Do you think counterfeits of your products are being sold on TaoBao? Wondering what steps you should take? Here is a brief overview of your options.
 
First, conduct an online investigation to compare the suspected products on TaoBao to your own to determine if infringement is actually occurring. In the event infringement cannot be determined from a purely online review, purchasing the suspected counterfeit product may be necessary for further analysis. In order to ensure that any product purchased from the suspect can be utilized in legal action later, if you can, it is best to undergo a notarized purchase where a notary public has authenticated the purchase and source. Your local IP attorney should be able to help you accomplish this.
 
Once an analysis has been done, and you believe you have found infringing activity, you can take legal action via administrative or judicial action, and/or you can file a complaint through TaoBao requesting it to remove the infringing information and page. Determining whether administrative action, judicial action, or filing a complaint is best will be based on the specific circumstances. 

Some questions to ask yourself are:

    - What is your primary goal? Examples may be: Stopping the infringing sales quickly, recovering damages, etc.
    - What did your initial investigation uncover? Should further investigation be done?
    - How widespread is the infringement? Who is the counterfeiter?
    - How complex is this case?
    - What rights do you own in China?

While it is important to stop the counterfeits as soon as you can, it is also a good idea to have an understanding of the big picture. From there, a smart strategy to both stop known and deter future problems can be implemented.

If you have decided to lodge a complaint with TaoBao you will need to file a takedown request. In order to file a request through TaoBao, the following documents will be required:
 
    - Your Trademark/Patent Certificate;
    - Power of Attorney (for your local counsel);
    - Business License;
    - Legal Representative Certificate
 
From there, TaoBao will review the documents and let you know within 3 business days if the request meets all requirements.  Once the complaint is formally accepted, an application with detailed information about the infringing behavior must be submitted. TaoBao will then send a notice to the suspected counterfeiter, giving them the opportunity to provide information proving their products are from legitimate channels. Upon receipt of information from both sides, TaoBao will make a decision on whether the seller’s page should be removed. Generally, it takes about 10 business days to get a decision from TaoBao after the initial filing.

Besides a complaint directly to TaoBao, you can also look at either administrative or judicial action within China. For administrative action, there are several routes you can take depending on the circumstances: customs action, AIC raid, TRAB or CTMO action, etc. In judicial action, you will file a complaint to one of the provincial intermediate courts or one of the specialized IP Courts arguing infringement, unfair competition, or perhaps other options.

Administrative action is the most common enforcement route, as it is faster and costs less. Raids at the counterfeiters’ factory may be done through the local administration of industry and commerce, but there are potentially other authorities you can look to for assistance, such as Customs which allows you to stop counterfeit goods at Chinese ports. Once counterfeit shipments have been detained and confirmed, Customs can destroy them. On the other hand, judicial action offers more remedies - though going through the courts is more expensive and time consuming.

To determine whether judicial or administrative action is best, it helps to look at what you are trying to achieve. If monetary damages are most important, then going to court is the best option. However, if time is the most crucial factor, it may be advisable to go down the administrative route. Typically, time is of the essence in counterfeiting cases, which is why administrative actions are more popular. While civil action is more common, criminal charges can also be sought under certain circumstances, based on seriousness and the volume of counterfeiting.

Depending on the specific facts, other options may be considered when dealing with online counterfeiters such as cease & desist letters or negotiations with the infringer. While your first instinct may be to send a letter to the infringer to quickly stop the activity at low cost, letters should not be sent without careful consideration as doing so may merely tip off the infringer and allow them to better hide their activities in order to keep you from gathering evidence you need to take action against them. Negotiating with the counterfeiter to end the infringing activity may also be a smart strategy. The threat of legal action (eg, administrative penalties, litigation damages and criminal punishment) can motivate a party to cease its infringing behaviour and make certain concessions to ensure that this will not be an issue in future.

In sum, while China is often bemoaned as the capital of counterfeits, there are options to battle these any infringers you find on TaoBao (or other sites) but a carefully planned and multifaceted approach can and should be employed.