09/10/2020
Amazon’s intellectual property (IP) policy is designed to protect sellers by preventing the sale of counterfeit or knockoff goods on Amazon’s various websites. But, what can you do, as a seller, if you think one or more of your product listings has been unfairly removed because of an existing registered design (or design right)?
Amazon’s IP policy allows an IP rights holder to take down Amazon listings of products that are allegedly infringing IP rights such as a registered design, a registered trade mark, or a patent. However, there is a problem in that registered designs that are potentially invalid can be used by their proprietor to remove an Amazon product listing.
European and UK registered patents and trade marks are substantively examined by an IP office before they are granted, which means that they are likely to be valid if used to remove a product under Amazon’s IP policy. However, European and UK registered designs are not substantively examined before registration. The EUIPO and the UKIPO instead only carry out a formalities examination. This type of examination procedure results in lower filing and prosecution costs, but it leaves open the question of whether or not the registered design is new and has individual character.
So, what can you do if a registered design has been used to remove your Amazon product listing?
One option is to apply to invalidate the registered design that is being used against you if you that it is the same or similar to an earlier disclosed design. You can apply to invalidate a registered UK design at the UK Intellectual Property Office, and you can apply to invalidate a registered Community design at the EU Intellectual Property Office.
A registered design can be invalidated on a number of grounds, but the most common grounds are that the registered design lacks novelty over an earlier published design or product, or that the design lacks individual character over an earlier published design or product. If the registered design is not new, or if the registered design has the same overall impression as an earlier published design, then an invalidation action should be successful.
There is also the added benefit that, should the application for invalidation be successful, the applicant can make a claim for costs for filing the application for invalidation from the registered design proprietor.
At Reddie & Grose we can help you to apply to invalidate a registered design that is being used against you. Invalidating the registered design should allow you to relist your product on Amazon (or eBay etc.) so that you can keep selling. We can also help you to defend against, or respond to, an application for invalidation of one of your own registered designs.
If you would like any assistance on anything discussed in this article, or if you would like further information, then please contact us.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
