Most small businesses have a presence in the e-commerce marketplace. Online marketplaces provide small business owners an opportunity to reach many new customers around the world, which may not be possible by selling their products solely through their own websites. Undoubtedly, one of the most popular online marketplaces for small business owners is the Amazon marketplace. The issue of counterfeiting on online marketplace platforms is not new. Widespread counterfeiting on Amazon once deterred many businesses from selling on its marketplace. To combat this problem, in 2017 Amazon released a new and improved program for brand owners to easily identify and stop counterfeiters, namely, the Amazon Brand Registry 2.0.
According to Amazon, there are many benefits to enrolling in its Brand Registry program. Some of those benefits include: giving trademark owners more control over their product listings and product pages, which means allowing owners to customize their product listings; providing enhanced search and report tools which enable trademark owners to easily identify potential infringers and to report violations accordingly; and using information provided by trademark owners to automatically and proactively identify and remove product listings containing infringing content. 1
A trademark registration in one country does not entitle protection in other countries. This same concept is adopted by The Amazon Brand Registry. The Amazon Brand Registry requires that there must be an active registered trademark in each country of interest. This also means that the trademark owner must submit an application to enroll in the Brand Registry of each of those countries. One exception is if the trademark owner holds a North America Unified Account (NAUA). A holder of a NAUA is only required to successfully enroll in the Brand Registry in either the United States (i.e., amazon.com) or Canada (i.e., amazon.ca). Approval in the Brand Registry on amazon.com means automatic approval for the Brand Registry on amazon.ca, and vice versa for such owners.
Currently, the Amazon Brand Registry is only accepting trademark registrations granted by the following trademark offices: Australia, Brazil, Canada, the European Union, France, Germany, India, Italy, Japan, Mexico, Spain, the United Kingdom, and the United States. 2 However, the Amazon Brand Registry does not accept all types of trademarks that are registered. The registered trademark must satisfy the eligibility requirements set by Amazon for each country. 2 In general, the Amazon Brand Registry accepts two general classes of trademarks: text-based marks and image-based marks. What constitutes "text-based marks" and "image-based marks" differ for each country. 2
Based on Amazon's criteria, for enrollment in Canada, the registered trademark must either be a "word mark" 3 (which Amazon considers to be a "text-based mark") or a "design mark" 4 (which Amazon considers to be an "image-based mark").
For enrollment in the United States, the registered trademark must fall into one of the following mark drawing codes established by the United States Patent and Trademark Office ("USPTO"). In respect of "text-based marks", the registered trademark must fall into either code 1 (i.e. typeset word(s), letter(s), or number(s)) or code 4 (i.e. standard character mark). In respect of "image-based marks", the registered trademark must fall into either code 3 – an illustration drawing which includes word(s) or letter(s) or number(s) or code 5 – words, letters, or numbers in a stylized form. Interestingly, Amazon does not accept registered United States trademarks that are coded as mark drawing code 2, i.e., those trademarks comprising only a design with no letter(s), word(s) or number(s).
Another obstacle to overcome in order to successfully enroll in the U.S. is that the trademark registration must be active on the Principal Register. In other words, the trademark must not be registered on the Supplemental Register. A common reason for why a trademark is registered on the Supplemental Register instead of the Principal Register is that during examination, a USPTO examining attorney may consider the trademark to be "merely descriptive" 5 but nonetheless allow the application if he or she still believes that the trademark has the potential to identify the source of the goods or services as the applicant. Such trademarks must be registered on the Supplemental Register, and can only be registered on the Principal Register if the trademark owner can later show that the trademark has acquired brand significance and files a new application to register the trademark on the Principal Register.
Once the trademark requirements are met, the remaining steps to complete the Brand Registry application are relatively straightforward. The trademark owner must have an account with the Amazon Brand Registry if it does not already have an existing account on Seller or Vendor Central. The Amazon Brand Registry will then seek the following information: the registered trademark number issued by the respective government office; a list of product categories in which the brand should be listed; and a list of countries where the brand products are manufactured and distributed. Once the Amazon Brand Registry has verified the accuracy of the submitted information and approves the application, Amazon sends a verification code to the contact information listed on the trademark registration. In situations in which the trademark application was filed by a representative for service, it will be necessary for the trademark owner to contact its representatives for the verification code in order to complete the brand registry application.
The Amazon Brand Registry offers many advantages to protecting a brand in the e-commerce Amazon marketplace. If you are an owner of a trademark registration, you may be eligible for enrollment in the Amazon Brand Registry. If you do not yet own a trademark registration but wish to enroll in the Amazon Brand Registry, you should consider applying for a trademark registration. The trademark application processing time varies between the various government trademark offices. In the U.S., it may take up to six months to one year for an application to register, while in Canada the process generally takes more than a year. In some cases, the processing time may be longer.
3 According to Section II.5.3 of the Canadian Intellectual Property Office's (CIPO) Trademarks Examination Manual, a trademark is considered to be a word mark if it consists of: a word or words in upper case letters; a word or words including lower case letters; a word or words including numerals; a word or words including French accents; and a word or words including any of the punctuation marks found on standard English or French keyboards.
4 Ibid, a trademark is considered to be a design trademark if it consists of: a word or words in a special form; a word or words which incorporate foreign accent marks; a composite mark comprising word and design elements; a mark comprising foreign characters; and a word or words appearing in colour (when colour is claimed as part of the mark).
5 A trademark is considered to be "merely descriptive" if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services: see section 1209.01(b) of the Trademark Manual of Examining Procedure.
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