Beyond the glamour: Amazon Brand Registry and brand protection online

By Peter Karcher and Elle Zhang

You are a successful beauty product expert, blogger, entrepreneur, Instagram sensation and most importantly, a hard working business owner. You sell your popular products (these life-changing little bottles of face oil) through online shops and platforms.

You go to business events and are interviewed by trendy magazines. It is just, all, so, glamorous. But life is not going to let you have it all. One day, you see products that are extremely similar to yours being sold online (the logo, the little bottle and the overall “look”), by some copycat riding your hard earned success wave.

The increasingly active and vibrant online marketplaces are wonderful platforms for business owners to sell and showcase their products. However, its convenience and popularity have also made it a perfect place for copycats to mislead customers and lure them into buying counterfeit products (like this one, Olay is probably not Okay with this).

Register your Trade Mark!

You have your company name and business name sorted but they do not give you any proprietary rights. By registering your trade mark (could be words, brand, sign, logo), you have the exclusive rights to use your trade mark in relation to your products and / or services.

As an owner of a registered trade mark, you have the right to take appropriate action against the copycats to stop them from using a similar brand for the same or similar products / services. This is particularly important if you are selling products online.

Amazon Brand Registry

In order to create a safe and trusted experience for its customers, Amazon developed the Amazon Brand Registry function that helps brand owners protect their registered trade marks on Amazon and deal with counterfeit goods.

Once a brand is registered with Amazon Brand Registry, the brand owner will have access to various features, such as:

  • proprietary search tools, such as text and image searches to help them search for potentially infringing / counterfeit goods;
  • more control over their product listings;
  • shorter approval time for product advertisements.

Here is another reason why you should register your trade marks – currently, only brands with a registered trade mark (in the form of a word mark or a combination mark with word(s)) are eligible to join the Amazon Brand Registry. The trade mark must match the brand printed on the products / packaging. The Amazon Brand Registry will only accept enrolment of registered trade marks in one or more of the following countries: Australia, United States, Brazil, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the United Kingdom and the European Union.

How to enroll a brand in Amazon Brand Registry

At this stage, in order to register your brand on Amazon Brand Registry, you will need to provide the following information:

  • brand name that is registered as a trade mark in the form of a word mark or a combination mark;
  • registered trade mark registration or serial number;
  • for IP Australia marks, the trade mark type must be listed as “registered / protected” and the acceptable kind of marks must be listed as “Word” or “Word, Device” and match the brand name;
  • images of the brand’s logo, if you have one;
  • images of products and packaging that carry the trade marked brand name in a permanent fashion. If the product is not branded, the packaging must be branded;
  • a list of product categories (e.g. apparel, sporting goods, electronics) for which the mark is registered; and
  • a list of countries where the brand’s products are manufactured and distributed.

It is worth noting that Amazon also provides a public report infringement form for reporting alleged intellectual property infringements. An Amazon account is not required to report infringement through this avenue to Amazon.

Protect your IP

Your intellectual property is part of your business assets. Your trade mark, in particular, is one of the most important ways in which your products / services can be identified and distinguished. Protect it, register it. If online platforms, such as Amazon, is one of your main sales channels in Australia and you haven’t registered your trade mark, give us a call.

This bulletin is produced as general information in summary for clients and subscribers and should not be relied upon as a substitute for detailed legal advice or as a basis for formulating business or other decisions. ClarkeKann asserts copyright over the contents of this document. This bulletin is produced by ClarkeKann. It is intended to provide general information in summary form on legal topics, current at the time of publication. The contents do not constitute legal advice and should not be relied upon as such. Formal legal advice should be sought in particular matters. Liability limited by a scheme approved under professional standards legislation. Privacy Policy

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