In recent years, there has been a significant rise in online sales. Consumers have more choices in terms of products and the variety of e-stores they can buy from. Due to a vast range of choices available to buyers, sometimes it can be challenging to make sure the items sold on these e-commerce platforms are genuine. The sale of non-genuine, infringing products can be damaging not only to the businesses but also dangerous to consumers.
In order to protect businesses and consumers, large e-commerce platforms have introduced internal policies and procedures which enable IP right holders to report infringing or counterfeit items and request the removal of such listings.
The rules and procedures for dealing with counterfeit and infringing items, as well as the unauthorised use of registered trade marks and designs vary across stores and platforms. However, most have one requirement in common – the business or individual reporting the infringement must be able to demonstrate that they are the rightful owners of the relevant IP relied on, i.e., they are the owners of the trade mark, patent, copyright or registered design.
First things first. Is the listing actually an infringement or a counterfeit?
If the answer to the following questions is “Yes” then the online listing may be infringing or counterfeit and you may be entitled to request a removal or investigation of the producer/seller:
- Are you a right holder of the trade mark/design of the product in question? You will be required to demonstrate your ownership of the IP right. The easiest way to prove this is to provide a store or platform with your registration certificate showing ownership of the IP right relied on. Therefore, we recommend making sure that your IP rights are registered. Copyright is the only exception to the rule, as it arises automatically and cannot be formally registered in the UK. However, in some countries such as the US and China, copyright must be registered if you wish to rely on it;
- Is the item which makes reference to your brand manufactured, produced and/or sold without your consent?
- Does the seller make unauthorised reference to your brand without your consent?
The list above is not exhaustive and there may be other scenarios where the item may be infringing your IP rights.
In a nutshell, whether you are a sole trader or a business owner it is crucial for your brand to make sure all IP rights related to it are registered and maintained. Once you have registered rights it is much easier and more cost efficient to prove your rights and prevent an infringer or a counterfeiter.
If you have noticed any unauthorised use of your IP rights or you came across counterfeit products, please contact Stephens Scown and we can assist you to take down such listings. Stephens Scown can also help with national and international trade mark and design filings.