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How and why search engines must take responsibility for tackling counterfeiters

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When Google is told that it is indexing and returning search results for a webpage or website that is selling counterfeit products, it will take no action.

  • Google won’t de-index a URL that offers counterfeit products
  • Google won’t de-index a website dedicated to selling counterfeits

Google’s refusal to act is putting consumers at risk; products such as counterfeit brake pads, fake antibiotics, and imitation baby teethers can all lead to potentially deadly consequences when used.

Significant harm is also dealt to the companies targeted, who invest time and significant financial resource to create and market their brands.

 

Google’s refusal is out of step with its own practices when dealing with other types of intellectual property and out of step with other tech operators:

  • Google will de-index a URL when it is told that the page infringes copyright. Google removes millions of URLs on this basis;
  • However, Google won’t act when it is told that a URL is dedicated to selling counterfeits – where trademark rights are infringed;
  • Other tech giants like Facebook, Instagram, eBay and Amazon will act when they are told that someone is using their service to infringe copyright and/ or trademarks by selling counterfeits.

 

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It’s time for Google and other search engines to step up

Search Engine white paper sectors researched: pharmaceuticals, automotive, children's products, safety equipment and white goods.

This White Paper reflects Incopro’s research into counterfeiting practices in five sectors:

1. Pharmaceuticals – focusing on antibiotics

2. Automotive – focusing on airbags

3. Children’s products – focusing on teethers for babies

4. White goods – concentrating on water filters

5. Safety equipment – with cycle helmets as the focus

Key Findings

  • 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.
  • Some 47.3% of traffic to these websites comes from consumers using keywords that specify a brand or particular product. This is in line with research undertaken by IFOP for UNIFAB in 2019.
  • 26% of the potentially harmful sites in the five researched sectors appear within the first three search results; those results appearing in the top spots were more likely to have the brand name in the domain name itself. This is particularly worrying given a 2017 study by Optify found that the first result shown in a search engine will benefit from 44.64% of all click-throughs.

Counterfeits damage brand value

In addition, our research identified serious problems in each of the five sectors that we studied. We found:

In the safety equipment sector, Incopro observed websites acting as directories for marketplaces like Aliexpress together with wholesale Chinese sites selling cheap cycle helmets that are counterfeit.

In pharmaceuticals, 6 in 10 of Google’s first-page search results for a branded antibiotic were for suspected unlawful sites.

In automotive, the seventh-placed website in Yandex’s search results for the term “airbag sale” was selling counterfeits; this website generates 61.24% of its traffic from organic search.

In the children’s products category, 3 in 9 search results for a brand name baby teether featured potentially harmful products that misuse the trademark.

In the white goods sector, a search for refrigerator filters repeatedly directed consumers towards a website selling counterfeit goods. The site listed four well-known brands in its page title, causing deliberate consumer confusion while helping it to appear in search results for these brands.

Search engines will not tackle these rogue results

Google rely on the fact that the law currently differentiates between platforms that host information and search engines that do not.

Hosting platforms such as Facebook, Amazon and eBay are protected from any liability for damages for IP infringement committed on their platforms until they are notified about the infringing item or listing.

If a platform is notified of a fake and fails to take action, the platform can be sued for damages by the rights owner affected by the counterfeit listing. Most hosting platforms, therefore, take action quickly to remove such listings.

By contrast, search engines are not typically understood to be hosting platforms. They have typically taken the view that they do not need to take any action when they are told about a trademark infringing website indexed in their search results. Rights owners can notify search engines of counterfeit listings in their indices but no action will be taken.

Google is on record in this regard. In recent correspondence with Incopro, it said:
“Google does not at this time de-index URLs or websites from its Web Search index on trademark grounds upon request”.

 

Incopro's recommendations for a new approach

Scalable court-sanctioned approach

For now, a scalable court-sanctioned approach is undermined by the search engines. They will not remove indexed search results when they have been notified that these link to a counterfeit product or website. Instead, they require the rights holder to bring legal action against the counterfeit website to secure an order that covers index removal order. This process is slow, costly and is not scalable for the vast number of brands and consumers affected. Search engines actively oppose applications for orders that are more scalable and that focus on requiring Google to act directly.

In many jurisdictions, case law is developing that may ultimately present a liability challenge to search engines. If the law starts to hold search engines liable for damages where they knowingly point to counterfeit selling websites, they will have no choice but to act.

Established legal precedent

There is a well established legal principle that applies to all internet platforms, including search engines, that could require Google to act even if it is not liable. We suggest search engines should embrace this principle and work with rights owners to demonstrate their willingness to act.

Already, a series of precedent-setting cases in Canada, the United Kingdom, and France have established that the courts are able to require search engines to remove a website or counterfeit listing regardless of their direct liability.

Time for Google to step up

Google shows no sign of reforming its practices. In a recent letter to Incopro, the search engine promised only “to evaluate court orders issued against third parties”. It warned it would continue to “seek relief from orders against it”.

We believe it is time for search engines to change their mindset and to work with rights holders for the benefit of the online consumer. This would mean building processes that embrace the emerging legal basis that exists for securing delisting remedies from the courts – ensuring that the process for tackling counterfeits and other infringements of is scalable and effective.

We challenge search engines to cooperate with rights holders and companies such as Incopro to build a scalable process that delivers the removal of counterfeit locations at scale.

Webinar: How can Search Engines protect your IP?

Click here to download the webinar with Simon Baggs, CEO at Incopro; Helen Saunders, Chief Product & Customer Solutions Officer at Incopro; and Dan Glover, Technology Partner at McCarthy, discussing the steps brands can take to get more cooperation from search engines.

Download the recording