Protecting your brand, especially in the e-commerce space, is no easy matter – but, however difficult, no brand-owner can ignore it. Fortunately, doing so is a little simpler thanks to an initiative by the e-commerce behemoth, Amazon.
Contents:
- What is the Amazon Brand Registry?
- What are the benefits of Amazon Brand Registry?
- Do you need a trademark for Amazon Brand Registry?
- Will I be eligible for Amazon brand registry if my trade mark application is pending?
- How do I apply for a trade mark?
- How much does it cost to apply for a trade mark?
- How long will it take before my trade mark is approved?
- Enrolment onto the platform
- How can I check the status of my Amazon Brand Registry application?
- What do I do if my Amazon Brand Registry application is rejected?
- Summary
What is the Amazon Brand Registry?
Amazon set up its Brand Registry in 2017. At first, it required only that the applicant showed that it had the relevant domain name and provided photographs of branded products. Brand Registry 2.0 is a lot more rigorous and more useful for brand owners, who have now enrolled some 700,000 brands.
What are the benefits of Amazon Brand Registry?
The Brand Registry’s aim is to protect sellers’ trade marks and to fight rogue sellers who copy product listings and counterfeiters who sell fake products. Amazon says that they work with public authorities, exchanging information to ensure that counterfeit goods can be stopped at customs and prevent further violations. Users can detect and report infringements and inaccurate listings, strengthening the automatic systems Amazon have put in place to deal with these problems. The Brand Registry offers users a valuable range of brand promotion tools including analytics and expert SEO recommendations.
As far as protecting brands goes, users of the Brand Registry have access to its services via a user-friendly interface with an individual log-in. This enables them to make reports to Amazon with one click via their personal account.
The Brand Registry is not automatic and users must keep an eye on what is happening in the marketplace. They can search by product name, brand name, product identification number (ASIN, in the Amazon universe), keywords and photos. When some nefarious activity is detected, they can expect rapid assistance (claimed to be within 4 hours) from a team of over 300 Amazon people.
That’s what enrolment in the Brand Registry can bring you – so how do you get it?
Do you need a trademark for Amazon Brand Registry?
Yes! You must have an active registered trade mark in each country for which you wish to enrol in the Brand Registry. The trade mark for your brand must be in the form of a text-based mark (word mark) or an image-based mark with words, letters or numbers (design mark). It’s the words that the system is going to look at.
The trade mark must match the brand name, and must be placed on the products or their packaging.
Not just any registered trade mark will do. Currently, enrolment in the Brand Registry is only open to the owners of trade marks registered in the USA, Canada, Brazil, Mexico, Japan, India, Australia, Singapore, Turkey, France, Germany, Italy, Spain, the Netherlands, Sweden, Poland, Belgium, the United Kingdom, Saudi Arabia, Egypt, the UAE, and the European Union. Most brand owners with any international reach are likely to have one or more of these – but note that there are some oddities: for example, EU trade marks are included, but only a few national trade marks in EU Member States. Many countries often associated with counterfeit goods are missing, too.
Because you need a trade mark in each country in which you wish to enrol, you could need a substantial collection of trade marks (especially if your branding involves more than one trade mark, with house brands and product brands registered separately).
It’s already important to give careful consideration to where your trade mark should be registered. Broadly speaking, registration in countries or regions where you sell the product is most important: if you have the goods manufactured elsewhere, perhaps in the Far East, trade mark registrations might be useful but equally, you might consider them an unnecessary expense if the local market for the goods is small, and hard to enforce. Taking advantage of the Brand Registry adds a further consideration.
Will I be eligible for Amazon brand registry if my trade mark application is pending?
In some circumstances, Amazon brand registry will accept a pending trade mark registration in a subset of trade mark offices.
How do I apply for a trade mark?
The process of applying to register a trade mark is deceptively simple. The Intellectual Property Office website leads the applicant easily through the process, and the EU Intellectual Property Office is also easy to navigate. But there are many potential pitfalls, especially relating to the goods or services which must be specified in the application, and you would be well-advised to seek expert help. Harper James can guide you through the trade mark application process. We can advise you on what you should register as a trade mark – names, logos, the shape of your goods or their packaging, and exotic trade marks like sounds and even smells – and for what goods and services you should seek protection.
We will help you draft the application, ensuring that it reliably covers all the goods and services of interest to you, and file it on your behalf.
We will deal with any objections raised by the examiner.
If someone opposes your trade mark application we can defend your application.
How much does it cost to apply for a trade mark?
The official filing fees for the UK are £170 for one trade mark class and €850 for a single European trade mark class. Many trade marks are registered in more than one class, in which case additional fees will be charged.
These official fees do not include the cost of the trade mark registration service.
Trade mark registration lasts for ten years, but is renewable without a time limit. Renewal fees are much the same as application fees.
A trade mark that has not been used for five years may be liable to be revoked – making renewal a possible waste of money.
How long will it take before my trade mark is approved?
In the UK, the examiner who receives your application will normally accept it for publication within a few weeks. It’s when the application is published for the world to see that you need to worry about the time the process takes.
Third parties who think that your application conflicts with their rights – not only earlier registered trade marks, but possibly unregistered rights, copyright, or rights in designs – may oppose your application. Initially, the law gives them two months from the date of publication to do this, but if they wish they can issue a notice of threatened opposition and gain an additional month.
Oppositions can slow down the application dramatically, and may even stop it completely. Often opponents can be satisfied with an agreement to co-exist, placing limits on what you will do with your trade mark that put the opponent’s mind at rest, and if this becomes necessary we can prepare and negotiate an appropriate agreement for you.
Enrolment onto the platform
Getting your trade mark into the Brand Registry is quick and easy – the hardest part is getting the trade mark in the first place. You log in to your Amazon account (create one first, if you don’t already have one), then enter the brand name and the trade mark registration number. In the case of an international trade mark, it’s the local number that you must use, and sometimes this is different from the International registration number.
You must select the categories of goods for which you wish to have protection. This is not the same as the classification system used by trade mark registries, the Nice Classification, and is based on wide categories – the first in alphabetical order is “apparel”.
You will be asked about your relationship with Amazon (whether you sell direct to customers or to Amazon), where you sell products, whether you sell to distributors, and whether you license others to use your brand.
How can I check the status of my Amazon Brand Registry application?
You can search for and manage your current applications within your account.
To check the status you will need to log into your account and check the “case log”. This will tell you what progress has been made on your application. After submission, you can add further documents, such as certificates, to the application by clicking on the case ID and then uploading the documents.
What do I do if my Amazon Brand Registry application is rejected?
You can submit a new application if you have additional information or documentation that may now result in it being accepted. For example, a trade mark application may become registered that was previously objected to or you may have filed a new registration application for an amended mark.
You can submit a new brand registry application by logging into your account and clicking ‘copy’ on one of your previous brand applications. This will create a new identical application which you can then edit and amend before you re-submit it.
Summary
Amazon brand registry offers great benefits for Amazon sellers. You can easily and quickly report counterfeits that appear on the Amazon Marketplace, and take steps to stop them without the expense and delay of legal proceedings.
You need to have a trade mark, or an application for one, and we can help you apply for one in the UK or in the EU. Whatever sort of business you are setting up, protecting the name and brand by trade mark registration is an important step to take – Amazon’s Brand Registry gives you another reason to register.
