Amazon has a wide range of intellectual property related policies that helps to protect the registered sellers from others counterfeiting their products. Over the years several complaints have been filed by the registered sellers against counterfeit products being sold in Amazon and thereby losing their revenue. It was with this intent that Amazon had introduced a brand registry which provides powerful tools such as text and image search, so that the original seller can report if there is any counterfeit products being sold. It covers trademarks, copyright, patents, industrial designs and designs. The article analyses the importance of the designs patents and how it enables the sellers to increase their revenue.
In India, The Designs Act 2000 grants protection to the designs. To meet the criteria the design must be original, undisclosed to anyone in India or other country by publication or used in any manner, must significantly distinguish one’s design from that of others and must not contain any obscene or scandalous matter. So, once the seller is registered under Designs Act, he gets copyright protection for 10 years. A design patent is similar to an industrial design. It protects the designs such as shape of the article, a particular style or look or even the surface ornamentation. Designs protection is granted only for their appeal and it does not have any utilitarian functions, i.e., the designs are essentially different from that of the product and does not say anything about their functionality. So to constitute a design infringement is really hard. Such type of infringement takes place in Amazon only when sellers try to list and sell products so similar to the registered seller’s design and that it causes confusion in the minds of the people.
The sellers in order to avoid design infringement must make sure that original designs are being uploaded and also must try to avoid imitating the designs of other registered sellers. From this, we can say that a registered seller has an edge over others. They being registered can enroll in Amazon Brand Registry and search for any violations and report if any. Thereby they can protect their revenue from being diverted to others.
However frivolous claims of infringement on generic products can be made and to counter it, the seller has to prove that such infringement is not valid or that the products he was selling was of generic nature.
The consequences of a design patent infringement can be suspension of account, court appearances including cost payment and losing a listing in Amazon can affect the seller’s reputation too. If the patent owner proves the registration, then the other party will have to pay damages, lost profits which are nothing but the profits which could have been earned by the registered seller if their design was not counterfeited, reasonable royalties or even total profits. It is unfortunate that many sellers are not aware of such protections and Amazon policies and thereby tends to lose revenue.
By browsing Amazon Seller Central forums one can find out how the Amazon patent infringement cases are escalating.1 It is a costly affair and time consuming to resolve the infringement issues.
The following are the ways in which one can report an infringement-
Report infringement via Amazon- One way to report the infringement of design patent is by way of reporting through Amazon itself. There is a form available, the aggrieved seller can simply fill the form by filling all the details including the patent registration details, ASINs and contact details. If Amazon finds it be accurate, it will de-list the infringing party’s products from Amazon. It’s an easy way to prevent infringement.
Amazon Brand Registry- Another way to report the infringement is via ABR. If the seller is a rights holder he can enroll himself in the Amazon Brand Registry. It provides the enrolled sellers to have image and text search to find out if there is any infringement or increased authority over product listings under your brand name. Then if such violation is found out, the original seller can cause to send a notice of IP infringement with contact details. It differs from form filling in a way that ABR provides for 3000 characters description and can attach any links or files to prove the infringement which is 1000 characters in form filing method.
Utility Patent Neutral Evaluation Pilot Program- In 2019, Amazon launched it’s UPNEP pilot program which is more robust and cost effective mechanism than the above two methods to report infringement. However, the party can be enrolled in this only by invitation.
To sum up, even though proving a design patent is a difficult task, once its proven that there is counterfeit of the seller’s registered design the consequences can be devastating for the party counterfeiting. On top of the accounts being suspended, the party can be asked to pay the damages, lost profits or even the total profits earned by counterfeiting the designs. Thereby, it is necessary to have a proper legal check before listing the products on Amazon. It is also necessary to read the Amazon’s Intellectual Property Policies to avoid any hurdles in the future.
Amazon Patent Infringement: What is a Design Patent? What Must Amazon Sellers Know? INQUARTIK, (July 27, 1:31 PM) https://www.inquartik.com/blog/intmd-design-patent-infringment-notices. ↩
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