On May 31st, FERRANTE IP Partner, Felice MELI, delivered a timely speech to delegates at the 7th EU-China conference on IPR protection online and innovation, held in Shanghai. It was co-hosted by IP Key China and CAASA. The conference addressed topical matters such as the responsibilities of online platforms in IP protection and cross-border internet IP enforcement. Discussions considered the problems presented by generative AI and e-commerce anonymity – all topics of increasing relevance and concern to practitioners and subject experts in the area.

Felice's speech focused on the challenges of enforcement, and he offered both a case review and practical tips for peers working in the field. He set out the landscape of online platforms locally, covering both major e-commerce entities and popular social media platforms in China, as well as points of intersection and potential dispute.

Felice addressed the specific question: Does setting another party's trademark as a keyword constitute infringement? He cited and analysed the recent verdict in Shanghai Fubao Health Technology Co., Ltd. v. Xiangyang Ai Ma Mi Technology Co., Ltd. (Hubei Higher People's Court).

Here the court found that setting a trademark as a search keyword and putting the trademark in descriptive use may not cause confusion and thus does not constitute infringement. Other concerns raised in the speech included enforcement against live-streaming sites; test buy and identification report requirements in support of a counterfeit complaint; and non-straightforward and complex case scenarios.

Felice pointed out that in these specific instances, platforms may actually benefit from delaying removal by keeping the traffic and receiving promotion fees from the infringer after receiving the take-down request. In practical terms, Felice argued for a strategic approach to IPR protection, both online and offline, as well as highlighting the deterrent effect on key infringers of creating well-built cases.

The involvement of IP Key China points to the importance of consolidating links and co-operations between China and the EU jurisdictions. Aside from his role at Ferrante, Felice is linked to the EU IP helpdesk as a local expert in the China market. With his experience in both civil and common law jurisdictions, Felice has, through the years, built extensive expertise assisting enterprises from a wide range of industries in assessing and enhancing their intellectual property rights portfolios, providing strategies on registration and prosecution actions in China and south-east Asia.

Felice's speech was extremely well-received among the delegates, generating discussion and substantial food for thought.