Liability of marketplaces for infringement of intellectual property rights

The experts note that in the United States, China and the European Union, online retail sales are beginning to displace sales in traditional retail. Thus, according to the information and analytical agency INFOLine, in 2024, the Russian online trading market grew by 37% to 11.3 trillion rubles, which amounted to more than 20% of all retail sales in the country. In addition, according to analysts, in 2025, online sales will grow by about 32% to 14.9 trillion rubles.

At the same time, the largest players in the domestic e-commerce market are marketplaces - online platforms such as Wildberries, Ozon, Yandex Market, Lamoda, etc., which provide sellers of various goods with the opportunity not only to place offers for their sale on their electronic platforms, but also provide the technical ability to promote and sell them to end consumers.

Who can be charged compensation for counterfeit goods on the marketplace

Unfortunately, in addition to the obvious advantages of interacting with marketplaces, many manufacturers and legal sellers of goods are faced with the fact that fake goods are often sold through online platforms, which leads to financial and reputational losses.

Obviously, the easiest way to stop a violation and remove information about counterfeit goods from an online platform is possible only with the direct participation of the marketplace itself.

However, practice shows that due to various circumstances, marketplaces do not always respond promptly to the requirements of copyright holders, and therefore the latter continue to suffer financial and reputational losses. In such situations, the copyright holder can demand their compensation not only from the infringer - the seller of counterfeit goods, but also from the marketplace.

Under what conditions is the marketplace responsible for counterfeit goods?

From the point of view of law, large marketplaces, by the nature of their activities, are usually recognized as information intermediaries, i.e. persons who provide other persons (sellers) with the technical ability to post offers for the sale of goods on their platform on the Internet, but do not sell the goods themselves, i.e. do not conclude purchase and sale transactions on behalf of sellers.

The law does not exempt information intermediaries from liability for infringement of intellectual property rights on the Internet – they bear it on the general grounds provided for by the Civil Code of the Russian Federation. However, they can be held liable only if they are guilty and taking into account the features established by Article 1253.1 of the Civil Code of the Russian Federation. If the marketplace:

• knew or should have known that information about counterfeit goods, in particular, an offer for sale, was posted on his Internet platform;
• failed to take the necessary and sufficient measures in a timely manner to stop the infringement of intellectual property rights, in particular, did not remove offers to sell counterfeit goods after receiving a written statement from the copyright holder about the infringement of intellectual property rights.

The recognition of a specific person (the marketplace) as an information intermediary is established by the court, which considers the dispute on the merits. However, even if the marketplace, taking into account the nature of its activities, is not recognized as an information intermediary, it can still be held financially liable jointly and severally with the direct infringer, if it is proved that the marketplace knew or should have known about the violation of the exclusive right of the copyright holder.

Usually, the marketplace is considered to be aware of the violation from the moment it receives a corresponding notification from the copyright holder or a person authorized by him. At the same time, most marketplaces use a special mechanism for exchanging information in their activities, for example, by filling out an online form or sending an application through a personal account. However, the marketplace will be considered notified of the violation, even if you do not use its mechanism, but, for example, send an appeal by mail to the legal address of the marketplace.

It is important to note that the demand to remove an offer to sell counterfeit goods can be filed regardless of the fault of the marketplace.

What to do if the marketplace does not remove information about counterfeit goods

If the marketplace behaves passively and does not remove pages with counterfeit goods from the Internet platform, then the desired result can be achieved through the court. Simultaneously with the request to delete information to the marketplace, you can file a claim for compensation (losses) for violation of intellectual property rights. As noted above, this requires proving that the marketplace was aware of the violation, but did not take the necessary and sufficient measures to stop it.

So, initially, it is necessary to record the fact of violation, i.e., the presence on the website (in an electronic application) of the marketplace of pages that reflect the presence of counterfeit goods and post offers for its sale.

To do this, you can either contact a notary, who will inspect and record the fact of violation in the appropriate protocol, or take screenshots of Internet pages yourself. In case of self-recording, it should be taken into account that the court will accept a printout of such a screenshot as evidence only if it reflects the date of making the screenshot, the address of the information on the Internet (network address, domain name, IP address, etc.), as well as the signature of the copyright holder (his representative) on the certification of the printout.

In addition, if the appeal to the marketplace with a request to remove information about counterfeit goods was submitted in electronic form (for example, through a personal account, by e-mail, etc.), then the very fact of the appeal must be recorded in the same way.

As a general rule, you can file a claim with the court for damages or compensation only after the marketplace has been presented with a corresponding claim, if it fully or partially refuses to satisfy it or does not respond to the claim within thirty days from the date of its sending (Clause 5.1 of Article 1252 of the Civil Code of the Russian Federation).

In the claim, it is necessary to indicate the amount of the claim. At the same time, if you demand compensation for damages, then you need to attach their calculation, and if you pay compensation, then proceed from the fact that its amount must be proportionate to the violation, otherwise the court has the right to recover it in a smaller amount

If you are faced with such a situation and find it difficult to independently determine the proportionality of compensation and (or) prepare documents for going to court, we recommend that you seek help from professionals.