Protecting your IP on Online Marketplaces
HOW TO PROTECT YOUR IP ON AMAZON®, EBAY® AND ALIBABA®
The sale of counterfeit goods is a significant problem on online marketplaces such as Amazon®, eBay® and Alibaba®. Solutions are available directly though these companies, though they vary in the degree of proactivity taken and their accessibility to businesses of different sizes.
Most of the schemes discussed below are based on companies having registered IP rights. However, some protection is also offered for copyright works. Schlich is able to assist companies in establishing IP rights so that they can use these facilities to protect their intellectual property or in escalating matters if that becomes necessary.
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Amazon is currently leading the way in proactively protecting its sellers and customers against counterfeit goods.
Amazon Brand Registry and trade mark infringement: Eligible sellers can sign up to Amazon Brand Registry by providing details of their active, registered trade mark(s) along with other product information such as where the products are shipped from. This information is used by Amazon to automatically remove suspected infringing content. For example, if a product which uses a company's trade mark is shipped from a country which has not been listed by the company, the product listing is automatically removed.
It is also simple for companies registered with the service to report potential trade mark infringement, with Amazon reviewing the information and taking the appropriate action themselves. Companies registered with Amazon Brand Registry also benefit from other services such as image and other searching facilities which can be used worldwide.
Amazon is currently running an invitation-only pilot program in the US and India to protect products featuring trade marks that are pending registration in addition to those with registered trade marks.
Patent, design and copyright infringement: Beyond trade mark infringement, Amazon also offers a simple form to report patent, design and copyright infringement, which Amazon again reviews before taking the appropriate action. This makes it simple for sellers to protect their products on the site without having to engage in costly proceedings against the infringing seller.
Transparency program: Amazon's Transparency program is intended to give assurance to both sellers and customers that authentic products are being sold. Sellers can enrol with the program and apply Transparency bar codes to all their products. Amazon scans the Transparency codes before shipping products supposedly from that seller to ensure only authentic products are shipped. Customers are also able to authenticate the product they have received using the Transparency app.
Counterfeit Crimes Unit: Most recently, Amazon has launched its Counterfeit Crimes Unit to pursue civil litigation against suspected counterfeiters, working with brands and law enforcement officials to hold counterfeiters accountable.
More details and to register with Amazon Brand Registry:
Apply for the pilot program to protect pending trade mark registrations in the US and India:
Report patent, design or copyright infringement on Amazon:
More details and registering for Amazon's Transparency program:
More details and using Amazon IP Accelerator:
More details on Amazon's Counterfeit Crimes Unit:
Verified Rights Owner Program: Although eBay doesn't offer the same proactive service as Amazon, eBay's Verified Rights Owner (VeRO) program provides a simple method for sellers to report potential infringement of their IP rights.
Brand owners must sign up to the VeRO program to report infringement of any kind on eBay. To sign up to the program, a Notice of Claimed Infringement (NOCI) form is completed providing eBay with details of the IP rights owned by the brand owner, eBay will then assist the company in becoming a member of the program.
Once infringement is reported to eBay, it will review and if necessary, take down the infringing listings. The owner of the potentially infringing listing is provided with details of why the listing was removed and how to contact the rights owner directly for more information.
DMCA notification: Alleged copyright infringement can also be reported on eBay via their Digital Millennium Copyright Act (DMCA) notification. This involves providing details of the copyright work and where the allegedly infringing material is located on the eBay site.
More details on the VeRO system, NOCI forms and DMCA notifications:
Register and use the eBay VeRO system in the UK:
Intellectual Property Protection Program: Alibaba offers a similar program to eBay where rights holders can sign up to their Intellectual Property Protection Program (IPPP) by providing proof of their IP rights (as a copy of the registration or grant certificate for registered rights or by completing Alibaba's Copyright Claims Statement for unregistered copyright works). Rights holders can then alert Alibaba to infringing acts on any Alibaba owned website and Alibaba will take down the listing and notify the owner. If issued, counter-notifications will be forwarded to the rights holder for response.
Alibaba Anti-Counterfeiting Alliance: Alibaba additionally set up the Alibaba Anti-Counterfeiting Alliance (AACA) which offers a similar service to Amazon's Brand Registry. However, AACA members are more directly involved in the anti-counterfeiting process, with greater requirements on time, experience and financial commitment than Amazon Brand Registry. Therefore, whilst useful, this service appears tailored to larger companies and is therefore less accessible to small and medium businesses who may suffer the most from counterfeiting.
AACA right holder members have to provide details of their IP rights along with additional information such as criteria for identifying counterfeit products. The AACA members then benefit from, among other things, proactive monitoring by anti-counterfeiting technology, offline leads being investigated by law-enforcement groups and mobile classroom training for individuals submitting take down requests.
Register and use the Alibaba Intellectual Property Protection Program (IPPP):
Information on the Alibaba Anti-Counterfeiting Association (AACA):