Intellectual property in e-commerce - protecting your brand rights

E-commerce has grown rapidly over the past decade, accelerated by the COVID-19 pandemic, which significantly altered purchasing habits and fast-tracked the shift to digital shopping by an estimated five years.

Online marketplaces have become rife with counterfeiters looking to exploit popular brands, as well as unscrupulous businesses using confusingly similar names and logos. Faced with the prospect of damage to brand reputation, risk to consumer trust and revenue loss, brand owners can feel that protecting their brand is an impossible task. There are, however, a few simple ways to guard against IP infringement:

 

1. Register your key brands as trade marks.

Every brand protection strategy should begin with the identification and registration of key trade marks. Owning a registered mark grants a monopoly on use of the mark in relation to the goods and services for which it is registered and is your strongest tool in quickly shutting down infringers. Further, enforcement of brand rights is considerably quicker and easier than with an unregistered mark. Bear in mind that you may need to review your registrations as your products and services develop.

 

2. Once your brand is registered, sign up for the e-commerce marketplace’s IP protection tool.

Many e-commerce and social media platforms provide specific IP protection tools which are available to businesses with registered rights. These include:

• Amazon’s Brand Registry and Transparency programs: Designed to help brands maintain their credibility, these programs were covered in more detail in 'The battle to protect IP rights on Amazon'.  For companies enrolled in the Brand Registry, Amazon’s Project Zero offers automated daily scanning of product listings and grants brand owners the authority to remove suspected counterfeit listings themselves via a self-service counterfeit removal tool;
• eBay’s Verified Rights Owners (VeRO) program: This allows IP owners and their representatives to report infringing listings, with a view to their removal from the site;
• Facebook’s Brand Rights Protection tool: This allows brands to search for their registered trade mark in marketplace ads and report any infringing content. In addition, the platform’s Marketplace Rights Manager is a copyright management tool, which allows users to establish content ownership and monitor content.

 

3. Invest in a watching service.

Key in your battle against infringement, a trade mark watch will monitor e-commerce sites for unauthorised use of your brand and alert you when there is a possible threat.

When taking action against trade mark infringement, brand owners should be conscious that UK legislation provides protection against ‘groundless threats’ of infringement proceedings. If you need to enforce your right, you should seek professional advice before approaching an alleged infringer, so that you are not exposed to an injunction and/or damages for loss caused by any groundless threats.

 

We can assist you with legal advice

If you have any questions in regard to this article, or need any support with protecting your brand, please contact our specialist commercial & technology team at [email protected].