With the introduction of the Amazon Brand Registry, see https://brandservices.amazon.co.uk/, Amazon has, in effect, created its own trade mark law, which seems to be a first, for a commercial enterprise.
According to the information provided on their website, the aim of the system is to “help you protect your registered trade marks on Amazon and create an accurate and trusted experience for customers”.
The Brand Registry really seems to have gained momentum over the past few months but our experience with the system is that there are a number of wrinkles to be smoothed out and this note is intended to summarise some of the issues we’ve come across.
1. Misrepresenting a trade mark as registered
In most jurisdictions, it is a criminal offence to misrepresent a trade mark as registered. The Amazon Brand Registry requires a registrant to provide the brand name it has registered as a trade mark, in the form of a word mark, or a figurative mark containing word elements that match the brand name, and the trade mark number – for the USA, there is a requirement that the trade mark is registered on the Principal Trade Mark Register. The writer has, however, come across incidents where a client has sought registration in the Amazon Brand Registry based on a pending application for registration and that application doesn’t seem to have been weeded out by Amazon before the verification code was issued. The fact that a mark must be registered to appear in the Amazon Brand Registry means that the trade mark attorneys have to consider whether they refuse to pass on a verification code to a client, when they know that the trademark in question is not registered in the jurisdiction concerned.
2. Client Confidentiality
Trade mark registrations can last for ever, and the identity of a client in connection with a given trade mark registration often changes over time, although trade mark attorneys are not always kept advised of this. This can lead to an unknown party contacting the trade mark attorney firm, demanding a verification code, which puts the trade mark attorney in an awkward position. Nobody wants to be unhelpful, but equally, we can’t simply disclose confidential and commercially important information to individuals and firms we have never had contact with.
3. Keeping in contact with a trade mark attorney representative, when the Amazon Brand Registry request is submitted
In nearly all cases, the first we hear regarding an Amazon Brand Registry request, is an email from Amazon themselves. Although Amazon state in their emails that they have told the applicant for Brand Registry protection that they should contact their trade mark attorney, hardly any do so. For us as a UK based firm, this is particularly embarrassing when Amazon Brand Registry emails are sent to US trade mark attorneys, recorded as a representative in connection with our client’s US registrations. We appreciate that it would probably be too complicated, at the technical level, for Amazon to include a functionality in their Brand Registry request form, to enable applicants automatically to notify their trade mark representative of the fact of submission of a Brand Registry request. The need to notify the trade mark representative should be made much more prominent, though.
4. Control of Amazon Brand Registry listings
The information supplied by Amazon suggests that only the registered owner of the trade mark should apply to enrol a brand in the Brand Registry. We have, however, encountered instances of trade mark owners allowing their customers to submit Amazon Brand Registry applications. This is not necessary, as once a Brand Registry listing is made, the user who registered the brand and/or the user who has been designated as the administrator may submit a request to add additional users to the account, including agents. Given the fact the Brand Registry is a recent phenomenon, it will be some time before the effects of its existence really play out. However, it is a fundamentally bad idea to let anyone have control over any aspect of brand protection, other than the registered owner of the brand, so we would encourage all trade mark owners to take responsibility for Amazon Brand Registry listings themselves.