How Can Brands Secure DTI Takedown Orders?

Introduction

Counterfeit products sold through websites, marketplaces, social-media accounts, and other digital platforms can damage a registered brand’s goodwill, mislead consumers, and expose the public to unsafe or substandard goods. Philippine law now provides a direct administrative mechanism for seeking the removal of certain online listings through the Department of Trade and Industry (DTI).

Under the Internet Transactions Act of 2023, the DTI Secretary may issue an ex parte takedown order after investigation or verification. The remedy is immediate in character, but it is not automatic: the requesting brand must show facts bringing the online transaction within the statutory grounds for takedown.

What Law Governs Online Takedown Orders?

The principal statute is the Internet Transactions Act of 2023, R.A. No. 11967. It authorizes the DTI Secretary to direct the removal of online listings or offers involving goods or services that fall within specified statutory circumstances.

The law applies to listings or offers appearing on a webpage, online platform, or application, regardless of the intended nature of the transaction. Its enforcement system is administered through the DTI’s e-commerce regulatory functions.

For counterfeit branded goods, the most directly applicable ground is the sale or lease of goods prohibited or regulated under existing laws, including counterfeit goods, when their prohibited nature is apparent from the photograph or description in the online post. R.A. No. 11967, Sec. 15(a).

When May the DTI Issue a Takedown Order?

The DTI Secretary may issue an ex parte takedown order after investigation or verification when any of the following circumstances exists:

• The online listing offers prohibited or regulated goods, including counterfeit goods, and their prohibited nature is apparent from the post’s photograph or description.
• The goods or services are the subject of a cease and desist order issued by an appropriate government agency.
• The same goods or services were previously subject to a takedown order but were reposted and proliferated online by the seller under investigation.
• The online activity is within the DTI’s jurisdiction and threatens public or personal safety or compromises financial or personal information.

These grounds are cumulative alternatives, not requirements that must all be proven at the same time. A brand seeking removal of a counterfeit listing should identify the specific ground relied upon and submit evidence directed to that ground.

Why Must the Counterfeit Nature Be Apparent?

For counterfeit goods under Sec. 15(a), the statute expressly requires that the prohibited nature of the goods be apparent from the photograph or description in the post. A bare assertion that a product is fake may therefore be insufficient where the listing does not visibly or expressly indicate facts supporting that conclusion.

A submission should explain why the listing itself shows counterfeiting. Relevant indicators may include unauthorized use of the registered mark, copied packaging, an obviously false brand representation, a product photograph showing a counterfeit label, or a description expressly offering “replica” or imitation merchandise.

Where the counterfeit character cannot reasonably be determined from the listing alone, the brand should provide additional verification materials and explain why further investigation is necessary. The DTI’s authority under Sec. 15 is exercised after investigation or verification.

What Evidence Should a Brand Submit?

The Internet Transactions Act does not prescribe a single exclusive evidentiary checklist in the provision cited above. As a matter of sound enforcement practice, a brand should prepare a complete and verifiable record showing both the online activity and the brand’s rights.

• Listing evidence: screenshots, the complete URL, account or seller name, platform name, product description, photographs, price, date and time of capture, and the listing’s status.
• Brand-rights evidence: trademark registration details, ownership documents, authorization records, and information identifying the legitimate manufacturer or distributor.
• Counterfeit indicators: comparisons between genuine and counterfeit products, packaging photographs, product codes, labels, receipts, test purchases, or an expert or brand-protection report.
• Seller and platform information: seller account details, contact information, payment instructions, warehouse or delivery information, and the identity of the e-marketplace or digital platform.
• Consumer-protection evidence: complaints, proof of unsafe or defective goods, misleading representations, or facts showing a risk to public or personal safety.

Evidence should be preserved before the seller edits, deletes, or reposts the listing. A brand should maintain the original electronic files and a dated record of how the evidence was obtained.

How Should the Request Be Framed?

The request should be directed to the DTI Secretary or the appropriate DTI office handling internet-transaction enforcement. It should clearly state that the brand is requesting investigation, verification, and issuance of an ex parte takedown order under Sec. 15 of R.A. No. 11967.

The request should identify the specific online listing and avoid relying on generalized claims about the platform or seller. It should separately identify:

• the seller or online merchant;
• the e-marketplace, website, social-media account, or digital platform;
• the exact listing or offer to be removed;
• the brand and product involved;
• the applicable statutory ground; and
• the evidence supporting the requested action.

The brand should also request that copies of the order be served on entities whose cooperation may be required for enforcement, including the relevant internet service provider, payment gateway, or other government agency. R.A. No. 11967, Sec. 15.

What Happens After the DTI Issues the Order?

A takedown order is directed against both 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 needed to implement the order.

The violating entity must be given an opportunity to be heard within forty-eight hours from issuance of the takedown order. The order is therefore immediately operative in character, but the affected party retains a statutory opportunity to contest the action.

The order remains effective for a maximum of thirty days, unless it is extended or made permanent by a judicial order or decision. A brand should therefore use the period to pursue any additional administrative, civil, criminal, or judicial remedies that may be necessary to prevent continued sale or reposting.

Can the DTI Blacklist a Noncompliant Online Business?

Yes. Under R.A. No. 11967, Sec. 16, the DTI Secretary may establish a publicly accessible blacklist of websites, webpages, online applications, social-media accounts, or similar platforms that fail to comply with a compliance order, are subject to a DTI takedown order, or are subject to a cease and desist order issued by an appropriate government agency.

The blacklist must indicate the specific violation. It may be furnished to digital platforms and financial regulators. After compliance or correction, the DTI may promptly remove the entry either on its own initiative or upon request, without the necessity of a hearing.

How Does Takedown Relief Relate to Intellectual-Property Remedies?

A DTI takedown order is an online enforcement measure. It does not replace an action for trademark infringement, unfair competition, damages, injunction, or other remedies under the Intellectual Property Code.

Under the Intellectual Property Code of the Philippines, R.A. No. 8293, a court may order infringing goods and materials bearing a registered mark or counterfeit, copy, or colorable imitation to be removed from commercial channels or destroyed after a violation has been established. R.A. No. 8293, Sec. 157.

The Supreme Court has also recognized that the Bureau of Legal Affairs of the Intellectual Property Office has original jurisdiction over administrative complaints involving violations of intellectual-property laws when the total damages claimed meet the statutory threshold of at least P200,000. In-N-Out Burger, Inc. v. Sehwani, Inc., et al., G.R. No. 179127, 20 November 2008.

In appropriate cases, the brand may therefore consider parallel or successive remedies: a DTI takedown request for immediate online removal, an IPO administrative complaint, and a court action for injunction, damages, destruction, or other relief.

What If the Product Is Clearly Counterfeit?

Where the listing visibly uses a brand’s mark on counterfeit goods, the brand should emphasize the direct connection between the online material and the statutory ground for takedown. The submission should not merely state that the seller is unauthorized; it should explain why the displayed product is counterfeit or why the listing creates a prohibited brand representation.

In Skechers, U.S.A., Inc., et al. v. Inter Pacific Industrial Trading Corp., et al., G.R. No. 164321, 23 November 2006, the Supreme Court recognized that courts may examine colorable imitation and likelihood of confusion when determining probable cause for a search warrant. Such findings are preliminary and do not constitute a final adjudication of criminal liability.

This distinction is important. Evidence sufficient to support urgent interim action may not by itself establish final liability. The brand should preserve evidence and pursue the appropriate proceeding for a definitive finding and permanent relief.

What If the Seller Reposts the Listing?

Reposting after a prior takedown order is expressly recognized as a separate ground for another takedown action under Sec. 15(c) of R.A. No. 11967. The brand should preserve evidence of the earlier order and show that the same seller under investigation subsequently reposted or proliferated the goods online.

Repeated reposting may also support a request for stronger enforcement measures, including blacklisting under Sec. 16 and the imposition of administrative fines under Sec. 29.

What Penalties May Apply?

R.A. No. 11967 imposes administrative fines on online merchants, e-retailers, e-marketplaces, and digital platforms in specified circumstances. An online merchant or e-retailer found guilty of deceptive, unfair, or unconscionable sales acts may be fined, in addition to penalties under the Consumer Act of the Philippines, as follows:

• First offense: P20,000 to P100,000.
• Second offense: P100,000 to P500,000.
• Third and subsequent offenses: P500,000 to P1,000,000.

An online merchant, e-retailer, e-marketplace, or digital platform that willfully or unreasonably refuses to comply with a takedown order under Sec. 15(a), (c), or (d) may also be fined:

• First offense: P20,000 to P100,000.
• Second offense: P100,000 to P500,000.
• Third and subsequent offenses: P50,000 to P100,000.

The statute further provides that takedown may be imposed in addition to the fines, including permanent removal of the listing or offer where applicable. The penalties are without prejudice to civil or criminal liability under other laws.

What Practical Mistakes Should Brands Avoid?

Brands should avoid submitting incomplete URLs, undated screenshots, cropped images that conceal the listing context, or conclusory statements unsupported by product comparisons. They should also distinguish between a counterfeit-product complaint and a mere dispute over pricing, parallel importation, unauthorized resale, or trademark use that is not shown to be counterfeit.

A request should not assume that every unauthorized seller automatically qualifies for a DTI takedown order. The brand must connect the facts to a statutory ground and, for counterfeit goods under Sec. 15(a), address whether the prohibited nature is apparent from the photograph or description.

Recommended Enforcement Sequence

1. Capture and preserve the complete listing, seller profile, product images, URL, and transaction details.
2. Confirm the brand’s registration, ownership, and authority to act.
3. Prepare a product-authentication or counterfeit assessment.
4. Identify the precise ground under Sec. 15 of R.A. No. 11967.
5. Submit a documented request for investigation, verification, and ex parte takedown.
6. Notify the relevant platform and preserve records of any response or refusal.
7. Monitor for reposting during and after the thirty-day period.
8. Evaluate IPO, civil, criminal, or judicial remedies for continuing or permanent relief.

Conclusion

Registered brands may seek DTI removal of counterfeit online listings under the Internet Transactions Act of 2023, but the request must be tied to a statutory ground and supported by reliable evidence. The strongest submissions identify the exact listing, establish the brand’s rights, explain why the counterfeit nature is apparent or verifiable, and show the risks posed to consumers or the public.

The DTI remedy is time-limited: the affected party must be heard within forty-eight hours, and the order generally lasts no more than thirty days unless extended or made permanent by judicial action. Brands should therefore treat a takedown request as an urgent enforcement step while preparing complementary intellectual-property and court remedies when the infringement or counterfeiting continues.

About Nicolas and De Vega Law Offices

 Nicolas and de Vega Law Offices is a full-service law firm in the Philippines.  You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines.  You may also call us at +632 84706126, +632 84706130, +632 84016392 or e-mail us at [email protected]. Visit our website https://ndvlaw.com.