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By LegalMatters Staff • A recent Google policy change provides a timely weapon in the long-running battle against online counterfeiters, says Toronto intellectual property lawyer John Simpson.
Last month, the search engine giant introduced an update to its guidelines which will allow users to report websites that sell or promote the sale of counterfeit goods. Google already has a policy for advertisements prohibiting the sale or promotion for sale of counterfeit goods.
The addition to the company’s legal complaint system comes at a time when the coronavirus crisis has led to a spike in the sale of online counterfeit goods, says Simpson, principal of IP and new media law boutique Shift Law Professional Corporation.
Relevant to the pandemic
“It is something very relevant to the pandemic right now. Sale of counterfeit goods online has been an issue for quite some time because it is so easy to operate clandestinely on the internet using third-party intermediaries such as search engines or even social media platforms to advertise, all the while staying relatively invisible,” he tells LegalMattersCanada.ca.
“Long before COVID-19 there was growing pressure on Google from various factions, including the courts, to do something about this. Now they’ve responded and it’s a step in the right direction.”
Simpson says the pandemic may have provided the impetus for the new Google policy.
“It has become a growing problem with counterfeit personal protection equipment and more generally, just the move to increased online retail with bricks and mortar stores either closing their doors permanently or being shuttered during the lockdown,” he says. “More and more people have been turning to the internet to provide products from retailers and this has presented a huge opportunity for counterfeiters. Google’s change is very timely.”
According to one online study, “up to 60% of product results returned by search engines are for websites and other online locations that offer products that are either counterfeit or otherwise infringe intellectual property.”
Numerous challenges
Simpson says protecting trademark owners presents numerous challenges.
“The legal community has been trying to think of ways to prevent or limit the practice of selling counterfeit goods without interfering unreasonably in the businesses of these third-party intermediaries such as Google, which quite fairly argues that it is just a neutral search engine,” he says. “Google says, ‘If you find someone infringing your rights, find out who it is and sue them. Leave us out of it unless you have a court order telling us to do something.’”
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“This really came to a head with a Supreme Court of Canada (SCC) ruling in 2017,” Simpson says. “It was an action where a trademark owner was going after a counterfeiter and the counterfeiter was using Google’s organic listings to rank very highly for listings of counterfeit goods.”
In Google Inc. v. Equustek Solutions Inc., et al., the SCC upheld a B.C. court ruling ordering Google to remove a company’s website from its global search results.
According to the Supreme Court summary “the plaintiffs sued their former distributors for unlawful appropriation of trade secrets, alleging that the distributors designed and sold counterfeit versions of their products. The plaintiffs obtained injunctions against the distributors, prohibiting them from carrying on any business online. When this proved ineffective, the plaintiffs sought a court order against Google, to prohibit it from displaying search results that included the distributors’ websites.”
‘Significant decision’
“It was a significant decision with the court saying Google had an obligation to deindex this repeat trademark infringer’s website,” Simpson says. “But it was a very expensive process to take it that far and not something that the average manufacturer or retailer can do to get an order against Google.”
He points out organizations such as Facebook and Amazon have markedly different approaches to trademark infringers.
A brand owner can complain to Facebook about another page and they “will effectively act as an administrative board in place of a court and review it internally.” If there is an issue, Facebook will take down the offending page.
Amazon has a brand registry that allows a brand owner to register their trademark with them and they “will then police your rights for you and block others from selling counterfeits of your goods,” Simpson explains.
With its policy update, Google will now remove or de-index certain URLs or domain names from organic searches where there’s been a complaint that it has been used to sell counterfeit goods.
While it’s a welcome change, Simpson says it is far from perfect.
‘Still pretty limited’
“It is still pretty limited because just removing the URL from the index can lead to this game of Whac-a-Mole, with the offending site reappearing under another URL – which can be easily done – and you have to start the complaints process again,” he says. “Of course, then the offender can bring the website back yet again with another URL because Google will not remove the website itself.”
Another limitation is the policy is limited to the sale of counterfeit goods, Simpson says.
“In other words, Google is not going to get involved with a website with a similar name selling similar services to yours,” he says. “There are many other forms of trademark infringement other than the sale of counterfeit goods and Google’s complaint process won’t apply to that.”
Simpson says he would prefer Google to have a system akin to Facebook.
“It would be more difficult, and Google would have all sorts of arguments as to why it shouldn’t be obliged to do that,” he says. “Again, they are just a neutral search engine. They want to provide the most access possible to information. They don’t want to have any sort of restrictive system. Particularly any system that is going to inadvertently delist legitimate sites.”
‘Not an accessory’
It is also important to note that Google is “not an accessory” to any potential infringement, Simpson says,
“They are not getting the direct benefit. They’re an innocent third party,” he says. “It’s not like they are a retail store selling counterfeit goods and claiming they didn’t know they were counterfeits. They are just a search engine.”
Simpson says it appears Google has “reached the point where they recognized that they have almost a public obligation to assist with this problem, particularly during the pandemic.”
“It’s a positive development and certainly owners of trademarks for goods should be aware of this because it’s another potential tool for protecting their rights without having to resort to the courts. Hopefully, this will slow the spread of online counterfeiting,” he says.
