Amazon design right infringement notices

What should businesses do?

Tom Griffin, Solicitor

The UK IPO does not examine whether a design is valid, namely whether it is novel and has individual character, before registration.  At the same time, online marketplaces are increasingly using automated tools to process intellectual property complaints.  As a result, invalid registered designs may be relied on to secure the removal of product listings from Amazon and other online marketplaces.

Combined with the rigid approach of many online marketplaces to IP complaints, which means that they are often reluctant to get involved in the detail (over and above the existence of a registered right), this is a recipe for frustration for businesses that trade on such online platforms.

There are several options available to respond to such an infringement notice, including:

1. Non-Infringement Option – One option that Amazon often offers is for the seller to submit a letter of non-infringement from a UK IP solicitor. If successful, this provides a relatively quick and cost-effective method to reinstate a listing. We have experience in preparing such letters, and understand the evidence and level of detail required to ensure the best chance of success.
2. Invalidation Proceedings – You can seek to invalidate the registered design before the UK IPO and, if successful, the basis for the infringement notice may be narrowed or removed entirely. However, this can be a relatively time-consuming and costly option, although it can be appropriate in certain circumstances (whether on its own or alongside other options).
3. Contact the Rights Owner directly – Another option is to write to the Rights Owner directly in an attempt to get them to withdraw their complaint. The content will depend on the circumstances, though it may raise the issue of unjustified threats (as set out below).
4. Court Proceedings – An Amazon infringement notice can constitute an “unjustified threat” to bring design right infringement proceedings. Therefore, if such a notice is abusive or meritless, there is the option to bring court proceedings. However, this is a costly option.

The correct response will depend on the design registration, the extent of any similarities between the appearance of the registered design and the product, the evidence available, and the commercial impact of the takedown.  Acting promptly and appropriately is important, particularly where a suspended listing is affecting sales, stock, or customer relationships.

If you have any queries relating to Amazon takedown notices, registered design infringement, or other online marketplace IP matters, please contact a member of our intellectual property department on 0161 832 3434 or at [email protected].