Google’s Policy Change: Sale of Counterfeit Goods
The holiday shopping season is upon us. But with bargains come risks. In 2018, the counterfeit goods market caused an estimated $323 billion in damages to the global economy.
81% of internet users begin their purchase with a search engine, with Google retaining a 92% share. Google’s recent expansion of its organic search reporting tool is a welcome development, helping to reduce traffic to infringing websites, protecting consumers and improving online brand strength.
URLs can now be removed from Google’s search results on grounds of either copyright infringement or, notably, the sale of counterfeit goods. Google defines counterfeit goods as:
“…contain(ing) a trademark or logo that is identical to or substantially indistinguishable from the trademark of another. They mimic the brand features of the product in an attempt to pass themselves off as a genuine product of the brand owner.”
Significance of Change
The inclusion of counterfeits marks progress towards a greater level of involvement by intermediaries, already seen within social media and online marketplaces. Increased options available can improve compliance, adding value to the tool within a brand’s strategy. Brand features, however, must be clearly identified; listings that are apparent to a brand but potentially unclear to Google may still suffer under this policy. This will depend both on the reporter’s clarifications and the willingness of Google.
Whilst the expansion of the reporting tool is welcome, several limitations exist under Google’s policy:
- Google will not remove websites: only URLs leading directly to the content will be accepted. A request to remove an entire website will be rejected. Websites hosting multiple URLs leading to infringing content cannot be resolved through a general report. Although the policy may be rooted in a degree of fairness. Websites that contain hundreds or thousands of infringing URLs could be a significant drain on resources.
- Google as a publisher of content: a URL reported to Google will not be removed entirely. The infringing content will still be live and available to access through other methods. Social media engagement, online advertising and other forms of communication are still possible to attract consumers.
- Too many reports may lead to sanctions: Google state that a failure to limit complaints under this policy may result in restrictions on sending future complaints. For brands with a large amount of issues on Google’s search engine, this policy could have clear negative consequences for instances of increased enforcement, for example, intensification exercises within busy periods of trading.
- Non-counterfeit trade mark infringement is not accepted; Any trade mark reports that do not concern the sale of counterfeits will not be accepted. The use of stock images or trade marks within titles may highlight the need for the gap to be removed. Here, a test purchase may assist in obtaining evidence of actual counterfeit in the right cases. Google also recommends discussing directly with the webmaster of the page.
In a post-GDPR landscape, the availability of webmaster details can be scarce. Google’s approach limits the enforcement efforts of brands. Infringing URLs will remain active and accessible through Google’s search engine throughout the process of gathering intelligence and sourcing registrant details to resolve matters of non-counterfeit trade mark infringement. Solving this gap may provide short-term relief for brand owners with budgetary constraints, as well as improving the search engine’s safety from an IP perspective.
In light of the policy change and its limitations, enforcement strategies will not differ greatly. The inclusion of the sale of counterfeit is by no means a silver bullet to removing infringing content:
- Test Purchases: For websites selling counterfeit goods, test purchases continue to be the standard method for achieving a long-term result. Aside from the further evidence collected, a test purchase has the potential to uncover further details of an infringer, opening doors for criminal and civil actions. Gathering intelligence may also reveal business links between websites operated by common entities, improving the efficiency of an enforcement strategy
Google’s tool may be used in conjunction with a test purchase to limit damage to the consumer, whilst preserving the ability to gather intelligence and evidence.
- Content is still live; As discussed, a successful report removes the URL from Google’s search results. Contact with registrars and hosting providers through data release requests must continue, as infringers commonly mask their details under GDPR. Obtaining access to registrant details may also assist in permanent removal of content.
- Silent on repeat infringers: Once a URL is removed, there exists the danger of the same infringing content to be re-uploaded under a different URL. Should no further action be taken by Google, brands may find themselves in a cat-and-mouse effort to remove infringing content, being a significant drain on resources. Brands require a stricter approach upon infringers that do not respect the policies of Google nor IP rights.
Intermediaries are not obliged to implement a system of general monitoring on their platforms at present. Google’s expanded policy on IP infringements is welcomed, although it is apparent that Google could do more to remove infringements – we will see what a third version brings. For now, Google’s enhanced search reporting platform is another string in the brand protection bow, but it is not a panacea.