domain name ... ... For example we could say that, if the domain name has been used to confuse the issue, that would be an abuse of registration. But it is specifically stated that where a domain name is clearly being used for criticism it's not an abusive registration. So we may have less success under Nominet against the 'hellrangersucks' domain name. Just one final think I'd like to flag is that we will need to consider whether you remain eligible for dot.eu domain names. Following Brexit this is a bit different but it's something that I would be happy to give more details about in the breakout room.
Melissa: Thanks, Zoe. So turning to France now, Clemence can I compel the transfer of the data from the dot.eu domain names in Europe?
Clemence: Yes, Melissa, you can but if you have identified the domain name and it's holder. So, as Zoe mentioned usually infringer do not identify themselves and GDPR rules now enable owners of a domain name to redact their identity and contact details on privacy grounds. Therefore, if the investigations conducted online are unsuccessful, I recommend directly requesting the lifting of anonymity and obtain the personal details of the domain name holders, as from the Eurid for dot.eu domain names, or from the AFNIC for dot.fr domain names. So this can be done by filing a form explaining why we need the holder's contact details and how we intend to use them. Once we have obtained such details we will be able to proceed. We will proceed with a complaint, either before the Czech Arbitration Court, which is in charge of the alternative dispute resolution procedure for all domain names under dot.eu. Or for the ... procedure managed by the AFNIC for domain names under dot.fr. To succeed we will be required to meet similar requirements. Meaning, first, to show that Hellranger holds prior right to the domain name such as trademark or tradename or company name rights. Second, that the current holder of the litigious domain name uses it or them for perceived purposes. Such as promoting and offering infringing goods. But in any case, a successful procedure, we discuss it, will exclusively result in the transfer or the removal of the domain names. As mentioned earlier, Hellranger will have to consider complimentary diligences to obtain additional remedies, such as ... proceedings or an action on the merits.
Melissa: Merci, Clemence. I don't believe Russia offers an ADR process. Is that currently the case, Alex, and if that is the case what concrete options do we have to shutdown the dot.ru domain names? Or, alternatively, to have them transferred to us.
Alex: Yes, that is the case. There are no GDPR single alternative domain name resolution policies available for trademark owners in respect of Russia country code top level domain names such as ru, su and rf in Cyrillic. This means that the only way to for a trademark owner to obtain an infringing domain name, unless of course, a registrant assigns it. Momentarily is by way of a trademark infringement civil action. Like in the UK and France, as a first step in any domain name infringement case, would be to identify the infringer. Which is usually the registrant. The majority of registrants are individuals and they're identity is hidden behind a privacy shield, however, unlike the UK and France, Registrars cannot deny a trademark owner's request for disclosure of the registrant identity based on GDPR. In most cases Registrars provide such information. If information on the registrant is correct, and it's true, then the trademark owner can proceed with a civil action. Which is very good for trademark owners. Russian courts usually grant interim reliefs in respect of infringing domain name and block any operations with it during the litigation. For example, prohibits termination of a domain name registration or its assignment to any third party. This means that as soon as a court action's filed, the interim injunction is granted. It is usually granted in one business day. While the transfer of the domain name to the trademark owner is almost 100% guaranteed. As soon as a court decision comes into force, the domain name registration is terminated and the trademark owner gets a 30 day grace period to register the domain name in its own name. That's it for Russia. Jia Ling, perhaps you could speak to the situation in Singapore and Le Rong's approach company could take in China.
Jia Ling: Thank you, Alex. So contrary to Russia, we encourage to use alternative dispute resolution, to try to resolve the domain name dispute. We can file an administrative action with the SDRP secretary which is managed by the Singapore Mediation Centre. The dispute will then be conducted via mediation to afford parties an opportunity to resolve the dispute by mediation, failing which the panel will decide the dispute. If any party is dissatisfied with the panel's decision the ... party can apply to the court for the dispute to be decided instead. Just wanted to highlight that as a preventative measure it is advisable to register at least a GTRD or dot.su domain. To assist registrants in this regard, SGNIC and IPOS have a collaboration to provide a service to reserve a dot.sg domain name for free, when the trademark patent or design is filed in Singapore. So if you wish to know more about domain name reservation service, do join me in the breakout room after this. That is all for Singapore. I'll pass it on to Le Rong.
Le Rong: Yeah. Thank you, Jia Ling. For China ... ... direct domain names like dot.com, dot.net ... ... ... Hong Kong IAC are the two of four centres nominated by the Asian Domain Name Dispute Resolution Centre. So the other two centres are in Kuala Lumpu and Seoul. A relevant dispute resolution procedure is pretty much in line with the ones being ... ... under UDRP. But for dot. ... websites the dispute ... submitted to ... or Hong Kong IAC again. So the rules overlooking the procedure is called CNDRP issued by China Internet Network Information Centre. CNDRP is not too much different from UDRP but one important remark made under CNDRP if a website exists more than 3 years, the dispute over the domain name cannot be subject to dispute resolution procedure anymore. So parties shall file a complaint at court. Also, one last point about the particularity for dot.cn domain name, because I hear from my colleagues in Europe and UK mentioned that due to the privacy laws, it might not be easy to identify the domain name owner. I just want to flag that for .cn as it's comparatively easy for us to locate infringing domain name owner because we have this ICP internet content provider recordal and approval procedure for .cn websites. This ICP procedure will keep the website registration or approval number. Using this number you will be able to identify the owner through this named website. If you find a .cn website, especially the website has commercial purpose, without displaying the ICP information you could directly report this website to the MIIT, which is Ministry of Industry Information Technology, and the website will be blocked if ICP procedure have not been carried out. That's the position for China.
Melissa: Okay. Thank you. So, if understand correctly, the common thread among all jurisdictions is a need to first identify the domain name cybersquatter, with identification being somewhat more difficult in the UK and Europe because of GDPR privacy laws, so we may need to engage PI's in certain jurisdictions based depending on how much difficulty we encounter. Then those jurisdictions offer two potential angles of attack. We've got the ability to file a domain name dispute resolution complaint with the official Registrar or via the UDRP, since, of course we are the legitimate trademark owner and the infringing party's clearly in bad faith and an abusive registrant. The other option, which is really the only option in certain jurisdictions is instituting legal proceedings for either trademark infringement or unfair competition.
So the next issue I'd like to address are the social media accounts that were created. These were created on Facebook, on Twitter, Instagram, Tik Tok, pretty much all of the main social media platforms, and what it looks like is that they're using these social media accounts to really capitalize on our brands online presence during COVID. That's also kind of legitimizing and lending credibility to their unauthorized websites and market place platforms. So, Eric, how can I shut these accounts down in Canada and the US and how quickly can we do this?
Eric: So, first really quickly I got a question that came in about trying to effectively enforce rights against in somewhat elusive potential defendant. Some are located far in the far reaches of our world and I can't answer that now but I can do that in the breakout room. So if you have questions about how to assert jurisdiction against these various pieces of intangible intellectual property, and how we can grab that and shut it down, I'm happy to do so. One of those are social media accounts. When you have a third party who is engaging in infringing activities looking to extract a financial benefit off your IP, 9 out of 10 times if not 10 out of 10 times, sometimes 11 out of 10 times, you got to look Facebook, Instagram and Twitter, especially using Instagram and Facebook with a view to promoting those goods or services. So if there's a site try and find out if they have images on Instagram and if they have a Facebook account. In those instances what you want to be doing is, if you identify infringing content is, file a complaint with Facebook or complaint with Instagram, owned by the same company obviously, file one with Twitter. Whatever social media platforms you're seeing this outfit is on, with a view to having the account taken down. Just a couple of quick practical notes, Twitter is effectively a first amendment website. So it is really hard to get accounts terminated even in situations where the infringement is like a law school exam question. Like you can't miss it. Sometimes they'll say, "Well, no we don't think that's the case." So you re-file with Twitter and sometimes they'll come down the second time, third time or fourth time. The other thing is if there's copyrighted content on the social media account, like on Twitter or Facebook, the account itself is creating the overall commercial impression that they're affiliated with the brand owner, don't file a copyright complaint. Each of these platforms have different complaints. Copyright, impersonation, trademark infringement. So if you file a copyright complaint all Facebook will do, or Twitter will do, is pluck the copyrighted work from the account. Now once you pluck that, your argument that the overall commercial impression is that it's affiliated with the brand owner, now becomes weaker. So this is yet another example. Make sure you pick the right policy when you're looking to tear them down.
Melissa: Okay, that makes a lot of sense. The other issue that we're grappling with is there's a French account and it's a French from France account, not a Canadian French account, that's essentially masquerading as the CEO and brand owner. So what we have is there's a post in there with our CEO's picture and her name and obviously she's super alarmed and worried about this. Clemence, what action could we take in France to shutdown that social media account? And this is on Instagram.
Clemence: Yes, Melissa, in France and Europe I would consider two main actions. So the first step, as Eric mentioned, is to proceed with the takedown request on the social network. However, since we have discussed that plan, there is a second option that can also be considered here, which is based on the GDPR and which may go further. So, as matter of fact, the name and the picture of Hellranger's CEO qualifies as personal data protected by the GDPR. In particular, Article 17 of the GDPR provides a right to be forgotten that enables any individual to demand that search engine remove certain results leading to his or her name and surname, from such results. This makes it possible if the account is not deactivated by the social network to prevent any internal chooser from accessing the litigious content, here they provide through a search engine. I think this can be considered as a powerful option.
Melissa: That's really interesting because the proposed amendments to Quebec's privacy laws also propose a right to be forgotten. So that might be an avenue we could take here as well if that happens. My marketing team is also telling me that an account was created on a prominent Russian social media platform which is driving a lot of traffic to their e-commerce site. Alex, what is the takedown process for this platform, and I apologize, I don't know remember the name.
Alex: It's okay. This is VK which was created by Pavel Durov, which you might have heard of. He now owns Telegram. Unlike many other social media platforms, VK developed complaint resolution policy aimed at blocking infringing content, which includes a content infringement intellectual property rights. This obviously works very well. VK already granted some of our clients with requests and blocked infringing groups offering counterfeit products for sale. However, VK requires right holders provide documents confirming infringement, documents confirming the right holder's title and usually always require a power of attorney and sometimes they require the cease power of attorney which allows us to represent a client before VK is notarized in the country of origin and even a fixed ... so it is 100% legal and correct. Any failure to meet formal requirements of VK may result in dismissal of the takedown request, however, if is the form of requirements are met VKs very quick to remove ... the case very quickly to remove the infringing content and you can even block the whole infringing group.
Melissa: Okay, that's really encouraging. Le Rong, I understand that China has its very own version of Facebook. Are there other social media platforms we should be looking into in Asia, because we might have missed some, and what would the take down process consist of?
Le Rong: Yes, Melissa, you're right. Chinese have our own version of social media. We have WeChat, which is more of a powerful what's happened, allowing us not only communicating with contacts but sharing photos and lives but also as a very great payment tool, etcetera. We also have Weibo which is more like Twitter and DouYin, which is the Chinese version of Tik Tok. So these social platforms generally do not have any e-commerce functions. So if the accounts, the social media, wants the viewers to buy any products you would direct the customers to a website or an e-commerce platform. WeChat offers a portal to a e-commerce platform called Weixin but ... ... ... Therefore the action to be taken on social media accounts infringing Hellranger's trademark and copyright product catalogue images. They may not be able to sell directly the infringed products. With social media the very first step is still make the complaint with social media. Besides the brand owner can go straight to court. In China we now have our internet court early in Beijing, Hangzhou and Guangzhou, where our China office is based. This is a new first instance court and the court is able to hear cases arising from the internet dispute arising from social media accounts are definitely covered. So this is like domain name disputes, infringement of copyright or trademark on the internet or on a social media account. They can all hear that. In all court procedures, this internet court, is carried out online and the aim is for improved efficiency of court proceedings. Obviously if you want your case being heard in this court, the dispute should have some actions with the three cities that I just mentioned, for example the place of computers or service containing the infringement materials or the place of the defendants, etcetera. Otherwise the case will still need to be brought to the usual first instance court. One last thing to mention is the possibility of creating a fake Hellranger corporate social media account on the Chinese social media is quite difficult. Taking WeChat as an example, if you want to create a corporate account on WeChat, you will need to provide the relevant business licence. So you have to provide a Hellranger business licence, especially when the corporate account is linked to a brand or some products, WeChat will usually ask the applicant to provide a relevant trademark registration certificate or a list of trademark licence agreements. That's it for China.
Melissa: Thank you. So this has all been very helpful. I am mindful of time but the last issue I was hoping to address was the sponsor linked Google ads. So as you can imagine these are misdirecting significant traffic to the cybersquatters market place and I suspect that's where we're seeing a significant decline in sales in North America and Asia. I know there is a distinction to be made between when the trademark appears in the actual text of the ad or something to trigger the ad, but I was wondering whether that distinction is relevant in all jurisdictions. Eric, perhaps you could speak to the US and Canada and then Jia Ling and Le Rong who could quickly speak to Asia.
Eric: Okay. I'm no longer muted. So, this is an important issue for brand owners, and within this scenario or just generally, I get this question all the time. Bottom line is this, you have to ask yourself is your trademark visible in the text of the ad? If it is not, if your trademark is simply being used as a key word to trigger the sponsor like advertisement, well your two options are go to Google or go to the infringing party. If you go to Google they'll tell you get lost. It's only being used as a keyword. It doesn't appear in the ad. If you go to the brand owner, and they get good legal advice, they'll tell you to get lost because it doesn't appear in the visible text of the ad. Okay? So to summarize they'll tell you to get lost. If the trademark appears in a visible text of the ad, for the most part you can go to Google and they will terminate the ad. Except say in situations where they are of the view that it's the fair use of a trademark. For example in the context of comparative advertising. But it has to be clear comparative advertising. You could also take it up with the infringing party. Once again, it turns on the likelihood of confusion. That's what the courts are going to assess. In Canada and in the US. This has become abundantly clear. There's been a lot of litigation in the US press, all the circuit courts, some litigation in Canada and ultimately the question you ask, where the trademark, it is visible in the text of the sponsored link ad? Is it likely to confuse end users that's a source of sponsorship? On a technical kind of boring side of the trademark side is that if you have a trademark registration for services, well, it's use of your trademark in an advertisement. So if your mark is registered with services, and it appears in the visible text of the ad, you have a really good argument that's infringement because use of a trademark for services occurs in the ad. Then if your registration's for goods you have to be able to convince the court that when the end user clicks on the ad, and they make a purchase, they're confused as to source of sponsorship. Not an easy argument. All that aside, done lots of these. Whether your trademark is being used as a key word or it appears in the visible text of the ad, send a letter to the infringing party. Because 99 out 100 times they don't want to deal with this headache and they will discontinue the use of the key word. But from a legal standpoint, that's your distinction, Melissa. Visible versus non-visible.
Melissa: Okay. I know Clemence has a ton of experience with Google ads and ad sense so perhaps we can discuss that further in the virtual breakout room. Jia Ling and Le Rong, very quickly, what is the case in Asia? In China I know these are appearing on Baidu, which is the Google equivalent in China.
Jia Ling: So for Singapore the courts here have not yet discussed the issue of criminal infringement in relation to sponsoring advertisements. But my personal view is that these will most likely not qualify as infringement because the issue is sponsoring advertisements is that these usually only create initial interest confusion and this doctrine has been rejected by the courts in Singapore for practical reasons. Specifically the court of appeal viewed it not in a case that confusion which arose in the initial stages of the purchasing process was stopped by the time of purchasing not constitute confusion.
Le Rong: For China, Melissa, you're right. We don't use Google. We use Baidu. We want to but we cannot. So same as other jurisdictions Hellranger could start by filing a complaint with Baidu. They may or may not take down the link as per your request because we do not have the capability, nor the power, to decide whether there is infringement there or not. So ultimately Hellranger, if this is discovered that someone is using Hellranger as a key word sponsoring advertisement, they would need to pursue legal action. If the infringer only pays for Baidu to direct the customers entering Hellranger, in the search box, to their own link but on their own link there is no Hellranger trademark there at all, it is really hard. Under Chinese law it is really hard to establish a trademark infringement. Confusion or misidentification itself is not sufficient. In China, commercial use is often the most important criteria to decide whether there is an infringement. So where there is only confusion, but no commercial use of the trademark, Hellranger could file an unfair competition case instead.
Melissa: Okay, so it appears that there's no real clear consensus among all jurisdictions. So I think we have a pretty good sense of what our plan of attack should be and which infringement actions we should prioritize.
Now switching out of my fictional role as GC I'd like to thank all of our panelists, as well as our attendees, for joining us. We hope you found the webinar both entertaining and informative. I'd also like to invite you to join our panelists in the virtual breakout rooms. The link is in the chat and you can kind of bounce in and out of the different rooms. They are separated based on jurisdiction. Also please keep an eye out for the next webinar in the series which will be all about artificial intelligence. We hope to see you again soon. Thank you and take care, everyone.