In the digital age, many vendors have expanded beyond brick and mortar shops and now sell their goods and services online. While some use purpose-built websites, many rely on online retail platforms, such as Amazon, eBay, AliExpress, and Taobao. These online retail platforms have undoubtedly transformed the e-commerce space by assisting vendors to expand their customer reach and improve their bottom lines; however, these platforms have also become a hotbed for anti-competitive activities – a serious concern for any vendor.
Trademark Protection
As a business owner, it is important to implement a pro-active trademark protection strategy so that you can capitalize on the benefits and mitigate the risks of selling your goods through online retail platforms. Below are some strategic points to consider:
- Register your trademarks
Apply to register your trademarks: it is never too early to do so. Jurisdictions around the world are moving in the direction of, or have already adopted, a first-to-file trademarks system. That is, an applicant who has applied to register a trademark is deemed to have first rights in and to that trademark – until the contrary is proven. Some trademark offices take a long time to examine a trademark application (i.e. years), while others take a shorter period of time (i.e. months).
Depending on where and when you're planning on launching your next successful e-commerce business, you should also strategize on where and when to file trademark applications to protect your trademarks.
- Use the tools provided by the online retail platform
In an effort to combat anti-competitive behavior, a number of online retail platforms have introduced policies and programs to protect both vendors (who may face decreased sales, brand equity, and/or goodwill) and consumers (who may be misled into purchasing counterfeit or imitation products). Examples of such programs include Amazon's Brand Registry and Project Zero, and eBay's VeRO program. It is important to both understand and use the tools provided by your online retail platform of choice.
Under eBay's Verified Rights Owner (VeRO) program, intellectual property owners and their representatives can report infringing eBay listings through the VeRO reporting tool, which may result in eBay removing the infringing listing.
Similarly, Amazon offers the "Amazon Brand Registry" program. Vendors who enroll in the Amazon Brand Registry program gain access to a variety of tools that will allow them to better protect their trademarks in the online environment, such as:
- "proprietary text and image searches,
- predictive automation based on reports of suspected intellectual property rights violations, and
- increased authority over product listings with a vendor's brand name"1.
Amazon also recently introduced "Project Zero", a program that, among other things, will allow vendors to remove listings for counterfeit products from the Amazon site directly without going through Amazon's review process. For now, this program appears to only be available to select vendors.
Be aware that each of these programs may have certain eligibility requirements for enrollment. For example, to participate in Amazon Brand Registry, a vendor must have a registered trademark that is: (a) active on the relevant trademark registry, (b) registered in the jurisdiction that the vendor wishes to enroll (currently available jurisdictions include Canada, United States, Mexico, Brazil, Australia, Japan, India, the European Union in general or individually in the United Kingdom, France, Germany, Spain and Italy), and (c) text based or image based.
- Remain vigilant and take action
Notwithstanding the availability of programs that offer your trademarks an increased level of protection in the e-commerce world, do not solely rely on an online retail platform to take action for you. Remain vigilant by routinely reviewing the online retail platform for any misuse of your trademarks. Where misuse is discovered, take action – whether by reporting through the online retail platform's reporting mechanism, if available, or by taking action through legal avenues.
Also, it is also helpful to establish internal policies and procedures to ensure that your employees understand what steps need to be taken when infringement or misuse of your trademarks by third parties is discovered.
Conclusion
Trademark protection is integral to success in the e-commerce world, and it is important that business owners be proactive in protecting their trademarks. Register your trademarks in each jurisdiction in which they will be used. Know and use the tools and programs that are available through the online retail platform that you use to sell your goods or services. Remain vigilant and establish internal policies and procedures to help you take action against infringing parties.
Additionally, while many online retail platforms now offer programs to better assist their vendors with protecting their online presence, it is incumbent on the business owner to ensure that they are eligible to enroll in and benefit from these programs (for example, by ensuring the trademark is registered).
If you are interested in learning more about protecting your trademarks, please reach out to us!
Footnote
1 https://www.amazon.com/report/infringement (accessed April 4, 2019).
The foregoing provides only an overview and does not constitute legal advice. Readers are cautioned against making any decisions based on this material alone. Rather, specific legal advice should be obtained.
© McMillan LLP 2019
