9 Key Considerations for Brand Owners Preparing to Sell on Amazon
Amazon Brand Registry
Amazon is, of course, a massive marketplace for sellers (it accounts for roughly 66% of commerce in the US, which is incredible). Because of that it’s the place to be if you’re looking to sell goods online.
Where there is a big marketplace – there’s also a big opportunity for bad actors to look to take advantage through counterfeiting and infringement.
Because of this it’s important to Amazon to tackle the protection of brands on their platform. The Amazon Brand Registry plays a big part in helping the company to fulfil this promise; by giving them a system to take down counterfeits and infringers who piggy back off someone else’s reputation.
So if you’re selling on Amazon, it’s important to know how to list your products on there and protect yourself from bad actors by using of the platform’s most powerful tool.
What the tool does is make sure that the owner of a trade mark (for example “Ray-Ban”) have greater control over the detail pages and information about their products on Amazon. It also offers users a suite of tools to identify potentially infringing products – which can be incredibly useful for brands when they enter into the online marketplace.
This means that owners of a brand (via a registered trade mark) can sell safe in the knowledge that other people won’t use their brand inappropriately for profit.
I met the Amazon Brand team in Seattle recently and discussed the Amazon Brand Registry and other IP matters with them further. In the USA they are now beta testing a system called “Transparency” which is an effective track and trace labelling system that allows not just the tracing of product whilst in their hands but additionally permits the end users to authenticate the products they’ve bought.
The Amazon team also expressed an interest in allowing patent owners to register their Intellectual Property and permit patent protection via Amazon – which would be an interesting next step. Frankly however, as an expert IP practitioner, I can tell you that this suggestion is fraught with far more problems than the registration of brands through trade marks!
All this aside, talking to the Amazon team had me thinking about the main things people need to know before entering the world of Amazon selling and particularly how to get the benefit of their brand registry. So here are the 9 key considerations for businesses looking to sell goods on Amazon.
9 Key Considerations for Brands on Amazon
So, what are the top tips from an IP expert when it comes to getting maximum protection for your brand on line?
1. Get a Robust Trade mark
Firstly, you need to have a registered trade mark. Once you have this you then need to go through the process of verifying with Amazon that this trade mark is valid.
Some trade marks have limited value as they’re not registered to obtain the required protection.
Logo marks don’t always protect brand names. Sometimes brand owners have not registered their mark in in the right classes, or they have allowed the brand to be removed from the trade mark register for non-use.
2. Protect Yourself Where You’re Selling
You will need trade mark protection for wherever you’re selling your goods.
If you only have a UK mark, then you can only protect it in the UK, even though you may have a big market in France or the USA.
Amazon, of course enables you to sell world-wide – so you need to be savvy about growing your protection alongside your profits.
Overseas protection can be expensive, but the right advice will help you to obtain optimum cover at a price within your budget.
Avoid self- filing trade marks overseas at all costs. Some say this can be done, but our experience is that the vast majority of people not only get it wrong but lose significant sums in doing so.
3. Logo or Word?
You need to think about whether you should register your brand as a word marks or a logo mark – or both!.
The Registry allows you to search against both to ensure that no one is copying you. With both items registered, you can usually protect your name and your logo so that if someone just copies your well known and carefully designed logo with a similar product but uses a dissimilar word, then you can still enforce your rights.
A good mark for Amazon will protect the most important brand attribute that is likely to be copied by counterfeiters.
4. Don’t be too Descriptive!
Brands which are descriptive, such as “shoe cleaner”, for shoe cleaning products are usually refused by the trade mark registry.
Typically the best brands avoid words which have anything to do with the thing they’re selling.
For example, Apple works for computers and technology because apples that you eat have nothing to do with technology (they’re kind of the opposite).
However, there are often ways that experts such as ourselves can obtain cover.
Though if you have a descriptive brand, you’ll find it much harder to enforce if someone infringes it.
5. Clear the way
Before applying for a trade mark, it is very important to do a professional search.
Whilst it is possible to do quick and cheap searches for identical marks, a full clearance search must be done professionally using specialist databases.
An expert will provide you with not only similar marks, but also provide a proper steer in relation to whether infringement is an issue and how likely it is that a business with a similar mark will oppose your application.
Beware! Many so-called trade mark clearance searches don’t do this important follow-on. Without it you run a much higher risk of having your trade mark opposed and knocked out before you’ve even started.selling.
6. Don’t be afraid to spend money
One of the biggest myths about registering your brand is that an expert will cost a fortune.
Most trade mark experts will give you an accurate estimate of costs early on and help you avoid the much higher costs of dealing with oppositions or rebranding if you can’t use the mark at all.
Experts can also provide you with strategic advice that will prove invaluable, especially if you encounter problems or where your brand is very valuable to you.
This kind of advice at the advent of a brand is invaluable and can save untold amounts down the line.
7. Nip Trouble in the Bud
If you do register a trade mark and you find someone copying you then enlist specialist help from the start.
Trade mark infringement and passing off are complex areas of law. Get them wrong and you can lose your trade mark or even worse be sued by someone else first.
When it comes to protecting your brand it is better to be proactive than reactive. This allows you to determine your next move, and not have it determined for you by the other side.
8. Stay Vigilant
They say that “the price of peace is constant vigilance”. So the cost of keeping your brand safe and keeping your prime place in the market is to constantly monitor it.
There are a number of people now (including us) offering a brand watching service that covers online trade. These constantly review new listings on marketplaces including Amazon – allowing you to address these before a serious amount of damage is incurred.
9. Don’t Rely on The Police to Sort it Out
Counterfeiting is a criminal activity.
The first line of defence may be civil proceedings, but some clients resort to other actions such as private criminal prosecutions to bring people to book.
Don’t rely on trading standards, HMRC or the police to take enforcement action.
Their teams are busy and their budgets and time for pursing these kinds of criminals are limited.
Instead, look for specialist advice in the area and factor in brand protection into your model as you see your revenues grow on Amazon.
This will ensure that you’re always able to keep your trade marks top of the pile – and reclaim lost profits that would otherwise land in infringer’s pockets.
So when it comes to selling on Amazon, yes it is fantastic to present your brand and products to a worldwide market.
But there is no such thing as a free lunch!
You have to make sure that you protect yourself from those that would be happily piggy back off your brand.
The best way to do that is to register with the Amazon Brand Registry.
And to do that, you need a good trade mark (or trade marks) which cover what you’re looking to sell – where it is going to be sold.
There is an initial cost in doing this – but it should also be something that you factor into your budget as you become more successful selling on the platform.
If you do that, you’ll be selling your branded good on Amazon happily for many years to come.
If you have any questions about this or to talk to our intellectual property specialists about registering your trade marks, please call:
0113 237 9900
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9 Key Considerations for Brand Owners Preparing to Sell on Amazon was written by Liz Ward
Correction 16/07/2018: In the original version of this article it was stated that registering with the Amazon Brand Registry meant that no-one else would be able to sell a registered brand’s goods on the platform. This has been amended.