APEC Project Database

Project Title

Guidebook on digital enforcement to improve fight trademark counterfeiting

Project Year

2023

Project Number

IPEG_201_2023A

Project Session

Session 2

Project Type

Standard

Project Status

Completed Project

Project No.

IPEG_201_2023A

Project Title

Guidebook on digital enforcement to improve fight trademark counterfeiting

Project Status

Completed Project

Fund Account

APEC Support Fund

Sub-fund

ASF: Digital Innovation

Project Year

2023

Project Session

Session 2

APEC Funding

119,969

Co-funding Amount

2,269

Total Project Value

122,238

Sponsoring Forum

Intellectual Property Rights Experts Group (IPEG)

Topics

Intellectual Property; Digital Economy; Electronic Commerce

Committee

Committee on Trade and Investment (CTI)

Other Fora Involved

Other Non-APEC Stakeholders Involved

Proposing Economy(ies)

Peru

Co-Sponsoring Economies

Philippines; Thailand

Expected Start Date

01/1/2024

Expected Completion Date

31/01/2025

Project Proponent Name 1

Angela Vizcarra

Job Title 1

Organization 1

INDECOPI

Telephone 1

+5112247800-2124

Email 1

avizcarra@indecopi.gob.pe

Project Proponent Name 2

Not Applicable

Job Title 2

Not Applicable

Organization 2

Not Applicable

Telephone 2

Not Applicable

Email 2

Not Applicable

Declaration

Angela Vizcarra

Project Summary

Confinement due to Covid-19 pandemic led to an exponential increase of e-commerce, resulting in competitive prices, but also in greater online supply of counterfeited goods that cause a direct effect to IP right holders.

Considering that IP law enforcement faces challenges in regulating e-commerce, to be aware of measures and successful experiences is important for APEC economies in order to face these challenges in a better way.

To this end, a guidebook will be developed based on research, data collection and a workshop. It will aim to provide voluntary recommendations to APEC economies to combat trademark counterfeiting in the digital environment. Successful experiences on the application of measures will also be included in order to give a better understanding on its scope and benefits to APEC economies.

List of all project outputs

1. Research and data collection

2. Workshop

3. Compendium

Relevance

Benefits to Region: Due to COVID-19 pandemic, the global physical market gave way to the digital market. From the most important department stores to the smallest retail ventures, they had to participate in e-commerce, sometimes on highly developed digital platforms, but mostly, through social networks.

Despite the end of the pandemic, the usefulness and development of e-commerce continues to grow. Under this scenario, criminal organizations dedicated to the production and commercialization of counterfeit goods have understood that they must dominate the digital market, a territory where enforcement authorities face challenges due to the rigidity of their regulations and organization, which obey to a physical and traditional notion of the world. This has made the digital market a haven that offers counterfeiters an economic zone with low operating, detection and control costs.

The aforementioned situation has led some economies to implement or develop measures to ensure adequate enforcement in the digital environment, particularly with regard to trademark counterfeiting. In the case of Peru, for example, a collaborative enforcement approach has been taken which has led Peruvian enforcement authorities to sign a collaboration agreement with MERCADO LIBRE platform. The agreement will contribute to execute measures that allow suspending, ceasing or hindering acts that infringe trademark rights in the digital environment. This measure has brought positive results, and Peru is already seeking to sign more agreements with other main internet service providers.

It must be noted that, at an APEC level, there is no official and easily accessible information on measures adopted by economies as the one described above, so this project aims to fill that gap. Therefore, it is expected that APEC economies will benefit with a guidebook that will include voluntary recommendations and best practices to improve facing trademark counterfeiting in the digital environment. The guidebook will contribute to strengthen their own digital enforcement system and, thus, consumers can be assured of obtaining legal products from their electronic transactions.

Eligibility and Fund Priorities: This project is aligned with the following 2023 funding priorities of the ASF Digital Innovation Sub-fund: "Promoting coherence and cooperation of regulatory approaches affecting the Internet and Digital Economy", "Facilitation of e- commerce and Advancing Cooperation on Digital Trade"; and "Creating a favorable regulatory eco-system for e- commerce to promote predictability, transparency, security, fair competition and consistency”, as it will allow APEC economies to strengthen their digital enforcement system for the protection of trademark rights in e-commerce throughout the region, which will contribute to promote predictability, transparency and security in digital transactions. Hence, consumer confidence will also be strengthened.

Capacity Building: Capacity building will be provided through the set of voluntary recommendations and best practices included in the guidebook. It seeks to strengthen enforcement skills of authorities in charge of combating trademark infringements in the digital environment. In this sense, authorities will be in a better position to develop and implement measures aimed to combat trademark counterfeiting in e-commerce.

The project also includes a workshop, which will allow APEC officials to strengthen their problem-solving skills in issues relating to digital enforcement to fight trademark counterfeiting. It will also deepen their knowledge, as they will actively participate in the exchange of experiences that will allow them to build proposals to strengthen their current digital enforcement systems.

Objectives

The objective of this project is to contribute to the capacity of APEC economies’ officials to implement, improve and develop measures aimed to combat the growing volume of trademark counterfeiting in the digital environment and, thus, strengthen the digital enforcement system for the protection of trademark rights in e-commerce throughout the region and increase confidence in digital trade.

The proposed goal will be achieved through research, data collection and a workshop of the enforcement experiences in APEC and non-APEC economies. This will include actions carried out by the private sector, including intellectual property agents and e-commerce platforms.

Alignment

Beneficiaries and Outputs

Outputs

1. Research and Data Collection

Information collection about:
a. IP measures, strategies, policies or activities carried out to combat trademark counterfeiting in the digital environment; and
b. successful experiences on the application of these measures, strategies, policies or activities. This will contribute to give a better understanding on its scope and benefits to APEC economies.

To achieve the output the following will be consider:
i. Literature review (including information available on the internet)
ii. Online surveys circulated among APEC economies (contractor will design 2 surveys to collect the aforementioned information, in that sense, one will be directed to APEC IP enforcement authorities and private sector representatives which are directly responsible or engaged with IP measures, strategies, policies or activities to combat trademark counterfeiting in the digital environment; and the other to IP right owners and e-commerce consumers which have benefited from those IP measures, strategies, policies or activities).
iii. Selection of economies for case studies (based on the interest expressed by economies or the results of the literature review).
iv. If necessary, in-depth online interviews.

It is expected that the execution of these activities will run from March to May 2024. The outcomes of the research and data collection will be included in the guidebook. The written output is expected to include qualitative information regarding: i) the benefits that IP right owners and e-commerce consumers have obtained as a result of specific IP measures, strategies, policies or activities carried out to combat trademark counterfeiting in the digital environment; ii) main institutions or bodies involved, key roles, interactions, workplans and goals; iii) points of view from enforcement authorities and private sector representatives concerning barriers, challenges, future actions, and perspectives in this matter; and iv) case studies from at least 5 economies.

2. Workshop

The workshop will gather APEC enforcement authorities and private sector representatives directly responsible or engaged with the surveillance, prevention or punishment of trademark counterfeiting in the digital environment.
It is expected that the workshop will be held in Lima during SOM3 meetings (August 2024) and that it will be a one-full day in-person event (7-8 hours).
The tentative agenda of main topics will be:

- Presentation of the main findings of the draft guidebook (the draft guidebook will be circulated in advance).
- Key elements that must be considered to combat trademark counterfeiting in the digital environment.
- Collaboration between public and private sector.
- Successful experiences regarding IP measures, strategies, policies or activities carried out to combat trademark counterfeiting in the digital environment.
- Q&A sessions.
- Practical session where participants will present an action plan that is currently or could be implemented in their respective home economies. Such action plans should reflect the key learnings from the presentations, incorporate the current and desired state of their home economies, as well as barriers and potential risks.
- Final session to recap the key learnings and recommendations gained from the Workshop.

Also, ex-ante and ex-post surveys will be conducted in order to measure and evaluate the level of knowledge of the participants before and after the Workshop, and to asses the new capacities gained from it. To ensure high number of responses received, the surveys will be circulated right before and after the Workshop.

3. Guidebook

The guidebook will be developed based on the research and data collection as well as the key discussions and recommendations from the workshop, and it will aim to provide voluntary recommendations to APEC economies to better combat trademark counterfeiting in the digital environment. It will also provide information on how public and private sectors can cooperate in the implementation of effective IP measures, strategies, policies, or activities in this regard. Successful experiences will also be included.
The guidebook will tentatively consider the following topics:

- General information (introduction, basic definitions, general definitions on digital enforcement and e-commerce).
- Recommendations on how to combat trademark counterfeiting in the digital environment.
- Recommendations on how public and private actors can collaborate on the implementation of digital enforcement actions.
- Successful experiences (case studies from at least 5 economies).
- Conclusions.
- Annexes (results from surveys conducted by the contractor).
- Bibliographic references.

It is expected that the compendium will have a minimum of 85 pages
(excluding annexes and bibliographic references). It will be an APEC publication and be uploaded on the APEC website by January 2025, after being approved by the Secretariat and endorsed by IPEG.

Outcomes

Improved APEC economies' capacity to develop / implement measures, strategies, policies and/or activities to combat trademark counterfeiting in the digital environment. This outcome will be measured trough the number of voluntary recommendations included in the guidebook together with the results of the ex ante and ex post surveys (from the workshop).
Increased APEC economies' knowledge on how to addres the challenges in regulating e-commerce, in order to contribute to strengthening the digital enforcement system throughout the region and increase confidence in digital trade. This outcome will be measured through the web-analytics to see the number of visits / downloads of the guidebook.
Strengthened skills of the participants of the workshop (IP enforcement authorities and private sector representatives) on issues related to digital enforcement to better approach the fight against trademark counterfeiting. Also, the exchange of experiences will allow them to build proposals to strengthen their current digital enforcement systems. This outcome will be measured through the results of the ex ante and ex post surveys of the workshop.

Beneficiaries

Direct project participants will include APEC IP enforcement authorities, and private sector representatives with relevant experience in surveillance, prevention or punishment of trademark counterfeiting in e-commerce. Their engagement will be in the form of survey-filling and workshop participation. The project will promote equal opportunities for all genders. It is expected that the direct project participants will benefit from the voluntary recommendations and successful experiences included in the guidebook as it will strengthen their capacities and skills to better approach and combat trademark counterfeiting.

This project also foresees as additional beneficiaries the IP rights owners, and in the long term, non-APEC economies, as the guidebook will provide relevant information on implementation of IP digital enforcement policies.

Dissemination

- The guidebook will be published as an APEC Publication.
- The guidebook will be an electronic publication and will be published on the APEC website, after being approved by the Secretariat and endorsed by IPEG. The guidebook will include voluntary recommendations and successful experiences which will be written based on the results of the research and data collection, and the workshop.
- The target audience for the guidebook will be IP enforcement authorities and private sector representatives who are in charge of the surveillance, prevention, or punishment of trademark counterfeiting in e-commerce.
- There is no intention to sell the outputs arising from this project. APEC economies will be encouraged to disseminate the guidebook with their respective IP enforcement authorities and private sector representatives through their websites.
- Also, Peru will communicate and consult with the APEC Secretariat's Communication and Public Affairs Unit prior to any additional dissemination measures within its economy such as: (i) an event to communicate or inform Peruvian stakeholders of the publication of the guidebook in the APEC website, (ii) the publication of the guidebook on its domestic website by hyperlinking the APEC website; and (iii) the direct distribution of the guidebook to Peruvian target audiences (enforcement authorities and private sector representatives). To achieve a broader scope regarding the execution of the aforementioned additional measures, we will translate the guidebook into Spanish (the translation will be self-funded).

Gender

This project aims to address and collaborate with three of the five pillars of the Gender Criteria.

As for skills, capacity building, and health pillar, the project will promote female participation for the surveys and the workshop. Therefore, we will encourage economies to nominate female participants for the completion of the surveys and for the participation in the workshop. We expect to have a minimum of 50% female participation.

Regarding the leadership, voice and agency pillar, it should be noted that most of the team - including the POs - that lead, carried out, and will be involve in the whole process of the project are women (approximately 75% of the team). Moreover, PO is committed to collecting sex disaggregated data for all speakers and participants (not only those funded by APEC) at the project event. This data will be included when submitting a Completion Report to the Secretariat upon completion of the project, as well as providing guidance to future POs on their own gender parity targets.

Finally, as for innovation and technology pillar, the project seeks to equally benefit both female and male participants with the knowledge gained from the workshop as well from the voluntary recommendations included in the guidebook, so all participants be in a better position to design and implement policies to strengthen their current enforcement digital systems.

Gender Participation Target Goals
As participants: Male (50%) Female (50%)
As speakers: Male (50%) Female (50%)

Five Pillars of the Gender Criteria

Skills, Capacity Building, and Health
Leadership, Voice and Agency
Innovation and Technology

Work Plan