Amazon, like many giant e-commerce platforms, has a notoriously inflexible policy for handling trade mark infringement allegations. This works well for Amazon, whose own legal interests are protected if it can show that it has acted (or not acted) according to a preset formula. But this automated approach to trade mark infringement allegations often protects Amazon at the expense of business owners, whose survival is dependent on having access to the Amazon marketplace.
If you are a business owner who is struggling to reinstate your product listing due to a takedown notice, if Amazon is refusing to act on your justified complaints, or if an infringing item has been wrongly restored to the Amazon platform despite your notices, we can help.
Our trade mark lawyers are experienced in helping frustrated business owners overturn wrongful takedown notices and obtain correct ones - read our Amazon sellers trade mark guide below to learn more.
Contents:
- What does Amazon’s trade mark infringement policy say?
- How can Amazon Brand Registry help with takedown notices?
- What information is needed to issue a takedown notice?
- What to do if Amazon will not respond to your businesses’ takedown requests or if an infringing listing is reinstated
- How quickly will Amazon act on a takedown notice?
- Practical steps Amazon businesses can take to avoid trade mark infringement
- What to do if you receive a warning that your listing has been removed or your account has been suspended due to trade mark allegations?
- How we have helped business owners overturn an Amazon takedown notice
- Why you should seek legal representation for your business
What does Amazon’s trade mark infringement policy say?
Amazon’s IP policy states – unsurprisingly – that it does not permit listings that violate the intellectual property (IP) rights of owners or their licensees. It explains the general principle that a trade mark owner may prohibit the use of a particular trade mark in the following circumstances:
- For goods or services identical to those for which the owner has a registered trade mark;
- For goods or services similar to that of the registered trade mark, if it is likely to cause confusion among customers (even if the trade mark is not identical, only similar); or
- If the trade mark owner’s mark has a reputation in the relevant territory and where the use of the mark or a similar mark takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the owner’s trade mark.
Amazon advises that a seller may use another business’s trade mark in the following circumstances:
- Authentic goods: a seller may use a trade marked name to identify what goods it is selling. For example, a seller who lists an authentic branded product may not be infringing the owner’s trade mark if the seller is using the trade mark to identify second hand goods;
- Ordinary meaning: when using a word that is trade mark protected for some goods but not for the ones being sold where it is just descriptive (so using “Mustard” is fine for selling mustard even if “Mustard” is a registered trade mark for shoes;
- Compatibility statements: when truthfully claiming a product is compatible with another trademarked product. For example, you may use the brand name ‘Apple’ to explain a cable you offer is compatible with Apple iPhones. However, there is one important distinction – you cannot use a logo to indicate compatibility, only the brand name. What’s more, any statement made about compatibility must be true and relevant to the customer’s purchase decision (for example, if your product is compatible with all competitor products, it is not permissible to list all brands, as the customer is not at risk of buying the ‘wrong’ product). It must also follow a specific format for product titles and must reflect Amazon Brand Name Policy. If you do not apply the correct format to your product title, your listing may be removed as potentially infringing;
- Similar/equivalent to claims: ‘similar to’ claims (for example, stating goods are “similar or equivalent to Apple”) is a grey area, depending on the marketplace and circumstances. Amazon simply urges users to “seek legal advice” in these circumstances. We can help with this complex area which brings in issues of comparative advertising.
The policy concludes that most other unauthorised uses of a trade mark constitute trade mark infringement and recommends seeking legal advice before listing if you are unsure as to whether you may infringe.
How can Amazon Brand Registry help with takedown notices?
Amazon Brand Registry is a suite of software and tools that subscribers can use to obtain stronger and more effective enforcement against infringing listings. In order to enrol you will need to have an active trade mark application or registration, for a word mark or a stylised mark that contains words, letters or numbers.
You can then use the “Report a Violation” tool to inform Amazon of an infringement and it will take proactive steps to remove infringing products and utilise machine learning to engage automated brand protections such as predictive searching for
The Brand Registry Support team offers in-person help with technical and policy issues so you can contact them for assistance if you require it once you have enrolled.
There is also a “Project Zero” tool that allows you to detect and remove counterfeit products automatically, without even contacting Amazon first, if you satisfy the use criteria.
What information is needed to issue a takedown notice?
Before filing a takedown notice, you will need to ensure that you have access to the following information:
- Details of your IP rights that are being infringed, i.e. a description of your trade mark and its registration number if you are claiming trade mark infringement or a link to or description of your copyrighted work if you are claiming copyright infringement;
- Details of the infringing product(s) ASIN number(s) ((Amazon Standard Identification Number) or the URL of the page on which the infringing product is being sold or the product’s ISBN-10 (a 10-digit International Standard Book Number (ISBN) that identifies a book, edition, or similar product). You can enter up to fifty different numbers on a single form; and
- Any additional evidence to describe how the product is infringing your IP rights.
You will also need to provide your name, address and contact details that will be shared with the infringing party. Finally, you will have to sign a declaration under declare, under penalty of perjury, that the information that you have provided is correct and that you are the owner or agent of the IP right in question.
What to do if Amazon will not respond to your businesses’ takedown requests or if an infringing listing is reinstated
- First, review the reasons for refusal. Are they procedure based? An Amazon complaint is an exercise in form-filling, and sometimes our legal assistants can get a takedown request dealt with inexpensively because of our extensive knowledge of how the system works.
- Next, is the problem that your rights are unregistered? Unregistered rights require a nuanced approach that Amazon’s systems struggle to work with. Our trade mark solicitors and their legal assistants are used to set out positions under copyright and unregistered design right law in a way that ticks the Amazon formula boxes and can often solve this problem.
- Do you have the correct registrations? It is often cheaper to obtain new ones with our help (that the Amazon AI will “understand”) than it is to argue the case with Amazon.
- Finally, Amazon may not respond to you, or even to a solicitor’s letter (it is usually necessary to commence proceedings to get a response) but the other party should do, or can be obliged to by the court. Amazon is powerful but it is not a court and an infringement on Amazon ultimately falls to be determined by the court itself, not Amazon AI. Amazon must obey court orders that are served on it.
How quickly will Amazon act on a takedown notice?
Once you have filed the takedown notice, Amazon will usually review it within a few days and will then de-list the infringing product if it considers your notice to be accurate and credible. Amazon will then inform the infringing party that the product has been removed and provide them with your contact details so that they can contact you to try to resolve the dispute. If the dispute cannot be resolved and you do not retract your takedown notice, Amazon may do this if the other party offers Amazon an indemnity to cover any loss that it may incur in relation to the sale of infringing items or if the court orders that the items be re-listed as the takedown notice constituted an unjustified threat.
Practical steps Amazon businesses can take to avoid trade mark infringement
Consider the following when listing items for sale on Amazon:
- Ensure you have procured your goods from a reputable distributor;
- Ensure you can prove the authenticity of the goods, should you need to;
- In the context of a complaint in relation to the use of a trade mark protected word, consider whether you could argue that the word is simply an ordinary dictionary definition or description;
- Ensure the way you describe the goods does not cause potential customer confusion;
- Ensure you use trade marks in a clear and truthful manner to describe compatibility and do not refer to goods as being similar or equivalent to another product.
What to do if you receive a warning that your listing has been removed or your account has been suspended due to trade mark allegations?
- First, review the listing referenced in the takedown notice. Are you confident you are not infringing another persons trade mark? If you are unsure, you should stop trading and seek the opinion of a trade mark solicitor.
- Next, if you think the takedown is wrong or malicious, you may appeal the decision using the Amazon forms supplied. Be aware however that this could form evidence in any later court case so be strictly accurate in what you say and seek advice if in doubt
- If you believe the reports are malicious, speak to us. The Amazon policy is not flexible enough to deal with unjustified or malicious threats (though if proven Amazon may take action as it would for any other abuse). But malicious reports may themselves be actionable by the courts and we can help with this.
- Finally, talk to us about whether the trade mark or other IP right relied on is valid, and whether it should be on the register at all. Amazon cannot contest the validity of registered rights: but you can, and we can help with this process, which is often not expensive compared to other legal proceedings.
How we have helped business owners overturn an Amazon takedown notice
Our expert Intellectual Property team is experienced in representing business owners in intellectual property disputes relating to products listed on Amazon; few other law firms have specific experience in this area. Our team will carefully negotiate disputes on your behalf to give you the best chance of securing a favourable outcome.
Recently a competitor sent a takedown notice to Amazon saying that, as the holder of design rights, one of our clients products was similar to theirs. Amazon removed their products from the platform.
Using a rarely known aspect of intellectual property law, we were able to successfully reverse Amazon’s removal of Mariani’s listings. The other party agreed to withdraw their complaint and agreed not to file any more complaints with Amazon. They also paid Mariani’s legal fees. With her sales listings reinstated and a key income source reactivated, Mariani was able to focus on developing and protecting her brand and expanding her growing business.
Why you should seek legal representation for your business
The services we provide in dealing with Amazon itself are specialised. Standard solicitors’ letters sent to Amazon’s headquarters are rarely the way forward, however skillfully they have been drafted. We know from experience what Amazon will ignore but we also know how to find the chinks in its policy armour. So: if your opponent has gained some temporary advantage because of an unjust automated Amazon decision, we will know how best to overcome this.
