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 business’s 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?
- 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. Broadly speaking, UK trade mark law allows a trade mark owner to object to another business using the same or a similar trade mark in the course of trade in circumstances such as the following:
- For goods or services identical to those for which the owner has a registered trade mark;
- For goods or services identical or similar to those covered by the registered trade mark, where the sign used is identical or similar and there is a likelihood that customers will be confused; or
- If the trade mark owner’s mark has a reputation in the relevant territory and the other party's use, without good reason, takes unfair advantage of, or harms, the distinctive character or reputation of the trade mark. This protection can sometimes apply even where the goods or services are different.
Amazon advises that a seller may use another business’s trade mark in certain circumstances. Whether use is legally permitted will depend on the circumstances, and Amazon's own policies are not a substitute for UK trade mark law. Examples include:
- 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). Any use must still be fair and honest in the circumstances;
- 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. Both UK law and Amazon's policies place limits on how another business's trade mark can be used, so the presentation of the listing matters. It must also follow Amazon's required format for product titles and 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”) can be a grey area, depending on the marketplace and circumstances. Amazon urges users to seek legal advice in these circumstances. We can help with this complex area which brings in issues of comparative advertising.
Other unauthorised uses of a trade mark may amount to trade mark infringement, but this will depend on how the mark is being used and the circumstances. Amazon 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 those enrolled can use to obtain stronger and more effective enforcement against infringing listings. Eligibility generally requires a qualifying registered trade mark or, in some circumstances, a pending trade mark application. Amazon also has requirements concerning the type of mark and how the brand appears on the goods or packaging, so businesses should check the current Brand Registry eligibility requirements before applying.
You can then use the “Report a Violation” tool to inform Amazon of suspected infringement. Amazon will assess the report under its policies and may take enforcement action. Information from reports may also help Amazon's automated systems identify potentially infringing listings in future.
The Brand Registry Support team offers 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 which, for eligible brands, can allow the brand owner to remove counterfeit listings directly rather than having to report each listing to Amazon and wait for Amazon to act.
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); and
- Any additional evidence to describe how the product is infringing your IP rights.
Amazon may also require information about the person making the complaint, their authority to act for the rights owner and confirmation that the information supplied is accurate. The exact information required, and what information may be shared with the seller, can depend on Amazon's current reporting process, so you should check the form carefully before submitting it.
What to do if Amazon will not respond to your business’s 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 lawyers 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? Complaints based on unregistered rights, such as copyright or unregistered design rights, can require a more detailed explanation than complaints based on registered rights. In our experience, Amazon's systems do not always deal with these claims as easily. Our lawyers are used to setting out positions under copyright and unregistered design right law in a way that fits Amazon's reporting process and can often solve this problem.
- Do you have the correct registrations? It is often cheaper to obtain new ones with our help where registration is appropriate and commercially worthwhile than it is to argue the case with Amazon.
- Finally, Amazon may not respond to you, or even to a solicitor’s letter, and in some cases court proceedings may be necessary to resolve the dispute. Amazon can decide whether a listing remains on its marketplace under its own policies, but any legal dispute about whether UK trade mark rights have actually been infringed is ultimately a matter for the court if proceedings are brought. Amazon must comply with any court order that applies to it.
How quickly will Amazon act on a takedown notice?
Once you have filed the takedown notice, Amazon will usually review it in accordance with its current reporting procedures and may then de-list the product if it considers your notice to be accurate and credible. Amazon may also inform the seller of the complaint and may provide information about the complainant in accordance with its current policies and reporting process.
If the parties cannot resolve the dispute, the position can become more complicated. A rights holder should also take care when making allegations of trade mark infringement. In some circumstances, an unjustified threat of legal proceedings can itself give rise to a claim. Whether an Amazon complaint or related communication amounts to an actionable threat will depend on what was said, who it was said to and the surrounding circumstances. Legal advice should therefore be taken where there is any doubt.
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 without first considering whether the comparison is legally permissible.
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 person's trade mark? If you are unsure, consider suspending the affected listing or use while you seek advice from a trade mark solicitor.
- Consider contacting the rights owner directly. Amazon's notification includes the complainant's contact details, and Amazon's own guidance is to ask them to withdraw the complaint, for example, if you are an authorised reseller, can prove the goods are genuine, or are willing to amend the listing. If the rights owner retracts, Amazon will normally reinstate the listing. The rights owner is not obliged to agree, and anything you write could be used in later proceedings, so ensuring the correspondence is accurate is essential. We can liaise with the rights owner on your behalf to give you the best chance of securing their agreement to withdraw the complaint.
- 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). Depending on the circumstances, deliberately false or unjustified allegations may also have legal consequences, and we can advise on the options available.
- 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 does not decide whether a registered UK trade mark is legally valid in the same way as the UKIPO or a court. The validity of a registered right can in appropriate circumstances be challenged through the proper legal process. We can help you consider whether such a challenge is appropriate.
Why you should seek legal representation for your business
For many small businesses, Amazon marketplace represents their primary income source. When erroneous takedown requests stifle your ability to do business on the site, the consequences can be disastrous. On the other hand, the enormity of Amazon’s reach is such that any infringements of your intellectual property rights can, unless swiftly quashed, cause irreparable brand damage.
Amazon’s automated systems and the inability to interact with a human representative makes dealing with such matters incredibly time consuming and frustrating. Worse still, many businesses’ efforts are ultimately unsuccessful. That’s why many business owners seek legal advice from trade mark lawyers like ours when facing intellectual property issues on Amazon.
