Brands and online platforms: protecting your products

Finding a branded product for sale on an online platform is now commonplace, as we are in an era where e-commerce is skyrocketing. But what are the implications for brand owners? 

As we have written previously, last December, the Court of Justice of the EU (CJEU) judged that luxury retailers could prohibit third-party online platforms, such as Amazon and eBay, from selling their products. From this judgment, luxury brand owner Coty was able to block sales of its eligible products on Amazon, arguing that it damaged their image, as they only wanted their goods sold through high-end retailers to maintain the prestige.

Then, footwear chain Birkenstock terminated its relations with Amazon after alleging that the online giant had failed to prevent counterfeit products from being sold on its platform. However, Amazon and eBay are not the only online platforms brand owners are turning against. In the same month, Facebook revealed that it removed nearly three million posts due to trademark and copyright infringement complaints in the first half of 2017. Brand owners are becoming increasingly wary of their products being vulnerable to infringement on online platforms, and the data suggests this is for good reason.

Getting to know takedown procedures

Most online sites have takedown procedures in place, where you can report to the platform alleged unlawful or punishable content, which can end with the removal of such information or website, or even the infringing seller being blocked. In particular, eBay has the Verified Rights Owner (VeRO) process, which is generally effective, with infringing listings being removed quite quickly. Amazon provides a brand registry where brand owners can file their claims to IP rights to prevent third parties from infringing; although it is generally not considered as effective. Many users encounter issues with these procedures; however, as a general rule, for cases of clear trademark or copyright infringement, takedowns are quite simple. Although, it’s worth noting, many online platforms often only remove the infringing content, rather than removing the product for sale completely.

Protect your brand online

We recommend the following tips in the first instance to best protect your product online:

• Ask your Novagraaf attorney for IP advice prior to launching a product to ensure that protection is in place from the start.
• Ensure you have registrations in place for all aspects of your product e.g. trademarks, designs and patents.
• Use the online brand registration schemes on sites where your products may be sold.
• Legal representation is required as part of some brand registration schemes, including Amazon, and will assist with any issues raised during the takedowns, so be sure to obtain this.
• For Chinese sites, such as Alibaba, seek local Chinese advice on infringement. Keep in mind that the site will work more efficiently in the local language and there are many local challenges, where expertise in dealing with Alibaba is key.
• Monitor use of IP on popular websites to see when action needs to be taken. While there are specialist firms and services which can provide in-depth services, it is also possible to set up simple processes, i.e. Google Alerts, although it’s important to bear in mind that these are not as comprehensive.