Design Right Enforcement on Amazon

Introduction to Design Right Enforcement on Amazon

In a fast and evolving marketplace, providers like Amazon have become a battleground for intellectual property enforcement. Individual sellers, large brands or retailers and manufacturers all face the increasingly difficult challenge of protecting their designs and trademarks. In the UK, Design Rights offers vitally important protection; however, its enforcement, particularly on Amazon, requires careful consideration.

We at the Trademark Room (Part of the Lawdit Group) are IP specialists and regularly advise clients on both sides of the equation, helping rights holders protect their designs and assisting sellers who find themselves wrongfully accused of infringement. In this article, I will explain what an UK Design right is and how it applies to Amazon, when to file a takedown vs when to appeal, how the misuse of design rights are becoming far to common, how a sellers brand can be hijacked even with Amazon Brand Registry and finally how we at the Trademark room can support you in both asserting and defending claims.

What is a UK Design Right?

In the UK, a design right comes in two forms. An unregistered design right and a registered design right. An unregistered design will arise automatically and protect the shape, look and configuration of the original designs for up to 15 years from creation. A registered Design Right requires a formal application and protects the appearance of a product for up to 25 years and is renewable every 5 years.

These rights are governed by the Copyright, Designs and Patent Act 1988 and the Registered Designs Act 1949. These both previously have been amended post-Brexit to reflect the UK’s split from EU-wide design protection, which has come with its problems. When a party copies a design without permission, it constitutes an infringement. Proving an infringement, especially online, can be very complex.

Design Right Enforcement on Amazon

When a rights holder believes that another party/seller is using their design without their permission, they can file a Design Infringement Report on Amazon. This report is submitted via Amazon’s Report Infringement Form, where the claimant provides evidence of the design right and details of the alleged infringing listing. Fortunately, Amazon are quick to reply and act fast to remove infringing listings; however, this can bring up the problem that this is too easy to abuse. This is why it is clear to understand when a takedown is appropriate.

When Is a Takedown Appropriate?

For a takedown to be appropriate, you must be able to show that you have clear ownership of a UK design right, that the alleged infringers product is identical or substantially similar in appearance, that there is evidence that it has been copied with unauthorised use and that you have attempted to contact or negotiate with the seller but were unsuccessful. These requirements are vital when considering a takedown against an alleged infringer, and due to Amazon’s promise to protect its marketplace, correctly submitted and correct information is likely to result in a quick deactivation of accused listings.

Appealing Against a Takedown

Due to the public nature of Amazon’s marketplace, many sellers report being wrongfully accused of infringing design rights, especially when their products are independently developed, generically designed, or based on standard features, and not in breach of any active UK registered designs. In these cases, Amazon will allow the seller to appeal against this report by responding with evidence of their product’s originality, prior art or invalidity of the claimed design.

However, appeals are often ignored or rejected without explanation, and a seller may be left without stock movement, revenue or resources. This is, unless they involve proper legal guidance, which we at the Trademark Room can provide. We help sellers prepare strong appeals, including formal responses, providing evidence of independent creation and a letter or representation and challenging the legal arguments made.

Unfortunately, there is an ever-growing trend of overly aggressive enforcement, which is alarming. There has been an increasing number of individuals filing fraudulent registered designs to monopolise generic product shapes. These designs, often expired or invalid, threaten new market competitors by copycat brands registering products they did not invent, and by individuals registering designs for basic packaging. These practices breach competition rules and trading standards, yet little action is often taken. This is why it is crucial to protect yourself adequately.

Isn’t Amazon Brand Registry Meant to Prevent Hijacking?

Amazon Brand Registry is a tool that enables brands to protect their Intellectual Property and utilise Amazon-provided tools, including automated package protection, accurate listing control, and the ability to report violations and infringements. The Registry does not protect against all forms of Hijacking. A bad actor can register a design and claim ownership of a product already being sold. They can then report the authentic brand for infringing their fraudulent design, which Amazon, without verifying, sometimes removes the legitimate design. This results in the hijacker selling the same product at inflated prices. In short, Amazon Brand Registry excels at protecting trademarks but not necessarily design rights, making it crucial that your product is as secure as possible.

How The Trademarkroom Can Help

Established in 2001, the Trademarkroom is an Intellectual Property service that specialises in searching and filing trademarks. The Trademarkroom operates in collaboration with our sister company, Lawdit Solicitors, which specialises in the contentious aspects of trademarks. This means that if you face a dispute or opposition at any time during this process, our sister company, Lawdit Solicitors, will be available to assist.

We can assist with legal support in both the enforcement and defence of design rights. We can offer design audits to ensure your designs qualify for protection, assist with design registration, support drafting and submitting a takedown, and provide cease and desist letters if needed, as well as litigation support. For sellers wrongfully accused, we can also assist in submitting appeals against false takedowns and supporting you through relisting any products that may have been removed.

We understand that there is a wealth of information, so we offer a free telephone or e-mail trademark consultation service to make this decision easier. We are happy to answer any questions you may have and ensure that you are 100% satisfied with the search and application process. For a no-obligation discussion or to answer any inquiries, please contact tmr@trademarkroom.com.