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Counterfeiting on Amazon

Posted: Fri Jun 17, 2016 6:40 am
by bbloke
This is a bit of a sorry tale and, perhaps, one you are familiar with.

I design, manufacture and sell badges online. The badges are packaged and branded with my registered trademark. I do not sell the products wholesale.

Lately other sellers - all based in China - are offering counterfeit versions of my products on Amazon.

Many of the design are quite complicated, so I think it is reasonable to assume that they have simply copied my original design by taking the web image from the amazon product page.

However, as web images are far lower resolution they are not appropriate for printing. Any product created by this method will be low quality.

In addition, they cannot possible use the same branded packaging as it is bespoke manufactured exclusively for my own use.

I have complained to each seller, each of whom has admitted their fault and promised to remove the offending offers. However, nothing has happened as of yet.

I have complained to Amazon, citing my registered trademark. They have refused to do anything. They say that I must make a test purchase for each item before they will investigate the complaint. As of today there are over 100 of my designs being counterfeited, so I do not want to take this route.

Anecdotal evidence from seller forums suggest that Amazon will do nothing in cases like this, even if test purchases are made.

What alternative legal recourse do I have, if Amazon continue to allow counterfeiting of my products?

Posted: Fri Jun 17, 2016 8:13 am
by AndyJ
Hi bbloke

Good to hear from you again.

Just so I am clear about exactly what has and has not been copied, are you referring to the copying of the wording and/or artwork on your badges, when you use the word design. The reason I mention this is that in Intellectual Property law 'design' has much narrower meaning which is the external form and appearance of an object. Design right is something which can be registered (unlike copyright) and it would then protect the surface decoration of an object. Unregistered design right exists like copyright from the moment a design is created and prototyped or manufactured, but the unregistered variety does not include any surface decoration so wouldn't apply in the cases you are referring to. You also mentioned your trade mark. Are the sellers using your actual mark on their packaging and/or adverts?

Assuming that you are talking about the artwork which is applied to the badges, then copyright seems to be the appropriate area of IP law. The copies sound as if they have been directly copied with no alteration (not like, say, your WTF badge which featured in an earlier thread). If so then that amounts to copyright infringement and Amazon are liable for secondary infringement because they dealing in the infringing goods contrary to Section 23(b) of the Copyright Designs and Patents Act 1988. Under both US and UK law they can only claim immunity from liability if they act expeditiously to remove the references to the infringing articles once they have been made aware of them. Their internal policy does not amount to 'acting expeditiously'.
If your trade mark is also being infringed, then once again Amazon become liable under Section 19 of the Trade Marks Act 1994. This applies equally to Amazon as it does to a market trader selling dodgy 'Rolex' watches. Once again EU law (the ECommerce Directive) provides a degree of protection to online service providers such as Amazon if they act expeditiously to remove products which they have been notified about. The difference between copyright and trade mark law in this respect is that it can be an offence to make a false claim (a groundless threat of bringing an action) concerning trade mark infringement.

In cases where both the copyright and trade mark infringement is on a large scale this can amount to a criminal offence. I don't think that this is necessarily the case here but if Amazon continues to prevaricate it might well develop into a criminal matter especially where trade mark use is concerned.

I think your best course of action is to contact your local trading standards office and see if their intervention can persuade Amazon to take you seriously. If not then the next step may be a formal solicitor's letter to Amazon.

Posted: Fri Jun 17, 2016 8:42 am
by bbloke
Hi AndyJ,

Thanks for your swift reply.

With regard to the design rights, yes I am referring to the copying of the wording and/or artwork.

They are copying the artwork/wording, with the exception of the text "Pin It On ®" which is in small print at the side of the pin and can't be seen on the Amazon pictures.

With regard to the Trademark, each Amazon listing shows pictures of the badge and the trademarked packaging.

To offer a product on Amazon a seller must supply the item exactly as described on the product page, i.e. in my own trademarked packaging, which they cannot do as I have the packaging bespoke manufactured for my own use.

Here's an example product: ... FMM1EYW99G

Does any of this additional info change your advice?

Again, many thanks!

Posted: Fri Jun 17, 2016 4:13 pm
by AndyJ
Hi bbloke,

I think you have mentioned that you haven't actually made any test purchases so you are presumably unaware what packaging is being actually used by the other suppliers. To sustain a trade mark challenge you would certainly need at least one example of the allegedly infringing packaging, although it is possible that trading standards would do this on your behalf as they can ensure that the evidence is handled in the correct way which would satisfy a court, especially in criminal proceedings.

But apart from that I don't need to change my earlier comments. There would appear to be a basis for a copyright infringement claim, and depending on the actual packaging used by the other suppliers, a trade mark infringement claim also. If the trade mark issue rests solely on the pictures used on Amazon then you may have a claim for passing off which is related to, but different in emphasis from, trade mark infringement. In passing off claims, the element of misrepresentation is fairly import and so you should take screenshots which show your packaging of the actual listings of all the other sellers you are aware of.

Then get on to trading standards and see what they can/will do to help. Bear in mind not every local standards trading office will have expertise in dealing with all intellectual property issues (although they should be OK with trade marks), and so if this is the case with yours, you should ask then to refer the matter to an office which can deal with it.

Posted: Fri Jun 17, 2016 4:25 pm
by bbloke
Thanks again. :D It's great to know I have options.

The good news is that my campaign of firmly complaining to Amazon and directly to the infringing sellers seems to be working. The number of my products being counterfeited has dropped since this morning!

Posted: Mon Jun 20, 2016 12:38 pm
by twentieth
There is another cause of action which subsists in the badge designs: Community Unregistered Design Rights. Unlike domestic design law, Community rights extend to surface decoration and would therefore cover the designs on the badges.

This sounds very much like a case I'm familiar with, which might be worth a read:

Posted: Mon Jun 20, 2016 1:40 pm
by bbloke
Thanks for that, much appreciated.

In this instance my persistent emails to Amazon and the sellers in question has reaped rewards.

All of the counterfeits have now been removed from Amazon!

Posted: Mon Jun 20, 2016 5:52 pm
by AndyJ
Hi bbloke,

Glad to hear that your perseverance is paying off. And twentieth is quite right about community unregistered design right. However bear in mind that it only lasts for 3 years from the date the product made to the design is first marketed, and you would need to prove infringement (unlike with the registered variety of both UK and Community designs).