Nowadays every business is aware of the importance of the protection of its trademarks in the course of online trade and it is old news that counterfeiting is a vast, successful and global business that increasingly operates online.
Small postal services are the top method of shipping counterfeit goods because those are an effective way to avoid detection and reduce the risk of penalties.
The countries that suffer most from trademark infringement are the United States, Italy and France.
This new rise of online counterfeit activity requires comprehensive strategy and cross-border cooperation.
In respect of this problem, Amazon has set up a service called “Amazon Brand Registry” which allows companies and sole traders to promote their brands in Amazon while taking advantage of the guarantees related to protection.
In enrolling said Registry, the requirements are the following: first of all, register your trademark in your jurisdiction of interest, it must be a word mark active in the market, and the mark has to match the brand name printed on the products or package.
The main service offered is to provide owners with access to concrete tools such as proprietary text and image search. There is also the possibility for the agents to join this service as users by invitation of a registered user. Furthermore, a successful enrollment will enable users to list products for said brand.
To sum up, Amazon has provided businesses with useful tools that improve the protection of trademarks in the online market.
However, sometime, online brand monitoring tools fail to locate trademark infringements. This happens when the product listings do not mention the protected trademark name, but only include photos of the products copied from the original product listings and websites.
Indeed, counterfeiters appear increasingly to use images of products, avoiding to mention the brand, and oftentimes the trademark owners own the photos of the genuine products.
In the above cases, new tools are helping brand owners to search e-commerce websites for photos that are identical to their photo of products.
At this point, Copyright Law comes to help as brand owner’s photographs are protected by Copyright from the moment of creation and globally, and they can rely on this rather than trademark law, which is a registry based right at national basis.
In some jurisdictions (e.g. the USA and Spain) there exist quick and effective takedown procedures that enable brand proprietors to request to the administration the deletion of the infringing photos (and so, of the takedown of the infringing product listed on the fake website) in a quick and inexpensive way, by claiming mere copyright protection on the photo, rather than trademark ownership.
Authors:
Miriam Santin
Riccardo Ciullo
