How Are DTI Takedown Orders Enforced Against Social Networks?
Introduction
Brand owners selling legitimate goods online may encounter social media pages offering counterfeit shoes, clothing, electronics, cosmetics, or other physical products. In these situations, a brand owner may seek government intervention to have the online listing or page removed and to prevent the continued sale of the counterfeit goods.
The principal current remedy is an administrative takedown order issued by the Department of Trade and Industry (DTI) under the Internet Transactions Act of 2023. The process is distinct from a private demand to a social media company and from a trademark infringement case filed before a court or the Intellectual Property Office.
What Law Governs the Removal of Counterfeit Listings?
The Internet Transactions Act of 2023 authorizes the DTI Secretary, after investigation or verification, to issue an ex parte takedown order directing the removal of a listing or offer on a webpage, platform, or application.
The authority covers the online sale or lease of goods or services that are prohibited or regulated under existing laws, including counterfeit goods, when the prohibited character is apparent from the photograph or description in the post. The governing statute is the Internet Transactions Act of 2023.
The same provision also covers online transactions previously subjected to a takedown order but later reposted by the seller. It further authorizes removal of other transactions within the DTI’s jurisdiction that threaten public or personal safety or compromise financial or personal information.
Who May Request a Takedown Order?
A brand owner or its authorized representative may bring the suspected counterfeit activity to the attention of the DTI and submit evidence supporting an investigation or verification. Other regulatory agencies may likewise request the DTI to issue a takedown order for an online listing that violates laws, rules, or regulations within their jurisdiction.
The statute does not make a private brand owner the issuing authority. The DTI Secretary issues the takedown order after the required investigation or verification. The brand owner’s role is ordinarily to identify the infringing listing, establish its connection with counterfeit goods, and provide evidence of the brand owner’s rights and the suspected violation.
What Must the Brand Owner Establish?
A strong request should show, as applicable, the following facts:
First, the identity of the protected mark. The submission should identify the registered trademark, trade name, or other intellectual-property right allegedly violated. Registration documents, certificates, photographs of authentic products, and evidence of authorized distribution may be useful.
Second, the online location of the violation. The brand owner should preserve the complete URL, account or page name, seller identity, product listing, images, price, contact details, and date and time of access. Screenshots should include enough surrounding information to connect the product, seller, and platform.
Third, the counterfeit indicators. Evidence may include differences in packaging, labels, serial numbers, stitching, materials, product codes, product quality, pricing, or the absence of authorized distribution. A report from the brand owner or a qualified examiner may strengthen the request.
Fourth, the apparent connection with a prohibited transaction. For a DTI takedown under the counterfeit-goods provision, the prohibited nature of the goods must be apparent from the photograph or description in the online post. The request should therefore explain precisely what a viewer can see or read in the listing.
Fifth, the seller’s continuing conduct. Evidence that the seller has reposted the same products, opened replacement accounts, or moved the listings to other pages may support a request based on reposting after a prior takedown order.
How Does the DTI Takedown Process Operate?
The process generally follows these stages:
1. Evidence preservation. The brand owner should capture the listing, preserve the URL, record the account or page details, and obtain available information regarding the seller and the transaction. It should avoid altering or interacting with the listing in a way that may destroy evidence.
2. Submission to the DTI. The brand owner or authorized representative submits a complaint, request, or supporting report to the appropriate DTI office, together with proof of ownership or authorization and evidence showing the apparent counterfeit activity.
3. Investigation or verification. The DTI assesses the listing and the supporting evidence. The statutory authority to issue a takedown order arises after investigation or verification.
4. Issuance and service of the order. The order may be directed against the e-retailer or online merchant and the owner or operator of the e-marketplace or digital platform. Copies may also be served on entities whose cooperation is required, including the registered internet service provider involved, payment gateways, and other government agencies.
5. Removal of the listing or offer. The platform or other recipient is expected to cooperate in removing the identified online listing or offer in accordance with the order.
6. Opportunity to be heard. The violating entity must be given an opportunity to be heard within forty-eight (48) hours from issuance of the takedown order. The statutory procedure therefore allows immediate interim removal while preserving a prompt opportunity to contest the order.
How Long Does a Takedown Order Remain Effective?
A takedown order remains effective for a maximum period of thirty (30) days unless it is extended or made permanent by a judicial order or decision. The thirty-day period should not be treated as a permanent adjudication of trademark ownership or infringement.
If the counterfeit activity continues, the brand owner should promptly document the continued conduct and consider additional administrative, civil, or criminal remedies. A new or reposted listing may require further enforcement action, particularly when it is published through a different account or platform.
What Happens If the Seller Reposts the Counterfeit Goods?
The DTI may issue a takedown order where goods previously subjected to a takedown order are subsequently reposted and proliferated online by the seller under investigation. The brand owner should preserve evidence connecting the new listing to the previously removed listing or to the same seller.
The DTI Secretary may also establish a publicly accessible blacklist of websites, webpages, online applications, social media accounts, or similar platforms that fail to comply with a compliance order or are subject to a takedown order or a cease-and-desist order issued by an appropriate government agency. After compliance or correction, the DTI must promptly remove the entry from the list without the necessity of a hearing under the Internet Transactions Act of 2023.
How Does a Takedown Order Differ from Trademark Infringement?
A DTI takedown order is an administrative measure directed at stopping or removing an online transaction. Trademark infringement is a separate legal wrong that may support civil, administrative, and criminal remedies under the Intellectual Property Code of the Philippines.
Section 155 of the Intellectual Property Code covers unauthorized use in commerce of a reproduction, counterfeit, copy, or colorable imitation of a registered mark when the use is likely to cause confusion, mistake, or deception. Infringement may exist even before an actual sale occurs because the statute covers offering for sale, distribution, advertising, and preparatory acts necessary to carry out the sale. This rule is reflected in Ginebra San Miguel, Inc. v. Tanduay Distillers, Inc. (G.R. Nos. 196372, 210224, 216104, and 219632, 2022), quoting Section 155 of the Intellectual Property Code.
The court may order infringing goods and related labels, packages, advertisements, plates, molds, matrices, and other means of making the infringing material delivered up and destroyed. For counterfeit goods, merely removing the trademark is generally insufficient to permit their release into commerce, subject to exceptional cases under the applicable regulations (Intellectual Property Code of the Philippines).
Can the Brand Owner File a Court Case?
Yes. A takedown request does not prevent the brand owner from pursuing a civil action for infringement, unfair competition, damages, or injunction. Actions under the relevant provisions of the Intellectual Property Code are brought before the proper courts with jurisdiction under existing laws (Intellectual Property Code of the Philippines).
The Supreme Court has recognized that regular courts may hear infringement, damages, and injunction cases even while a trademark cancellation proceeding is pending before the intellectual-property authorities. The pendency of an administrative cancellation case does not automatically prevent the courts from granting provisional relief (Levi Strauss (Phils.), Inc. v. Vogue Traders Clothing Company, G.R. No. 132993, 2005).
A civil action may be especially appropriate when the brand owner needs a preliminary injunction, damages, discovery of the seller’s identity, preservation of evidence, or an order covering conduct beyond one particular online listing.
Can the Brand Owner Seek Administrative Relief from the IPO?
The Bureau of Legal Affairs of the Intellectual Property Office may exercise original jurisdiction over administrative complaints involving intellectual-property violations, subject to the statutory jurisdictional requirements, including the applicable claim for damages. Its jurisdiction may be concurrent with that of the regular courts in matters covered by the Intellectual Property Code (In-N-Out Burger, Inc. v. Sehwani, Inc., et al., G.R. No. 179127, 2008).
The choice between a DTI takedown request, an IPO administrative complaint, and a court action depends on the immediate objective. Removal of a specific online listing may call for DTI intervention, while damages, injunction, cancellation, or broader infringement relief may require proceedings before the IPO or the courts.
What Role Does the Social Media Company Play?
The social media company or platform may be the recipient of the DTI order even though it is not the seller of the counterfeit goods. The statute expressly allows the takedown order to be directed against the online merchant and the owner or operator of the digital platform.
The order may also be served on payment gateways, internet service providers, and other entities whose cooperation is necessary for enforcement. The platform’s precise obligations will depend on the terms of the order and the form of cooperation required.
A private notice to the platform may still be useful, particularly where the platform has an intellectual-property reporting system. However, a private report should not be described as equivalent to a DTI takedown order. A government-issued order provides a distinct statutory basis for removal.
What Other Remedies May Apply to Counterfeit Goods?
Counterfeit sales may support an action for unfair competition when the seller gives the goods the general appearance of those of another manufacturer or dealer, or otherwise presents them in a manner likely to deceive the public. Section 168.3(a) of the Intellectual Property Code addresses this form of passing off (Century Chinese Medicine Co., et al. v. People of the Philippines, et al., G.R. No. 188526, 2013, quoting the statutory provision).
Criminal enforcement may also be available for violations of the Intellectual Property Code. The Supreme Court has held that criminal and civil cases for the covered intellectual-property offenses fall within the jurisdiction of the Regional Trial Court under the applicable jurisdictional law (Samson v. Daway, et al., G.R. Nos. 160054-55, 2004).
Where physical counterfeit goods must be seized, the brand owner may coordinate with appropriate enforcement authorities. A search warrant in a criminal investigation is governed by the rules on criminal procedure, and probable cause concerns whether the facts would lead a reasonably prudent person to believe that an offense was committed and that the objects sought are connected with it (Century Chinese Medicine Co., et al. v. People of the Philippines, et al., G.R. No. 188526, 2013).
Practical Checklist for Brand Owners
Before filing a request, the brand owner should prepare a concise evidence package containing:
Proof of rights: trademark certificates, trade-name records, authorization documents, and evidence of prior use or ownership.
Proof of online activity: URLs, screenshots, seller names, account identifiers, product descriptions, photographs, prices, contact information, and access dates.
Proof of counterfeiting: side-by-side comparisons, product authentication reports, packaging differences, serial-number checks, and statements from authorized distributors or examiners.
Proof of urgency: evidence of continuing sales, multiple listings, consumer complaints, health or safety risks, payment links, and reposting after prior removal.
Requested relief: a clear identification of each listing, page, account, platform, payment channel, and other entity whose cooperation is necessary.
Final Observations
For counterfeit physical goods sold through social networks, the most direct government remedy is a request for a DTI takedown order under the Internet Transactions Act of 2023. The brand owner should establish the apparent counterfeit nature of the goods from the listing, preserve the digital evidence, identify the seller and platform accurately, and explain why immediate removal is warranted.
The order may provide rapid relief, but it is limited to a maximum of thirty (30) days unless extended or made permanent by judicial action. Brand owners should therefore evaluate, at the outset, whether they also need an IPO proceeding, a civil action for infringement and injunction, a damages claim, or criminal enforcement involving the physical counterfeit goods.
About Nicolas and De Vega Law Offices
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