On Amazon, a brand owner can complete a Report Infringement Form to notify Amazon of an alleged infringement. The Report is a straightforward process and requires a brand owner to provide evidence which will usually take the form of a trade mark certificate or a registered design certificate. Any notification of infringement should be taken seriously and seeking legal advice as soon as possible may identify that the brand owner has no actionable intellectual property rights against you. This can easily be overlooked but it is extremely important and this insight sets out how Tozers can help you.
What does Amazon require me to do?
If you are on the receiving end of a report, Amazon will remove your listing and request:
- A letter of authorisation or a licence agreement from the brand owner demonstrating that you have a legal right to use the content they say is infringing; or
- A retraction from the rights owner to be sent to Amazon directly. This essentially means that the onus is on you to reach out to the rights owner and ask them to retract the report.
The options to respond above are restrictive. If your listing has been reported you may ask the question, why would the brand owner willingly retract the report?
If Amazon do not receive the required information the listing will remain deactivated and the violation record will remain on your health activation page for up to 180 days after the listing was deactivated. They state that intellectual property infringement is a violation of their policies and, “may also result in the loss of selling privileges or other legal consequences.”
You may find yourself in a situation where you think somebody is vexatiously trying to remove your listings. In these situations, Amazon’s notification to you does not offer you a mechanism to challenge the intellectual property rights relied upon by the brand owner. Instead, they give you the option to contact the brand owner “If you think that the rights owner has made an error in sending the notice.” Again, the issue with this is that only retractions submitted by the rights owner directly to Amazon will be accepted. This is where obtaining specialist legal advice is invaluable.
Why have I received an Infringement Report?
Whilst trade marks and registered designs must meet stringent registrability, the Intellectual Property Office (“IPO”) will not automatically reject trade marks and designs which do not qualify unless there are very obvious defects. The effect of this is that trade marks and designs which do not meet the criteria become registered and the owners mistakenly (or despite this knowledge vexatiously) try and remove your listings to stop you from selling and gain an unfair advantage on e-commerce platforms. In these circumstances the IPO expects third parties to invalidate the trade marks or designs which do not meet the registrability criteria or infringe your intellectual property rights.
A registered trade mark in one use class (e.g. registering for clothing) costs £170 to register and a registered design costs £50 to register. For brand owners aiming to safeguard their products (either genuinely or in bad faith), the affordable registration process provides a simple way to obtain compelling evidence (via an IPO certificate) to use against third partis on Amazon. As neither the IPO nor Amazon police registrations, invalid marks/designs slip through the net every day.
The registered design decisions are published on the Gov.uk website and highlight numerous examples of parties who have registered invalid designs and which have been successfully challenged by third parties.
Is the only solution for me to contact the brand owner and ask them the retract their report?
No, there are several ways forward, including:
- Writing to the brand owner to challenge the validity of the trade mark or registered design. Your position may be that:
- The trade mark is invalid because it was registered in bad faith or because the words do not meet trade mark law criteria because they are descriptive/generic.
- The registered design is invalid because it does not have individual character or is not new.
- You have earlier intellectual property rights than the brand owner but you never registered a trade mark/design.
- Negotiating with the brand owner and discussing a co-existence agreement/legal undertakings.
- Issuing proceedings for invalidation as a last resort.
You often have one chance at pursuing your claim and instructing a solicitor to correspond with the brand owner gives you the best chance of framing your claim/defence in the strongest way. It also demonstrates that you take your legal rights and obligations seriously and that you will robustly defend your position. Often a strong and persuasive letter will deter the brand owner from reporting further listings and will result in the retraction of the report. If they do not, we can assist you with the next steps in relation to the proceedings.
Do I have to contact the brand owner if I want to invalidate their registration?
Yes; the IPO makes clear that if you are considering making an application for invalidation you should approach the brand owner to see if you can resolve the matter without the need to resort to legal proceedings.
Can I reclaim my legal costs from the brand owner?
The basic position is that you have no right in law to recover your legal costs until such time that a Court is involved. Legal correspondence could certainly indicate to the brand owner that you would expect your costs to be paid but there is no guarantee they will agree. It could be used as a tactical point of leverage.
If proceedings were to become necessary, the general is that you would only be entitled to recover a contribution towards your costs.
The wider point is that you should carefully consider the impact of an invalid trade mark or design registration certificate on your ability to trade. If their registration remains unchallenged there would be nothing to stop the brand owner from trying to remove further listings now or in the future.
How can Tozers help me if I’ve received an Infringement Report?
Do not automatically assume that the person filing the Infringement Report has a validly registered intellectual property right and knows what they are doing or that you must accept the challenge to your listing. The Report is a step a competitor is bound to take to protect its own trading activities but it is our experience that these matters are always best approached through a constructive dialogue.
Why should I choose Tozers?
As a top firm for client satisfaction, we have built a reputation as good listeners who can help break down complex legal jargon into words you can understand and are experts at advising on your individual situation.
The key with disputes about allegations of intellectual property infringement is to move swiftly. The focus of our advice will be on settling the claim most cost-effectively, often without recourse to proceedings.
The earlier you act, the more time you have available to safeguard your listings and decide what decision is best for you commercially.
