Trade mark infringement on Shopify

Shopify is one of the world’s largest e-commerce platforms and it is estimated to have around 700 million customers. This vast consumer base, combined with Shopify’s ease of use, customisation options, resources, and customer support, has led millions of businesses, from small side hustles to retail giants, to use the platform to sell their products or services.

As is the case with many e-commerce platforms, intellectual property infringement is rife on Shopify. To combat the issue, Shopify tends to adopt an ‘act now, ask questions later’ policy when it comes to removing allegedly infringing material. While this is reassuring for brand owners, having your products removed from sale or, worse still, your entire website taken down can have catastrophic consequences for sellers on the receiving end of a complaint.

Our trade mark solicitors frequently help Shopify sellers in this position. In this guide, they give a general overview of trade mark infringement on Shopify. They explain how to distinguish legitimate complaints from illegitimate ones, how to dispute a takedown notice, and the steps you can take to protect your business against infringement allegations.

How do you know if it is a legitimate trade mark infringement claim?

Sadly, fraudsters have taken to extracting money from unsuspecting Shopify users by claiming the user has infringed a registered trade mark and threatening to remove their products or website if they don’t pay the sum demanded.

Examples of red flags that may indicate a claim isn’t legitimate include:

• The email address. Emails from Shopify will generally end in ‘shopify.com’. They will certainly never come from public email services like Hotmail, Gmail, or Yahoo.
• Asking for personal information. Shopify will never ask you to provide sensitive information, such as passwords or bank account information, through a text or image email or as a file attachment.
• Spelling or grammar errors. If an email purporting to come from Shopify contains spelling or grammar errors or is formatted incorrectly, it may very well be fraudulent.
• A threatening tone. Shopify will never send menacing correspondence. If your email threatens extreme action unless you pay the sum demanded immediately, chances are it’s fraudulent.

If you are in any doubt as to the origins of a correspondence, you must take steps to confirm its authenticity before taking any action in relation to it.

The problem is not limited to just fraudsters, though; genuine brand owners can sometimes overstep the mark, too. Trade mark infringement on Shopify can be a big problem for established brands whose products are ripped off by copycats looking to cash in on their success.  To combat the issue and comply with their own legal obligations, Shopify makes it easy for anyone to report alleged trade mark infringement through an online form. Unfortunately, the ease of the process enables some unscrupulous brand owners to make spurious claims in a bid to stifle competition.

In the UK, trade marks are powerful rights, but they aren’t absolute. While a trade mark affords its owner a monopoly over the registered branding or anything similar to it, that monopoly generally only relates to the goods or services covered by the registration, or anything similar to them. If you use the mark in connection with different goods or services, the trade mark owner usually has no legal rights to prevent your activities.

If you’re unsure about the legitimacy of a trade mark complaint on Shopify, speak to our trade mark solicitors. We’ll review the trade mark registration and your use and advise you on your legal position.

Is the trade mark infringement claim an unjustified threat? 

A quirk of trade mark law is that someone who threatens legal proceedings for alleged trade mark infringement can themselves be sued if those threats are unjustified. The rule also applies to patents and design rights, but not to copyright.

If a claim under the unjustified threats legislation succeeds, the court may order the person or business responsible for the threats to refrain from making further threats and pay damages to the other party to compensate them for any losses.

The legislation mainly covered formal letters threatening legal action against someone accused of trade mark infringement without justification. Although, the court has recently confirmed that unjustified threats extend to takedown notices on Amazon. Takedown notices issued on other platforms, like Shopify, can also constitute unjustified threats in some circumstances.

To prove the takedown notice is an unjustified threat, you must be able to show that you are legally entitled to do the acts complained of. There are many situations in which an apparently infringing act may be lawful. For example, you may have a licence to use the trade mark, or the goods in question may be genuine. Our trade mark solicitors will review the circumstances of your case and advise whether they bring the unjustified threats litigation into play.

What should I do if I am accused of trade mark infringement on Shopify?

Shopify’s trade mark policy states that you have two options if you receive a trade mark notice from the platform. You can either accept the removal of the content or file a response disputing it. If you believe the notice has merit, it’s a good idea to review your content to check that there are no other potential infringements that could cause further issues.

If you dispute the notice and wish to file a response, there is no deadline within which to do so, but the sooner you address the issue, the sooner it can be resolved.

Your response must contain various specific information, including ‘a statement under penalty of perjury that you have a good faith belief that the content was removed as a result of a mistake or misidentification’. Despite the automated and apparently simplistic nature of Shopify’s trade mark processes, they should be used with caution. Getting it wrong can have serious consequences, so if you’re unsure of your legal position, you should seek legal advice.

The policy states that after you submit a response, Shopify will send a copy to the party that made the complaint and generally allow you to repost the content. This statement often doesn’t tally with users’ experiences. Shopify forums are packed with users complaining that Shopify has failed to reinstate their items or shops following receipt of their response, and their emails have gone unanswered. If Shopify isn’t dealing with your concerns, our trade mark solicitors will be able to review your case and will be able to advise you on your next steps.

Brand owners sometimes issue takedown notices on Shopify in conjunction with other actions. For example, they may instruct solicitors to send a letter of claim detailing your infringements and threatening legal action if you do not agree to their demands. If you receive correspondence of this nature, you should seek legal advice immediately. Ignoring the letter or responding inappropriately can jeopardise your position and may result in the other party bringing infringement proceedings against you.

How long does it typically take to resolve a trade mark dispute on Shopify? 

Trade mark law is complex, and infringement claims are rarely straightforward. You should be prepared for your dispute to potentially take some time to resolve. Precisely how long depends on a number of factors unique to the circumstances, such as the strength of the case and the parties’ outlooks. If your case goes to trial, it may not be resolved for many months or even years.

Our trade mark solicitors will work with you to protect your position and minimise the impact of the dispute on your business pending its resolution. Depending on the strength of the case against you, they may advise you to remove the allegedly infringing items from sale to avoid the other party seeking a court order compelling you to do so. On the other hand, if the allegations are spurious, they may explore the possibility of relying on the unjustified threats litigation to insist that the other side ceases making the allegations.

How can I prevent future trade mark disputes on Shopify?

Prevention is better than cure, and taking proactive steps to ensure your items don’t infringe someone else’s registered trade mark is far preferable to addressing an infringement claim.

The following are a few useful tips to avoid inadvertently falling foul of trade mark law:

• Avoid using well-known branding or anything similar on your own goods. Chances are, it’ll be a registered trade mark, and even if it isn’t, the brand owner may pursue a ‘passing off’ claim against you.  Passing off is known as an ‘unregistered trade mark right’ and covers cases where a business passes off its goods and services as those of another. For more information on this topic read our passing off claim guide.
• Avoid using someone else’s logos or characters on your own goods. Many well-known characters are registered trade marks, so your use may constitute trade mark infringement. Even if it doesn’t, you may still fall foul of passing off, as we explain above.

In addition to avoiding infringing someone else’s trademark, you should consider registering a trade mark for your own brand if you haven’t already done so. A registered trade mark allows you to issue takedown notices against other businesses infringing your rights on Shopify and other platforms, and take legal action seeking an injunction (a court order preventing the other party from using your trade mark in future) and damages. Our trade mark solicitors routinely assist businesses of all sizes with devising and implementing effective brand protection strategies, including obtaining trade mark protection. They’ll review your commercial operations and advise on a strategy that provides protection within your budget.

Summary

The removal of your goods or website by Shopify for alleged trade mark infringement can be financially disastrous, particularly if you rely on the platform for your income. If you have any doubts about the lawfulness of your proposed actions, taking expert legal advice from specialist trade mark solicitors like ours will put your mind at ease and significantly reduce the risk of infringement claims interfering with your commercial operations.