By Design: Online Enforcement of Designs

By Sanjeet Plaha, Senior Solicitor

Buying and selling of consumer products has never been easier, with businesses having a worldwide reach through the world wide web. One of the drawbacks to this is the inevitable and ever-increasing trade (and demand) in fake and counterfeit products. In order to protect those rights owners, online retailers, particularly those selling goods on behalf of third party parties such as Amazon and eBay, have different measures in place, namely Amazon’s Report Infringement Form and eBay’s VeRo programme.

Amazon

Amazon’s Report Infringement Form is exactly just that – it is a very simple form to be completed by the owner of a design to inform Amazon of an infringing listing. Amazon simply needs the product’s identification code and the IP right concerned; all complaints are made through the rights owners’ Amazon account. Importantly registered and unregistered designs can be used to take down a listing.

eBay

eBay has its long standing VeRO (Verified Rights Owner) policy which allows rights holders to report listings or products that infringe their intellectual property rights. A rights owner (or its authorised representative) completes an online “Notice of Claimed Infringement” form, setting out the rights holder’s details, details of the infringing products and the design rights being relied upon.

The seller is made aware of the complaint only after the auction is delisted. eBay then provides them with the Right Owner’s contact information in order for the two parties to discuss the alleged infringement; the good news for rights owners is that eBay does not adjudicate complaints. During this time it is likely that the sellers account is frozen as well as their listings removed. This may last from several days to an indefinite period.

Again, both registered and unregistered design rights can be enforced using the VeRO programme.

Pros and cons

Online enforcement of designs on Amazon and eBay appears to be a quick and cost-effective way to deal with infringers and counterfeiters.

However, the systems are open to abuse, with rights owners able to prevent the sale of their goods, even where such a sale is legitimate. There have also been instances where individuals have posed as IPR owners in order to raise non-existent claims of infringement against their competitors in order to push them out of the market. It may be that, over time, selling platforms such as Amazon and eBay will have to put fairer measures in place to ensure that their systems are less open to being exploited.

In the meantime, right owners should take note of how Amazon and eBay’s take down tools can assist their brand and product enforcement strategies and third party sellers should be mindful of how these policies could be harmful to their business, if they are accused of infringing third party rights.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual Haseltine Lake Kempner advisor.