Cross-Border Counterfeit Enforcement

Global Problem, Local Solutions: Over 85% of counterfeit goods seized at U.S. borders originate from China and Hong Kong. Effective international enforcement requires a multi-pronged strategy: platform takedowns in source countries, local trademark registrations, customs enforcement, and strategic use of U.S. remedies against importers rather than overseas manufacturers.

International Enforcement Strategies

Strategy Target Effectiveness
Platform Takedowns (Alibaba, DHgate) Overseas online sellers High - direct removal, seller penalties
CBP Border Enforcement Imports at U.S. ports High - stops goods before distribution
ITC Section 337 All infringing imports Very High - general exclusion orders
Local Trademark Filing Foreign manufacturers Medium - enables local enforcement
Administrative Raids (China) Manufacturers, warehouses Medium - requires local registration, counsel
U.S. Litigation vs. Foreign Party Foreign sellers with U.S. contacts Low - jurisdiction and collection challenges

Country-Specific Considerations

China

Source of 87%+ of seized counterfeits. First-to-file trademark system.

  • Register trademarks in China FIRST
  • Use Alibaba IPP for takedowns
  • Consider administrative raids via AIC
  • Chinese customs can seize exports

Hong Kong

Major transshipment hub. Separate legal system from mainland China.

  • Separate trademark registration required
  • Strong IP enforcement courts
  • Customs cooperation available
  • Anton Piller orders (search orders)

European Union

EUTM covers all 27 member states. Strong enforcement framework.

  • EU Customs Regulation for border seizures
  • EUIPO provides unified registration
  • National courts can issue pan-EU injunctions
  • Criminal penalties in serious cases

India

Growing manufacturing hub. Common law trademark system.

  • Register trademarks with Controller General
  • Customs recordation available
  • Police complaints for criminal enforcement
  • John Doe orders against unknown infringers

Alibaba and Chinese Platform Enforcement

Chinese Registration Critical: While Alibaba will accept takedown requests based on U.S. trademark registrations, having a Chinese trademark registration significantly strengthens your position, expedites takedowns, and enables additional enforcement tools like administrative raids and Chinese customs recordation.

Alibaba IP Protection Platform (IPP)

Feature Details
Registration Create account at ipp.alibabagroup.com; verify identity and IP ownership
Trademark Submission Upload registration certificates (Chinese preferred, U.S. accepted)
Good Faith Takedowns For clear counterfeits - listings removed within 24 hours
Regular Complaints For complex cases - Alibaba reviews within 3 business days
Proactive Monitoring Alibaba scans for listings matching your registered marks
Seller Penalties Points system - accumulated violations lead to account termination

Other Chinese Platforms

Jurisdiction Over Foreign Counterfeiters

Establishing U.S. Jurisdiction

To sue a foreign counterfeiter in U.S. courts, you must establish personal jurisdiction. Courts analyze:

Factor Analysis Examples
Direct Sales to U.S. Strong factor if foreign party ships directly to U.S. customers Website sales, Amazon FBA shipments, eBay listings with U.S. shipping
Interactive Website Website targeting U.S. buyers (English, USD pricing, U.S. shipping options) Zipser v. Zipser (targeting analysis)
U.S. Payment Processing Use of U.S. banks, PayPal, or payment processors Financial contacts support jurisdiction
Stream of Commerce Knowingly placing goods into distribution channels reaching U.S. Selling to U.S. distributors, using U.S. fulfillment
Agents in U.S. U.S. subsidiaries, representatives, or fulfillment partners Amazon warehouse storage, U.S. drop-shippers
Collection Challenges: Even if you obtain a U.S. judgment against a foreign counterfeiter, collecting is extremely difficult. China does not enforce U.S. judgments. Focus resources on border enforcement and platform takedowns rather than pursuing foreign defendants directly unless they have U.S. assets.

Sample International Demand Letters

Sample 1: Demand to Chinese Manufacturer/Seller
[COMPANY LETTERHEAD] [Date] VIA EMAIL: [seller email] VIA ALIBABA MESSAGE [Company Name] [Address in China] Re: Cease Manufacturing and Sale of Counterfeit [BRAND NAME] Products Demand for Immediate Cessation IMPORTANT LEGAL NOTICE - PLEASE READ CAREFULLY This firm represents [Brand Owner], a [U.S./Delaware] corporation that owns: - U.S. Trademark Registration No. [X,XXX,XXX] for the [BRAND NAME] mark - China Trademark Registration No. [XXXXXXXX] for the [BRAND NAME] mark - [Additional registrations in relevant jurisdictions] [Brand Owner] is the exclusive manufacturer of genuine [BRAND NAME] products worldwide. COUNTERFEITING ACTIVITIES We have identified your company as a manufacturer and/or seller of counterfeit [BRAND NAME] products through the following evidence: 1. ALIBABA LISTINGS: Your Alibaba storefront (Seller ID: [XXXXXXXXXX]) at [URL] advertises "[BRAND NAME]" products at prices far below genuine wholesale cost; 2. TEST PURCHASE: On [Date], we purchased [Product] from your storefront (Order #[XXXXX]). Our laboratory confirmed this product is COUNTERFEIT based on: - [Counterfeit indicator 1] - [Counterfeit indicator 2] - [Counterfeit indicator 3] 3. MANUFACTURING EVIDENCE: [If applicable: Your company name appears on product packaging / shipping labels / factory information indicates your facility] LEGAL VIOLATIONS Your manufacture and sale of counterfeit [BRAND NAME] products violates: UNITED STATES LAW: - Trademark Counterfeiting Act (18 U.S.C. Section 2320) - federal criminal offense - Lanham Act Section 32 (15 U.S.C. Section 1114) - civil trademark infringement CHINA LAW: - PRC Trademark Law Articles 57, 67 - trademark infringement and criminal liability - Anti-Unfair Competition Law - production and sale of counterfeit goods International conventions including the Paris Convention and TRIPS Agreement also prohibit your activities. ENFORCEMENT ACTIONS UNDERWAY [Brand Owner] has initiated the following enforcement actions: 1. Filed trademark infringement complaint with Alibaba IP Protection Platform - your listings will be removed and your seller account penalized; 2. Recorded [BRAND NAME] trademark with U.S. Customs and Border Protection - all shipments of counterfeit [BRAND NAME] products will be SEIZED at U.S. ports; 3. Filed complaint with [relevant Chinese administrative authority / AIC] for administrative enforcement; 4. [If applicable: Filed Section 337 complaint with U.S. International Trade Commission seeking GENERAL EXCLUSION ORDER to block ALL counterfeit [BRAND NAME] imports]. DEMAND You must IMMEDIATELY AND PERMANENTLY: 1. CEASE all manufacture of products bearing the [BRAND NAME] mark or any confusingly similar mark; 2. CEASE all sale, offer for sale, distribution, and export of [BRAND NAME] products; 3. DESTROY all counterfeit [BRAND NAME] products, packaging, molds, and manufacturing equipment; 4. REMOVE all [BRAND NAME] listings from Alibaba, DHgate, and all other platforms; 5. PROVIDE within fourteen (14) days: - Customers to whom you have sold [BRAND NAME] products (names, quantities, countries) - Source of any molds, dies, or templates used to manufacture counterfeit goods - Total quantities manufactured and sold CONSEQUENCES OF CONTINUED INFRINGEMENT If you continue your counterfeiting activities: - All shipments to the United States will be seized and destroyed by U.S. Customs - Your Alibaba and other platform accounts will be terminated - [Brand Owner] will pursue criminal complaints with Chinese Public Security Bureau - Administrative fines and penalties will be sought through Chinese authorities - [Brand Owner] will seek statutory damages up to $2,000,000 per counterfeit mark in U.S. litigation Your cooperation in ceasing these activities may mitigate enforcement consequences. Respond to this demand within ten (10) days. [Attorney Name] [Law Firm] Counsel for [Brand Owner] cc: Alibaba IP Protection Platform U.S. Customs and Border Protection
Sample 2: Alibaba Takedown Complaint Letter
ALIBABA IP PROTECTION PLATFORM COMPLAINT COMPLAINANT INFORMATION Rights Holder: [Brand Owner, Inc.] Contact Person: [Name] Email: [email] Phone: [phone] INTELLECTUAL PROPERTY RIGHTS Trademark: [BRAND NAME] U.S. Registration No.: [X,XXX,XXX] Registration Date: [Date] China Registration No.: [XXXXXXXX] (if applicable) INFRINGING LISTINGS Seller Name: [Seller Store Name] Seller ID: [Member ID] Product URLs: 1. [Full Alibaba listing URL] 2. [Full Alibaba listing URL] 3. [Additional URLs] COMPLAINT TYPE: Trademark Counterfeiting / Good Faith Takedown EVIDENCE OF INFRINGEMENT The listed products are COUNTERFEIT [BRAND NAME] products. Evidence includes: 1. PRICE ANALYSIS: The seller offers "[BRAND NAME] [Product]" at $[XX] per unit. Genuine [BRAND NAME] [Product] has a wholesale price of $[XX] - the seller's price is [XX]% below legitimate cost, impossible for genuine goods. 2. UNAUTHORIZED SELLER: [Seller Name] is NOT an authorized [BRAND NAME] distributor. [Brand Owner] has never authorized this seller to manufacture, distribute, or sell [BRAND NAME] products. 3. TEST PURCHASE: [Brand Owner] purchased samples from this seller on [Date], Order #[XXXXX]. Our quality assurance team confirmed the products are counterfeit based on: - [Authentication failure 1 - e.g., incorrect hologram] - [Authentication failure 2 - e.g., wrong packaging materials] - [Authentication failure 3 - e.g., product quality deficiencies] 4. LISTING CONTENT: The seller has copied images from [Brand Owner]'s official marketing materials. The listing falsely claims the products are "genuine" and "authentic." DECLARATION I declare under penalty of perjury that: 1. I am authorized to act on behalf of [Brand Owner], the owner of the [BRAND NAME] trademark; 2. The information in this complaint is accurate; 3. The reported listings offer counterfeit goods infringing [Brand Owner]'s trademark rights; 4. I have a good faith belief that use of the [BRAND NAME] mark in the reported listings is not authorized by [Brand Owner]. REQUEST Pursuant to Alibaba's IP Protection policies, we request: 1. IMMEDIATE REMOVAL of all reported listings; 2. SELLER PENALTIES per Alibaba's repeat infringer policy; 3. NOTIFICATION to [Brand Owner] of any new [BRAND NAME] listings by this seller; 4. DISCLOSURE of seller identity information if available under Alibaba policies. Submitted by: [Name] [Title] [Brand Owner, Inc.] Date: [Date] ATTACHMENTS: - U.S. Trademark Registration Certificate - China Trademark Registration Certificate (if applicable) - Test Purchase Invoice and Photos - Authentication Report
Sample 3: International Distributor Demand
[COMPANY LETTERHEAD] [Date] VIA EMAIL AND INTERNATIONAL COURIER [Foreign Distributor Name] [Address] [Country] Re: Unauthorized Distribution of [BRAND NAME] Products - Demand for Information and Cessation Dear [Recipient]: This firm represents [Brand Owner], the owner of the [BRAND NAME] trademark in [Country] (Registration No. [XXXXXX]), the United States (Registration No. [X,XXX,XXX]), and [XX] other jurisdictions worldwide. UNAUTHORIZED DISTRIBUTION [Brand Owner] has confirmed that [Foreign Distributor] is distributing products bearing the [BRAND NAME] mark without authorization. We have traced [BRAND NAME] products appearing in [Location/Market] to your company through [method of identification - packaging codes, customer reports, invoice trail, etc.]. You are NOT and have never been an authorized distributor of [BRAND NAME] products for [Country/Region]. SOURCE OF PRODUCTS We are investigating the source of the [BRAND NAME] products in your distribution chain. The products you are distributing are either: 1. COUNTERFEIT - manufactured by an unauthorized factory without [Brand Owner]'s authorization, OR 2. GRAY MARKET - genuine products diverted from an authorized channel in another territory, materially different from products authorized for [Country] sale, OR 3. STOLEN/DIVERTED - genuine products obtained through theft or breach of authorized distributor agreements. In any case, your distribution infringes [Brand Owner]'s trademark rights under [Country] trademark law and international IP conventions. DEMAND FOR INFORMATION Within fourteen (14) days, you must provide: 1. Your source for all [BRAND NAME] products - supplier name, address, and contact information; 2. Quantities of [BRAND NAME] products purchased, sold, and currently in inventory; 3. Customers to whom you have sold [BRAND NAME] products; 4. Copies of invoices and shipping documentation for [BRAND NAME] products; 5. Any documentation regarding the authenticity or authorized status of the products. DEMAND FOR CESSATION You must IMMEDIATELY CEASE: - All purchase, importation, and stocking of [BRAND NAME] products; - All sale, distribution, and offering for sale of [BRAND NAME] products; - All advertising and marketing referencing the [BRAND NAME] mark. ENFORCEMENT If you fail to comply with these demands, [Brand Owner] will: 1. File trademark infringement proceedings in [Country] courts seeking injunctive relief and damages; 2. Report your activities to [Country] customs authorities for seizure of infringing goods; 3. Notify your customers that you are distributing unauthorized and potentially counterfeit products; 4. Coordinate enforcement with U.S. authorities to block any exports to the United States; 5. Pursue criminal complaints where applicable under [Country] law. [Brand Owner] takes its trademark rights seriously and enforces them worldwide. Your cooperation in providing source information may mitigate enforcement consequences and assist in identifying the actual counterfeiters. Contact the undersigned immediately to discuss resolution. Sincerely, [Attorney Name] [Law Firm] Counsel for [Brand Owner] cc: [Local counsel in Country] [Brand Owner] Global Brand Protection

Frequently Asked Questions

Yes, absolutely. China is a "first-to-file" jurisdiction, meaning whoever registers a mark first generally owns it - regardless of who used it first elsewhere. Without Chinese registration: (1) counterfeiters can register YOUR mark and potentially sue YOU, (2) you can't record with Chinese customs, (3) Alibaba takedowns are more difficult, (4) you have no basis for administrative enforcement. Chinese registration costs a few hundred dollars and provides critical protection for any brand with counterfeiting concerns.
Reasonably effective for individual listings, but counterfeiters adapt quickly. Alibaba removes listings within 1-3 days for clear infringement. However, sellers often create new accounts, modify listings slightly, or move to other platforms. Effective long-term enforcement requires: (1) continuous monitoring, (2) escalating complaints to get seller accounts terminated, (3) pursuing the source through supplier information requests, and (4) complementing takedowns with border enforcement to catch goods when shipped. Automated monitoring services can help track reappearing sellers.
Administrative raids are enforcement actions conducted by China's Administration for Market Regulation (AMR, formerly AIC) against counterfeit manufacturers and sellers. With a Chinese trademark registration and evidence of infringement, you can file a complaint requesting AMR investigation. If successful, AMR can: raid facilities, seize counterfeit goods and equipment, impose fines, and refer serious cases for criminal prosecution. Raids are cost-effective compared to litigation but require local counsel to navigate the process. Success rates vary by region and the strength of evidence provided.
Yes, China's IP courts have become more effective. China established specialized IP courts in Beijing, Shanghai, and Guangzhou, plus IP tribunals in other cities. Chinese courts can: issue preliminary injunctions (behavior preservation orders), award damages including statutory damages up to RMB 5 million for serious infringement, order destruction of counterfeit goods, and refer cases for criminal prosecution. Recovery rates and enforcement have improved significantly, though challenges remain. Local counsel is essential for Chinese litigation.
The U.S. Trade Representative publishes an annual "Notorious Markets" list identifying online and physical marketplaces known for counterfeiting and piracy. While not legally binding, inclusion on the list creates reputational damage and diplomatic pressure. Platforms like Alibaba have invested heavily in IP protection partly to avoid or be removed from the list. Brand owners can submit comments during USTR's annual review identifying problematic markets. The list has helped pressure platforms to improve enforcement and cooperate with brand owners.
Several investigation methods: (1) Test purchases - order from suspected sellers and examine shipping labels, invoices, and packaging for manufacturer information; (2) Platform requests - some platforms will share supplier information in response to IP complaints; (3) Private investigators - firms in China specialize in identifying counterfeit factories; (4) Supply chain analysis - track product codes, lot numbers, and packaging characteristics; (5) CBP seizure data - request importer and shipper information from customs seizures; (6) Civil litigation discovery - subpoena seller records in U.S. lawsuits. Chinese investigators are particularly important for identifying mainland manufacturing sources.