Resolving Trademark Disputes in E-Commerce: Takedown Procedures Against Counterfeit Sellers Online (Philippines)

Introduction

Counterfeit listings in online marketplaces can damage brand goodwill, confuse consumers, and divert sales—often at scale and speed that traditional enforcement cannot match. In the Philippines, brand owners now have clearer statutory hooks to compel removal of counterfeit listings and to hold platforms accountable in defined situations, while still relying on established trademark infringement doctrines developed by the Supreme Court.

This article explains the legal bases and the step-by-step process typically used to require digital marketplaces to remove unauthorized sellers offering fake multinational retail goods, including when and how government takedown orders may be pursued and what to prepare for escalation.

Governing Philippine Laws and Doctrines

Republic Act No. 11967 (Internet Transactions Act of 2023) strengthens state-backed enforcement in e-commerce. It authorizes the Department of Trade and Industry (DTI) to issue ex parte takedown orders for certain unlawful listings and provides for subsidiary liability of e-marketplaces/digital platforms in enumerated cases.

Trademark rights and infringement standards are rooted in Philippine trademark law and Supreme Court doctrine on likelihood of confusion and the evaluation of competing marks. Even in online settings, the controlling question remains whether the challenged use is likely to cause confusion, mistake, or deception among consumers.

What Counts as Trademark Infringement in Online Listings

In essence, infringement occurs when a person, without the registrant’s consent, uses a reproduction, counterfeit, copy, or colorable imitation of a registered mark in commerce in a manner likely to cause confusion. The Supreme Court has emphasized that likelihood of confusion is the gravamen of infringement claims.

Trademark Confusion Tests Applied by Courts

Philippine jurisprudence commonly applies the test of dominancy, focusing on similarity in the main, prevalent, or essential features that may cause consumer confusion.

For criminal enforcement, courts require proof beyond reasonable doubt, and acquittal follows when the evidence does not establish the likelihood of confusion to the required standard.

Fast Removal Options: Platform Notice-and-Takedown vs. DTI Takedown Order

In practice, brand owners usually proceed on two parallel tracks:

• Platform-based takedown (private channel): Using the marketplace’s IP complaint tools and terms of service, supported by trademark registration and evidence of counterfeit activity.
• DTI-backed takedown (public channel): Seeking an ex parte takedown order under R.A. No. 11967, where the listing falls within the grounds recognized by the law.

DTI Takedown Orders Under R.A. No. 11967: When Available

Under R.A. No. 11967, the DTI Secretary may issue an ex parte takedown order directing removal of a listing or offer on a webpage/platform/application when certain conditions are present, including where the listing involves counterfeit goods and the prohibited nature is apparent from the photo or description, and in other specified situations. The law also contemplates coordination where other regulators may request the DTI to issue a takedown order for violations under their jurisdictions.

Who the Takedown Order Can Be Directed Against

A DTI takedown order may be directed against both: (1) the e-retailer/online merchant and (2) the owner or operator of the e-marketplace or digital platform. Copies may also be served on entities whose cooperation is required for enforcement, such as internet service providers and payment gateways.

Timelines and Due Process Features

Even if issued ex parte, the law requires that the violating entity be given an opportunity to be heard within 48 hours from issuance of the takedown order. The order remains effective for up to 30 days, unless extended or made permanent by a judicial order or decision.

Blacklisting and Its Pressure on Repeat Offenders

R.A. No. 11967 authorizes the DTI Secretary to establish a publicly accessible blacklist of platforms/accounts that fail to comply with a compliance order or are subject to a takedown order (or to a cease and desist order by an appropriate agency), indicating the violation. The blacklist may be furnished to digital platforms and financial regulators, increasing operational friction for repeat counterfeit sellers.

When the Marketplace May Be Liable: Subsidiary Liability Under R.A. No. 11967

R.A. No. 11967 creates subsidiary liability for e-marketplaces/digital platforms in certain circumstances, such as when the platform fails to exercise ordinary diligence in complying with its obligations, or fails—after notice—to act expeditiously in removing or disabling access to goods/services that infringe intellectual property rights or are subject to a takedown order by an appropriate government agency. Liability is limited to damages directly resulting from the transaction, subject to statutory conditions.

Step-by-Step: Compelling Removal of Counterfeit Listings (Recommended Sequence)

Step 1: Confirm and Document Your Trademark Rights

Prepare proof of rights and authority to complain:

• Philippine trademark registration details (certificate/registration number, classes, owner).
• Proof of authority if filed by counsel or brand protection agent (authorization letter or SPA as required by the platform).
• Brand identifiers used in genuine goods (official product photos, packaging references, authorized store list).

Step 2: Preserve Evidence Before the Listing Changes

Counterfeit sellers frequently delete or edit listings after receiving complaints. Preserve evidence that can be used for platform escalation, DTI requests, or litigation:

• Full-page screenshots showing the mark, price, seller name, product photos, and URL.
• Screen recording showing navigation from the listing page to seller store page.
• Order confirmation, invoice/receipt, delivery packaging, and the product received (if test-buy is conducted).

Step 3: Send a Platform IP Complaint (Immediate and Repeatable)

Most large marketplaces maintain IP protection portals. A well-prepared complaint increases the chance of removal and reduces back-and-forth. Include:

• Trademark registration information and owner details.
• Specific URLs/SKUs of infringing listings and the seller store link.
• Short explanation of why the goods are counterfeit (inconsistent labels, suspicious pricing, unauthorized source, mismatched packaging).
• Request for removal, seller sanctions, and prevention of relisting for identical images/descriptions.

Step 4: Escalate Using R.A. No. 11967 Takedown Mechanisms (When Grounds Fit)

If the counterfeit nature is apparent from the listing photo/description, or the case otherwise falls within R.A. No. 11967’s grounds for takedown, consider requesting DTI action. A DTI-issued order can be served not only on the seller and marketplace, but also on cooperating entities like ISPs and payment gateways, increasing enforcement reach.

Step 5: Target Repeat Listings and Related Accounts

Counterfeiters often repost after removal. Track patterns:

• Same images across new seller accounts.
• Same warehouse/delivery origin and payment details.
• Same product descriptions with minor edits.

R.A. No. 11967 expressly covers situations where listings previously subject of a takedown order are subsequently reposted and proliferated online by the seller under investigation.

Step 6: Consider Civil, Criminal, and Border/Enforcement Options if Harm Persists

If takedowns are not stopping the activity, escalation may be warranted depending on evidence and business impact:

• Civil action for infringement where evidence supports likelihood of confusion and unauthorized use.
• Criminal complaint where the facts and evidence meet the higher burden of proof required in criminal cases.

Courts and prosecutors will still evaluate whether the use is likely to cause confusion, and whether the mark has been copied or colorably imitated, consistent with Supreme Court rulings.

Typical Scenarios and How the Process Usually Plays Out

Scenario A: “Too-good-to-be-true” luxury item listing. A marketplace listing uses the exact brand name and logo, with photos suggesting counterfeit packaging. This is often suited for immediate platform takedown and may support a DTI takedown request when the counterfeit nature is apparent from the post.

Scenario B: Multiple small sellers with the same photos. Treat this as a coordinated operation. Document the network of listings, request bulk removals, and ask the platform to prevent relisting using identical images and descriptors.

Scenario C: Offshore seller with no Philippine presence. R.A. No. 11967 contemplates platform obligations tied to seller contact details in certain cases and may support stronger pressure on the marketplace where the seller is effectively unreachable.

Evidence Checklist (What Usually Gets Results)

Item	Purpose
Trademark registration details	Shows enforceable right and standing to complain
Listing URLs, screenshots, screen recordings	Proves the exact infringing use and seller identity at the time of posting
Comparative photo set (genuine vs counterfeit indicators)	Supports “counterfeit” claim and speeds up platform review
Test-buy records (order, receipt, parcel, product)	Strengthens escalation for repeat offenders and possible court action

Selected Philippine Authorities (Cited)

• R.A. No. 11967 (Internet Transactions Act of 2023) — authorizes DTI ex parte takedown orders, provides takedown coverage for listings involving counterfeit goods, sets 48-hour opportunity to be heard and 30-day effectivity, and recognizes subsidiary liability of platforms in enumerated circumstances.
• Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, G.R. No. 196372 (2022) — discusses infringement elements under the Intellectual Property Code and emphasizes standards tied to consumer perception and confusion analysis.
• Nestle, S.A. v. Dy, G.R. No. 172276 (2010) — applies the test of dominancy and reiterates that likelihood of confusion is central to infringement.
• Diaz v. People of the Philippines, G.R. No. 180677 (2013) — in criminal trademark infringement, stresses that likelihood of confusion must be proven to the required standard; failure of proof results in acquittal.

Conclusion and Recommendations

For counterfeit listings in Philippine e-commerce, the most effective approach is usually a layered enforcement plan: (1) fast platform complaints supported by complete trademark and evidence packets; (2) escalation to government-backed takedown mechanisms under R.A. No. 11967 when statutory grounds apply; and (3) targeted repeat-offender action supported by systematic evidence preservation.

Brand owners should maintain a standing evidence kit (registration documents, genuine product identifiers, authorized seller lists), run periodic marketplace sweeps, and preserve screenshots and order records early. When relisting persists, consider using the DTI takedown process and, where justified by evidence and harm, proceed to civil or criminal remedies consistent with Supreme Court doctrines on likelihood of confusion.

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.