Five Practical Tips for IP enforcement on Amazon and other online marketplaces

By Clinton Priddle

 

Online marketplaces, such as Amazon and eBay, are not only changing the way we buy, but are also changing the way we sell.  The threshold for listing products on many of these online marketplaces is very low, particularly when compared with traditional bricks and mortar stores, and individuals and small businesses are able to sell products and services online with minimal outlay.

While this is empowering for individuals and small businesses that wish to sell online, it poses new challenges to intellectual property right holders.  Many online marketplaces appear to be a haven for selling counterfeit (or infringing) products, as it can be difficult to identify who the seller actually is.  Furthermore, and due to the low threshold for listing items, are also popular with individuals that have little understanding of intellectual property.

You may be wondering if it is even possible to keep on top of this, particularly if you are an individual or small business.  But luckily, these marketplaces generally respect intellectual property, and typically provide efficient complaint reporting tools.  By using these tools, it is often possible to get counterfeit or infringing products removed from the marketplaces quickly, and without necessarily even being able to identify the seller (which at times can be difficult).

In many cases (examples are provided below), complaints are made using an online form, which is submitted to the online marketplace for review.  In the online form you are generally required to enter your details, details of your rights, and details of the listing(s) that infringe your rights.  If the complaint passes an initial review, it is generally provided to the seller for a response.  Depending on the marketplace, the listing may be temporarily removed during this period.  If the seller does not respond to the complaint, the listing is generally removed (if not already done so), and in the case of repeated breaches, the seller may be suspended by the marketplace.

In the case of obvious infringement, the listing is often able to be removed shortly after the complaint is filed (in some case within days), particularly if the seller does not challenge the complaint.  We have even seen cases where listings are voluntarily removed by the seller directly after the complaint is made.

 

FIVE TIPS WHEN MAKING A COMPLAINT

  1.  Have details of your IP rights ready, as you will need these to submit your complaint.  In the case of a trade mark, for example, most of the relevant information (e.g. registration number, class, goods) can be found on the registration certificate.
  2.  Focus on the most obvious infringement.  In many cases it is faster and easier to have a listing removed for copyright or trade mark infringement only, even if design and/or patent rights are also infringed.
  3.  Consider traditional “cease and desist” letters when dealing with other businesses, particularly those that operate online and in the physical space.  Sometimes it can be more efficient to stop the infringement once, rather than challenging each listing.
  4. Monitor these online marketplaces for infringement so that you can act promptly when infringement occurs.  Consider adding a weekly/monthly reminder so that this task is not forgotten.
  5. Make sure your Trade Marks are registered and up to date.  It is much easier to quickly stop infringement if your Trade Marks are already registered.

 EXAMPLE 1 – AMAZON

Infringement Reporting Tool: https://www.amazon.com/report/infringement

 

EXAMPLE 2 – Facebook

Infringement Reporting Tool: https://www.facebook.com/help/contact/208282075858952

 

EXAMPLE 3 – EBAY

eBay has a Verified Rights Owner (VeRO) Program (http://pages.ebay.com/seller-center/listing-and-marketing/verified-rights-owner-program.html) for IP complaints.

Initially, a Notice of Claimed Infringement (a PDF form) is completed and submitted https://ir.ebaystatic.com/pictures/aw/pics/pdf/us/help/community/NOCI1.pdf

The form is much like the online forms above (you enter your details, details of your IP, and eBay item numbers to which the report relates).

Gumtree has a near identical reporting system.

 EXAMPLE 4 – Alibaba

Alibaba has an Intellectual Property Protection (IPP) system (https://ipp.alibabagroup.com).

The main difference with the Alibaba IPP system and the examples provided above, is that IP rights are registered separately to complaints, and associated with an account.  This is efficient when making many reports, as you do not need to re-enter details of your rights for each complaint.

I would suggest allowing extra time to initially register your rights on Alibaba, as it is a very detailed process (e.g. you must upload pages of your registration certificates for review).

 

CONCLUSION

The complaint mechanisms provided by online marketplaces can be a very efficient and cost-effective way of removing infringing products from online marketplaces, and thus keeping infringers at bay.

If you would like any assistance, or further advice regarding infringement of your rights, in the context of one of the above-mentioned marketplaces or otherwise, please feel free to contact us on 07 3808 3566 or email at mail@ipgateway.com.au

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