Date: 7 June 2021
In April 2021, Amazon reported Q1 net sales of $108.5 billion, representing a 44% increase on the same period in 2020.
This was no doubt helped by consumers moving over to online shopping as governments worldwide put their citizens in lockdown and forced bricks and mortar retailers to close their doors.
Unfortunately, global online marketplaces such as Amazon, eBay and the Chinese platform, Alibaba, are prime sites for selling all kinds of counterfeit goods.
Criminal groups have also been quick to cash in, selling fake versions of in-demand products, including Covid blood screening tests.
So how can businesses try to stop the sale of counterfeit versions of their products without resorting to expensive court action?
A key way is by filing takedown requests. Various online selling platforms provide processes to submit such requests to remove IP-infringing products from their platform. Amazon is one such platform.
Amazon’s “report infringement” form allows a rights owner to file takedown requests based on alleged infringement of the owner’s intellectual property (IP). The IP rights invoked may be any one of copyright, a registered trademark, patent, or design.
A single report of infringement may cover several Amazon Standard Identification Numbers (ASINs) for a particular national Amazon marketplace e.g. amazon.co.uk. Typically, this means it is possible to cover variants of a given product, for example different colours, in a single report of infringement.
The report can be quick and easy to complete. The rights owner must supply evidence of the IP right relied on and give a short explanation to identify why and how a particular ASIN is believed to infringe the IP right invoked.
A successful takedown request results in the ASINs in the report of infringement becoming unavailable, typically within one day of submitting the request. In some cases, takedowns can result in Amazon taking down the entire online store.
The same ASIN, covering the same product, can appear on different Amazon marketplaces – for example amazon.co.uk and amazon.it. One takedown request for one ASIN does not cover that ASIN across all jurisdictions (after all, many IP rights are national rights and may be enforceable in one jurisdiction but not another). Duplicates of a takedown request of a given ASIN for one jurisdiction will therefore have to be filed for the same ASIN in other jurisdictions, but this can be done at very low cost when compared with other options for international IP enforcement.
A successful takedown request takes effect very quickly, typically with a day of submitting the request. The seller’s product no longer appears on the marketplace, disrupting their sales.
Rights holders however, need to continually monitor online marketplaces following a successful takedown request. On Amazon, for example, the seller’s products may re-appear listed under a new ASIN (or, under the same ASIN but on a different domain address). The takedown process may need to be repeated.
One might ask if the same product, re-appearing under a new ASIN, circumvents the takedown process. It should be remembered that the takedown request removed the original ASIN, disrupting the seller’s efforts to supply orders and receive payments for that ASIN through the platform. The disruption to the seller is rather greater than the effort on the part of the rights owner. The seller can start again with a new ASIN, but this will be completely disassociated from the original ASIN, so reviews for the original ASIN are not carried over to the new ASIN. This makes shoppers less confident to purchase products covered by the new ASIN. Thus, it is usually worthwhile to file a takedown request against a given ASIN, even if there is a likelihood that the product will re-appear under a different ASIN. Filing further takedown requests each time the product re-appears is typically significantly cheaper and quicker than other options, such as bringing a court action.
The online marketplace may also close the ‘bad actor’ seller’s store from its site (as well as related stores) and withhold funds disbursements.
The larger online platforms, for example eBay and Amazon also provide rights holders with access to software tools to automate take-downs, making the process more administratively convenient. These tools may be limited to enforcement of copyright and/or registered trade marks, and not patents or design rights.
The seller of the allegedly infringing products has the ability to respond to the takedown request, and may contest it. This can be useful if genuine ‘grey’ goods are involved or an over-zealous rights holder has taken down a genuine distributor’s goods or asserted an invalid right. The onus is initially on the seller to negotiate with the contact listed in the takedown request, for example to explain why the product is not infringing the IP right invoked. In the case of Amazon, a seller convinced that the takedown request is unjustified must correspond with Amazon to have the ASIN reinstated.
At Maucher Jenkins, we have experience with filing successful takedown requests with online marketplaces such as Amazon, eBay and Alibaba and we can provide clients with a monitoring service to act repeatedly and promptly. If necessary, we can simultaneously issue cease and desist letters and infringement proceedings, and/or liaise with law enforcement agencies such as Trading Standards.
We also have experience in successfully defending sellers against unjustified takedown requests, reinstating the delisted products. False allegations of infringement in over-reaching takedown requests or based on invalid rights, can, in certain circumstances, be vigorously defended.
If your business is experiencing problems with online counterfeits and you would like further advice on this topic, please contact:
Joanne Ling (London) – Trademarks
Dr. Michael Nielen (Germany)
Handong Ran (China)