Annex A. Summary of key provisions of the June 2016 EU memorandum of understanding on the Sale of Counterfeit Goods on the Internet

1. General principles and definitions

• General principle

  • The primary responsibility for the protection and enforcement of IPR remains with the respective rights owners and that it is the primary responsibility of Internet platforms to enable a safe online environment for consumers; it is the parties' goal to collaborate in the fight against the sale of counterfeit goods over the Internet.

• Moratorium on litigation

  • Signatories agreed not to initiate any new litigation against each other concerning matters covered by this MoU, during an initial assessment period of one year.

2. Notice and takedown procedures (NTD)

Rights owners should be able to notify platforms about sellers of counterfeit goods, and platforms, in turn, commit to take this information into consideration as part of their pro-active and preventive measures.

• Reporting procedures

  • Internet Platforms commit to offer efficient and effective NTD, which should be accessible electronically via the websites of the platforms.

  • While notifications may be offer-based, platforms commit to allow notifications to contain multiple offers of the same seller, if such notifications are sufficiently documented.

• Rights owners' use of NTD systems

  • Rights owners commit to use the NTD offered by platforms for notifications of offers of counterfeit goods and commit to join rights protection programs of platforms (if such programs exist). Rights owners commit to take commercially reasonable and available steps to ensure that they notify platforms of the presence of offers of counterfeit goods, in an efficient and comprehensive manner.

  • In cases where it is obvious that notifications are made without exercising appropriate care, rights owners may be denied or may have only restricted access to NTD.

  • Upon a request by a platform, rights owners commit to pay to the platform the listing fee and the commission fee of any offers that were deleted because of a notification(s) of multiple offers made without exercising appropriate care.

• Internet platforms' response

  • Internet platforms commit to deal with notifications in an efficient and comprehensive manner, and to take deterrent measures in relation to sellers of counterfeit goods. In cases of doubt, or where the platform does not have the necessary information to permit the identification of a notified offer, the platform may request additional information from the notifying party.

• Feedback on NTD

  • Internet platforms and rights owners commit to provide each other with feedback on their notifications. Relevant sellers should also be informed where an offer has been taken down, including the underlying reason, and should be provided with the means to respond.

3. Pro-active and preventive measures

• Measures by rights owners

  • Rights owners commit to take steps to effectively fight counterfeiting at its source and to actively monitor platforms with the aim of identifying and notifying offers of counterfeit goods to platforms.

  • Rights owners commit to take steps to provide and update general information to Internet on specific products that present substantial and pervasive counterfeiting problems on platforms.

  • Rights Owners commit to provide to platforms at their request a list of keywords commonly used by sellers for the purpose of offering for sale counterfeit goods and to assist platforms, as appropriate, with their proactive and preventive measures.

• Measures by Internet platforms

  • Platforms commit to take steps to request seller contact information and to verify this information.

  • In pursuing their pro-active and preventive measures, platforms commit to take into consideration information provided by rights owners that is not exclusively related to specific offers.

  • Platforms commit to take measures to identify and/or prevent pro-actively the sale of counterfeit goods, and to prevent such goods being offered or sold through their services.

4. Co-operation, including sharing of information

• By Internet platforms

  • Platforms commit to adopt, publish and enforce IPR policies.

  • To facilitate legal actions and investigations into the sale of counterfeit goods, platforms commit to disclose, upon request and where possible, relevant information on alleged infringers.

• By rights owners

  • To, or in connection with, legal proceedings or investigations, rights owners' requests for the disclosure of the identity and contact details of alleged infringers should be made in good faith.

5. Consumer confidence, information and protection

• Internet platforms and rights owners commit to provide appropriate means to consumers to identify and report offers of counterfeit goods, prior to, or after purchase, to platforms and to rights owners.

• Platforms commit to assist consumers who unintentionally purchase counterfeit goods on their websites.

6. Repeat infringers

• Internet platforms’ policies

  • Internet platforms and rights owners commit to cooperate in the detection of repeat infringers.

  • Internet platforms commit to implement and enforce deterrent repeat infringer policies. These policies should include the temporary or permanent suspension or restriction of accounts or sellers. Platforms commit to use their best efforts to prevent re-registration of permanently suspended sellers.

  • Platforms commit to share, upon request and where possible, information on suspension of repeat infringers on an individual and case-by-case basis with the rights owners concerned.

• Rights owners’ monitoring

  • Rights owners commit, where possible, to provide information to platforms concerning those sellers they believe to be repeat infringers and commit to provide feedback to platforms on the effectiveness of platforms' policies regarding repeat infringers.

7. Co-operation with customs, border authorities and law enforcement authorities

• Rights owners and platforms commit to cooperate and assist law enforcement authorities, in the investigation of the sale of counterfeit goods.

8. Assessment and follow-up

• Assessment period

  • The MoU was subject to an initial assessment period of twelve months, during which the signatories were to meet quarterly under the auspices of the European Commission, to analyse the progress, implementation and functioning of this MoU based on agreed Key Performance Indicators (KPIs).

  • The signatories, together with the European Commission, were to meet at the end of the assessment period to evaluate, based on a report prepared by the European Commission upon consultation of the signatories, the effectiveness of the MoU, to discuss the continuation of the MoU and, if appropriate, to discuss and propose appropriate follow-up actions.

• Review

  • After the initial assessment period, signatories would consider prolonging the MoU for an indefinite period.

  • Each year, the European Commission would consider preparing a report, in consultation of the signatories, on the functioning and application of this MoU.

  • The signatories of the MoU were to meet, under the auspices of the European Commission, biannually or more frequently if serious problems arose, to i) consider the functioning or the application of the MoU, ii) review the MoU and iii) take further steps, if necessary.

• Signatories

  • Each signatory may at any time terminate its participation in the MoU by notification to the other signatories and the European Commission.

  • Each signatory may at any time request the European Commission to convene a plenary meeting of all or specific signatories, if it feels that a signatory is not respecting the principles established by this MoU. Signatories, after consultation with the European Commission, may decide to ask such a signatory to withdraw from the MoU.