E-commerce platforms such as Amazon, Etsy, Facebook Marketplace and eBay give unscrupulous businesses the opportunity to hide their real identity behind fake or anonymous accounts and take advantage of the hard work and expenditure that legitimate businesses have invested in building up their brands. It is important to act quickly to take down any infringing listings before any damage is done to the brand or IP rights that are being infringed.
In this article, our trade mark lawyers explain discuss how you can identify trade mark infringement on eBay and the steps you can take to remove listings on eBay that infringe your intellectual property rights.
Contents:
- How do I identify trade mark infringement on eBay?
- How do I report trade mark infringement on eBay?
- What is the VeRo Program, and how does it help with trade mark protection?
- How can I resolve a trade mark infringement dispute on eBay?
- What should I do if the seller disputes my trade mark infringement claim?
- How long does it take for eBay to remove an infringing listing?
- What are your options if eBay refuses to take action against the seller?
- Summary
How do I identify trade mark infringement on eBay?
Identifying infringement early allows you to protect your intellectual property rights before significant damage is done to your brand’s reputation. There are various strategies and tools that you can take to monitor and flag potential incidents of infringement on eBay.
First of all, you should ensure that you know exactly what trade marks you own and take steps to register them, wherever possible. You can then create a monitoring strategy that may involve several of the following steps:
- Train your employees and partners so they can understand how your trade marks should be used and to look out for any incidents where they are not being used correctly on goods or in seller profiles and in respect of advertising and marketing;
- Make use of specialist monitoring software and AI tools which can quickly identify and alert you to potential infringements;
- Sign up for eBay’s veRO program and create your own brand profile;
- Search for wider misuse of your trade marks on social media and networking sites and in customer complaints and reviews;
- Educate your customers by building up a strong brand image and reputation and providing information on counterfeit and fake products. Building up a good rapport with customers can also encourage them to report any incidences of counterfeit products and confusion that they have experienced elsewhere, to your business.
Trade mark infringement can take various forms. In order to report an infringement through eBay, you will need to identify whether it involves a listing offering counterfeit goods that bear your trade mark or unauthorised use of your trade mark in the listing details and/or the seller’s shop name, which could lead to consumer confusion. Counterfeit goods are fake products that are designed to mislead consumers into thinking they are the genuine branded goods of another business. They are usually of inferior quality to the original branded goods and sold for discount prices. They may bear the brand owner’s trade mark or a highly similar, replica mark. Infringing listings may employ a confusingly similar trade mark as the name of the seller or in the description or depiction of the goods being sold on the listing.
Once you have developed a strategy for identifying infringements, you will need to formulate an approach as to how you want to deal with them. This may vary depending on the scale of the infringing activity and whether it is an isolated incident or part of a wider pattern of infringement. For example, you may be able to file takedown notices to remove the listings of various separate, small-scale sellers but for a large-scale, concerted counterfeit enterprise, where multiple connected parties are involved, you may want to go to the court to obtain an injunction and also to bring a claim for damages or an account of profits from the infringing parties.
You should seek the advice of a trade mark lawyer, before taking action, especially since making an unjustified threat of trade mark infringement is an offence.
How do I report trade mark infringement on eBay?
eBay has a particular process for the reporting of listings that infringe against registered trade marks, via its Verified Rights Owner (VeRO) Program. You will first need to enroll on the program and provide evidence to eBay of your ownership of the trade mark(s) in question. This could be a copy of your registration certificate for registered trade marks, patents or registered designs or written evidence of creation or contractual ownership/transfer of any copyright protected work. You can then go on to submit a Notice of Claimed Infringement (NOCI) to report the infringing listings.
eBay has a strict set of criteria that you will need to meet to file a trade mark infringement claim. The first NOCI that you file must be sent to the VeRO team in Dublin by fax or post. After that, you will be provided with a dedicated email address where you can file subsequent notices. In the NOCI you must provide details of the infringing item(s)/listing(s) and the nature of the infringement. Specifically, you will need to identify each infringing item/listing by its Item Number and state a particular Reason Code for your complaint, from a list of sixteen different possibilities. These are based on either infringing listings such as listings containing unauthorised use of copyright protected photographs or images or infringing items, such as pirated media or counterfeit goods that are being offered for sale. It is important that you correctly identify the basis of your claim or this could result in unnecessary delay or your claim being refused.
Providing clear, detailed, and robust evidence in your report increases the likelihood that eBay will take your claim seriously and act swiftly. If your report lacks clarity or supporting documentation, your claim could be dismissed or delayed, hindering the protection of your rights. Supporting information that you are likely to need to file will include screenshots of the infringing listing, comparisons between the infringing product and your IP right and/or copies of your copyright protected work and comparisons with the infringing listing/product.
You, or your lawyer, will also need to sign a statutory declaration to confirm that the information that you have filed is correct and truthful, so it is important that you provide the correct information.
Although eBay will look at claims filed by individuals, communications from an intellectual property lawyer are likely to make the process quicker.
What is the VeRo Program, and how does it help with trade mark protection?
By enrolling on to the VeRo program, you can create your participant profile by submitting information about what your IP rights are and how they should be employed by sellers. This makes it easier and quicker for eBay to take action when you submit an infringement notice and also enables eBay to take down the allegedly infringing listing(s) or content, without first independently verifying the validity of the complaint. eBay also utilises a complex filtering system to detect breaches of its IP use policy and flag potentially infringing listings for review by a customer services representative. There is also a Community Watch Scheme for users to report listings that infringe eBay’s policies.
You can register on the VeRo Program by completing a NOCI and providing details of your IP rights. You will then have a VeRO participant profile, that provides information about your business and its IP rights and a contact email should anyone need to contact you in the event of a dispute.
Advantages of joining the program are the rapid response mechanism for taking down listings that are reported as infringing member’s IP rights and the ease and low cost involved in taking infringement action this way. There is some risk inherent in the process in that the court has stated that submitting a VeRo claim of infringement, that is later found to be untrue, can constitute the offence of making an unjustified threat of infringement, under the Intellectual Property (Unjustified Threats) Act 2017. So, you will need to be confident of the accuracy of your claim(s) and should not just fire off NOCI’s without first assessing the merits of each case and first consulting with an IP lawyer, if possible.
VeRO does not provide complete IP protection and sellers may still attempt to bypass eBay’s protections.
How can I resolve a trade mark infringement dispute on eBay?
The first step will be for you to take legal advice, a trade mark lawyer will help you assess the strength of your case and confirm if there is a genuine infringement. If not, then you could be at risk of liability for making an unjustified threat and end up in a worse position than if you had not done anything.
Once you are certain that you have a reasonable case for infringement, you should register onto the VeRO program by filing a NOCI against the listing(s) that are infringing your IP rights. This may result in the infringing listing being removed and resolving the issue or you may need to take further steps, such as contacting the infringing party directly to negotiate a solution, or, if necessary, issuing an infringement action in the court.
What should I do if the seller disputes my trade mark infringement claim?
The seller will have the opportunity to respond to you to dispute your claim and may provide evidence in support of their position. They may also seek legal advice and, if they consider your claim to be unjustified, they may issue an unjustified threats claim against you. If they do respond, you can either reply to them directly to try to negotiate a solution, or ask your lawyer to formulate a response. The latter option is strongly recommended since a lawyer will be able to evaluate the strength of any defence that the seller may be trying to rely on and advise on the merits of their evidence and whether or not trying to reach a negotiated settlement is recommended.
How long does it take for eBay to remove an infringing listing?
Factors such as how clearly and accurately you have presented the claim and the quality and relevance of the supporting evidence you have submitted, will have a strong influence over how quickly eBay is able to assess the claim and issue a response. If certain information is not clear or if important facts are not supported by evidence, eBay may have to request further clarification and/or documentation, which will lengthen the process or may even ultimately refuse the claim.
There is no specific timeline for eBay to respond to a NOCI however, on-line platforms such as eBay, are required to act expeditiously to remove infringing content, once they are aware of it, in accordance with the E-Commerce Regulations. The exact time frame will vary depending on the exact details of the case and the amount and quality of the evidence submitted. The process involves eBay reviewing all the information and documentation that has been submitted and then making a decision.
You can also speed things up by familiarising yourself in advance with the takedown process and the NOCI form and even prepare standard pro-forma notices in advance, that you can adapt and add to when necessary. This will help ensure that you have the requisite documentary evidence to hand when you need it and can file a NOCI immediately upon discovery of an infringing listing.
Managing expectations allows you to stay proactive and follow up when necessary, while avoiding frustration if the process takes longer than anticipated. You should consult with your IP lawyer and establish a contingency plan about what to do if you do not receive a response within a certain period of time, or if you receive a negative response.
What are your options if eBay refuses to take action against the seller?
You should be informed by eBay of the reasons for refusing your claim. You can then decide whether to take further action such as contacting the infringing seller directly. Although eBay has asserted that it takes steps to ensure that its decisions are fair and accurate in law, it is not a judicial body and can only assert its takedown power where there is a clear and relatively straightforward evidence of infringement. For more complicated matters, involving analysis of evidence and the assessment of unregistered IP rights, the takedown procedure may not result in a satisfactory solution.
Even if you cannot get eBay to remove the infringing product/listing, this is not your only possible course of action and you can still file a claim independently of eBay to enforce your IP rights in the courts or at the relevant Registry. The first step is usually to send a Letter Before Claim or Cease and Desist Letter to the alleged infringer so you will need their contact details in order to do this. It is advisable to instruct an IP lawyer to handle this for you to ensure that you are entitled to bring a claim and that it has some chance of success before you incur any additional cost.
Summary
Filing a NOCI on eBay can be a quicker and less expensive solution to dealing with IP infringement than formal litigation. It is also useful when you do not have the contact details of the individual infringing sellers. It is not without risk and is not always successful and firing off NOCI’s should not be employed as a quick-fire, blanket approach, without prior assessment of the facts of each case.
A combination of approaches is often the preferred option and your IP lawyer will be able to formulate the best strategy based on the particular facts and what is proportionate and necessary for your business and brand protection.
