Accused of Ecommerce Trade Mark Infringement: What to Do
When selling goods on e-commerce platforms, you may be accused by another business of selling goods that infringe upon their trade mark. This means that the products you listed on the e-commerce site allegedly have a logo or brand that is similar or identical to a registered trade mark owned by the other business. Such goods include counterfeits.
This accusation may come directly from the trade mark owner in the form of a lawyer’s letter, or it could come via the e-commerce platform if the trade mark owner reported your listing to the platform.
This article will discuss:
What can you do to prevent such infringement disputes from arising in the first place?
Was the Trade Mark Actually Infringed?
Although you may have been accused of trade mark infringement, this accusation may not have a strong legal basis. If so you may, in fact, not have infringed the trade mark.
Territoriality of trade mark registration
Trade mark registration is territorial in nature. This means that unless the trade mark is very well-known, the trade mark generally can be enforced only in the country (or countries) it is registered in.
The territoriality of trade marks is more complex due to the global nature of e-commerce.
Generally, trade mark infringement would be found only in the jurisdiction which the e-commerce site is based as well as the jurisdictions the e-commerce site advertises and sells to. This means that the trade mark must be registered in the jurisdictions the e-commerce platform operates in before it can be infringed by a product being sold on the platform.
For example, a counterfeit product being advertised and sold on the Singaporean online marketplace “Carousell” is likely to be determined to only infringe a trade mark registered in Singapore. This is because the site is based in Singapore and generally accessed only by users in Singapore. On the other hand, the same product on an e-commerce platform accessed globally, such as Amazon.com, could be found to infringe trade marks globally.
The first step you can take is to check whether the trade mark has been registered in the jurisdiction in which the e-commerce site is hosted, and the jurisdictions which the e-commerce site targets. If the trade mark is not registered in any of those jurisdictions, there may be no infringement. You can search Singapore’s trade mark registry at the IPOS Digital Hub.
The exception to this is well-known marks, which can receive protection even if they are not registered. This is a relatively small category of trade marks that are well known to the general public and include large international brands such as “Gucci” or “Adidas”.
Under Singapore law, owners of these well-known marks can obtain an injunction to prevent others from using the trade mark in Singapore even if the mark is not registered in Singapore.
Is your business’ mark registered?
Under Singapore law, a registered trade mark does not infringe another registered trade mark.
If you have registered your own trade mark in the relevant jurisdictions, it is less likely that you will be found to have infringed another business’ registered trade mark. The other business would need to formally sue you first to invalidate your trade mark before they can prove infringement.
Whether the marks are similar and registered in similar industries
Based on Singapore law, your mark would infringe a registered trade mark only in the following situations:
- An identical mark is being used in the same industry by another business.
- An identical mark is being used in a similar (but not identical) industry such that the public is likely to be confused. For example, there would likely be infringement if a given trade mark is used for bags, and a competing business uses an identical mark for shoes.
- A similar mark is used in the same industry such that the public is likely to be confused. There would likely be infringement if a business was to use marks like “Guci” or “Cucci” for bags, as they are too similar to that for the existing luxury bag brand “Gucci”.
However, if the other business’ registered trade mark is identical to yours, there would be no issue using the mark as long as it is used for a completely different category of products. For example, the trade mark “Tiger” is registered in Singapore by different companies for different categories of goods including beer, air travel and medicinal products (Tiger Beer, Tigerair and Tiger Balm respectively).
How Practical is it for the Trade Mark Owner to Sue for Infringement?
Even if it appears likely that the goods you are selling infringe a registered trade mark in the relevant jurisdictions, the trade mark owner may nonetheless choose not to commence a lawsuit, especially if their business is located in a different jurisdiction from yours. This is because cross-border intellectual property lawsuits are especially complex, expensive and time-consuming.
However, if a trade mark infringement suit is commenced against you, you will receive the originating claim (previously known as a “writ of summons”) or other originating process. If you receive such a notification, you should contact a trade mark lawyer immediately to seek legal advice.
If the trade mark owner does not wish to sue you, he may still take action against you using the reporting tools provided on the e-commerce platform itself.
Having your product reported to the e-commerce platform
Most e-commerce platforms including Shopify, Amazon, ebay and Alibaba (which owns Taobao) provide avenues for intellectual property owners to report alleged trade mark and other intellectual property infringement on their respective e-commerce platforms.
This is a much cheaper and simpler way for a trade mark owner to take action against you.
Each platform’s specific trade mark infringement reporting process may be different, but they generally involve the following steps:
- The trade mark owner reporting the URLs of the infringing items to the e-commerce platform;
- The trade mark owner providing details of their trade mark registration such as what the trade mark is, jurisdictions it is registered in and the categories of products it is registered for;
- The e-commerce platform evaluating the claim and possibly then delisting the reported item.
What Can You Do If You Want to Dispute the Infringement Claim?
If you are certain that your product is not counterfeit and does not infringe the registered trade mark, there are steps you can take to oppose the infringement report.
Firstly, you may appeal to the e-commerce platform if they provide an avenue of appeal – Alibaba, for example, allows you to submit a counter-notification. Your appeal would be more likely to succeed if you have evidence that your product did not infringe the registered trade mark, or that the other party’s mark was not even registered.
Examples of such evidence could include comparisons of the registered trade mark and your business’ mark, or evidence that the trade mark has not been registered in the relevant jurisdictions. If your appeal is successful, the platform may re-list your product.
Some platforms such as ebay do not have an avenue for appeal if your product has been delisted due to an infringement claim. However, they may instead provide you with the trade mark owner’s contact details when notifying you of the delisting. If so, you may contact the trade mark owner directly to request that they retract their infringement report.
If the trade mark owner refuses to retract their report and the e-commerce platform does not provide any official avenue for appeal, you may nonetheless contact the e-commerce platform via a general inquiry to appeal against the delisting.
A possible final option is to seek a declaratory judgment from a court of law in the relevant jurisdiction that your product does not infringe the trade mark owner’s mark. This judgment could then be submitted to the e-commerce platform as proof of non-infringement.
However, this involves engaging in litigation, which may be expensive. At present there are no reported cases of such an application being made in Singapore.
Please note that you should avoid re-listing your item without first resolving the dispute with the trade mark owner, as the e-commerce platform may suspend your account.
What can you do to prevent such disputes from arising in the first place?
As a seller you should always take precautions to avoid selling counterfeit goods. Not only is there a higher risk of having your listing reported, it is also an offence under Singapore law.
Next, before listing your item on an e-commerce platform, you can do a search of that platform to identify existing products of a similar category that bear a trade mark similar to your business’ mark. If there are such products, it is advisable to first contact the sellers of those products to confirm that your trade marks are not similar to theirs, or acquire permission from them to list your product.
Finally, the best way of avoiding trade mark infringement issues is by registering your own trade mark in the relevant jurisdictions before listing your product on the e-commerce platform. This would ensure that you are not infringing an existing trade mark.
Some e-commerce platforms including ebay and Amazon also allow you to register your brand with the e-commerce platform. This would help ensure that your brand is recognised by the site, and it would be much less likely that the e-commerce platform de-lists your item for trade mark infringement later on.
E-commerce platforms are often under pressure from authorities and intellectual property owners to enforce intellectual property rights. As a result, their trade mark infringement policies may tend to favour owners of registered intellectual property, including trade marks.
The best way to lawfully take advantage of such protection offered by e-commerce platforms is to become a registered trade mark owner yourself. However, registering your trade mark across multiple jurisdictions may be an expensive process. As an e-commerce seller, it is ultimately a commercial decision you will need to make as to whether the potential cost is worth it.
If you wish to register your business’ trade mark, a trade mark lawyer will be able to assist you in taking the appropriate steps and submitting the relevant information needed to register your trade mark, both in Singapore and overseas.
You should also consult a trade mark lawyer if you are sued or threatened to be sued by another business for trade mark infringement. This is because you may need to prepare legal arguments and documents for the court, and these often require a competent trade mark lawyer to handle.
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