Amazon: assisting brand owners to protect their registered trade marks

It has been reported recently that Amazon® is now the fifth largest retailer in the UK, running closely behind the UK’s four biggest supermarket chains. With a marketplace as big as Amazon®, it’s not surprising that from time to time brand owners are faced with having to deal with third parties offering counterfeit goods or using the brand owner’s trade mark without their consent in order to ‘bag a sale’.  As a result, there is a growing need for brand owners to protect and manage their intellectual property rights and brand image as a whole when selling on Amazon®.

Amazon’s Brand Registry

In April 2017 Amazon® launched its new and improved Brand Registry in an attempt to eradicate counterfeit goods and protect its customers and sellers. The Brand Registry is designed to assist brand owners in protecting and monitoring their registered trade marks on Amazon® as well as “create a more accurate and trusted experience for customers”.

From a brand owner’s point of view, it enables them to have more control over product listings and offers priority search tools to assist them in searching for and monitoring infringement of their registered trade mark on Amazon®. It should also enable Amazon® to remove infringing listings quickly, reducing loss of sales to the brand owner.

How to sign up to the new Brand Registry

In order to sign up to the new Brand Registry the brand owner needs to have a registered trade mark that incorporates a word or words, either on their own or in combination with other elements. For brand owners selling from the UK, the trade mark needs to be registered at one or more of the following trade mark offices: UK, EU, France, Germany, Spain, Italy; and, the trade mark needs to match the brand name printed on the products or their packaging. If the trade mark is not on the product itself then it needs to be on the product’s packaging.

The brand owner then needs to provide Amazon® with details of their registered trade mark(s) including:

  1. The trade mark registration number and confirmation of the relevant trade mark office;
  2. A list of products that the trade mark is registered for;
  3. A list of countries where the products are manufactured and distributed;
  4. Images of the brand logo (if they have one), products and packaging.

Once it has this information Amazon® will verify that the application has been submitted legitimately, by contacting either the registered proprietor or representative as stated on the relevant trade mark office website.

Whilst enrolling on the Brand Registry will not completely stop infringement of trade marks on Amazon® it will enable brand owners to monitor the Amazon® marketplace and have infringing listings removed quickly.

Amazon® advise that any brand owners that enrolled in the Brand Registry prior to 30 April 2017 should consider re-enrolling if they meet the new criteria. It is still possible to report trade mark infringement if you are not signed up to the scheme but the process of monitoring and getting those infringing listings removed will no doubt be longer and inevitably lead to loss of profits.

Any brand owner that does not meet the criteria should consider registering a trade mark and using that trade mark on its product and/or packaging.

Serjeants’ expert trade mark attorneys offer a free 30 minute consultation to advise you about your trade mark registrations or proposed applications and can assist you in filing applications worldwide. Please contact us here or call 0116 233 2626.