Online platforms have a fundamental interest in promoting and facilitating IP protection since they need to ensure that their users trust them and that they comply with the law.
Hence, over the years most reputable online marketplaces have developed reporting tools for IP owners to flag alleged infringement by third party listings, which means it can be fairly quick and straightforward for IP owners to enforce their IP. Infringing products that may appear on online market places include counterfeit products that, for example, may use a third party’s brand without the permission of the trade mark owner.
Generally, when a seller suspects an infringement of their IP rights, the first step is to submit an online form (usually available on the website of the online marketplace) detailing the information about the alleged infringement and the IP rights in question.
In most cases, if a registration number for a registered IP right is provided when submitting the form, the platform will promptly suspend the alleged infringing listing.
What can you do if you have not registered your IP?
Some forms provided to aid in the removal of infringing goods cannot be submitted without a registration number. Therefore additional challenges can arise if an IP owner is reliant on unregistered IP rights.
In that case it is of course possible to use the traditional way and to try to contact both the online marketplace and the alleged infringer directly. There are also companies such as SnapDragon, which specialize in brand and IP protection that can assist with the enforcement of unregistered IP rights online. And of course, it may be possible to take legal action (although that may end up costing more than simply having registered the IP in the first place!).
A few notable examples
Amazon is one of the platforms that has been doing a pretty good job in trying to facilitate things for rights holders.
IP Owners can report infringement concerns related to any type of IP via an online form if they have a registration number.
Moreover, brand owners who sell on Amazon can enrol their brands in the Amazon Brand Register. This gives access to a number of monitoring and reporting tools, including proprietary text and image search to spot infringing trade marks and provides increased authority over product listings with the brand name.
In order to enrol in the registry, owners must have a registered trade mark from one of the listed national offices, which includes the UK, EU, US, Canada, Australia, India and Japan, among others.
It is also possible for brand owners to delegate the monitoring of their brands on Amazon to their IP attorney by adding them as an additional user once the brand has been added to the Amazon Brand Register.
Moving to another notable online marketplace, eBay’s attempt to fight counterfeits has been concretized in the Verified Rights Owner (VeRO) Program. The VeRO program allows owners of intellectual property rights and their authorized representatives to report eBay listings that may infringe on those rights by submitting a Notice of Claimed Infringement (NOCI).
eBay will generally suspend the allegedly infringing listing as soon as it is reported by an IP right owner.
eBay sellers can also create a VeRO participant profile page in which they list their IP rights, so that third parties have ready access to the brands’ products and legal positions.
The above are just a few notable examples. Many other platforms (e.g. Etsy, Alibaba, Youtube, etc.) have similar tools and procedures in place.
Conclusion
IP enforcement can be expensive and time consuming, however when it comes to online marketplaces, it is often possible to obtain great results by simply submitting an online form.
This process can be simplified if IP rights have been registered.
Given the potentially high cost of enforcing IP rights via legal routes and the relatively low costs of registering most types of IP (in particular, trade marks and designs) it seems particularly worthwhile for IP owners who intend to trade online to consider registering their IP rights so that they can get access to the full range of IP protection services that are being made available by online marketplaces.
At Scintilla, we help innovative companies get a grip on their intellectual property. Our unique commercial approach combines registration of patents and trade marks with strategic input so that IP can be a springboard for business growth. If you would like to discuss your IP needs, do contact us or book a free initial consultation!