Registering Your Products on Amazon: Practical Trademark Considerations

Amazon Introduces Brand Registry to Combat Counterfeiting

Over the past few years, Amazon has become a major sales platform for the vast majority of companies selling products. However, Amazon, like other online marketplaces, has often been criticized for enabling the sale of counterfeit products or products infringing trademarks. In an effort to better regulate the products sold on its platform and reduce illegal activities, Amazon has therefore introduced the Amazon Brand Registry (the “Registry”).

What is the Amazon Brand Registry?

Although its effectiveness has not yet completely eliminated illegal activities, the Registry is an additional tool that helps monitor trademark use.

The Registry system allows trademark owners to register their trademarks directly with Amazon. In doing so, owners gain greater control over the overall presentation of their products and also gain access to tools enabling them to more quickly identify and remove product listings that infringe their trademarks.

How to Register a Trademark with the Amazon Brand Registry

The application process for the Registry is completed entirely online. First, the owner must indicate whether the trademark is a word mark or a design mark. It should be noted that only design marks containing a word element are accepted. Therefore, trademarks consisting solely of a logo without any wording are not eligible.

Next, images of the product, packaging and logo, where applicable, must be submitted. It is important that the trademark be prominently displayed in these images. Finally, additional information regarding the product’s characteristics is required, including the relevant product categories and the countries where the product is manufactured and distributed.

Registration with CIPO Is Required to Access the Registry

The owner must also provide a registration number issued by the Canadian Intellectual Property Office (“CIPO”). Indeed, only registered trademarks may be enrolled in the Registry, which provides yet another reason to register trademarks.

Furthermore, the information submitted to the Registry must fully correspond to the trademark registration. For example, a business using a logo, but whose trademark was registered as a word mark in order to obtain broader protection, must submit its Registry application as a word mark. Otherwise, Amazon will reject the application. It is therefore essential to properly identify the trademark as registered and understand the scope of protection afforded by the registration.

The Role of the Verification Code Sent by Amazon

Once the Registry application has been submitted, Amazon will generally send a verification code to the trademark agent listed in connection with the trademark registration at CIPO.

To avoid delays in receiving this code, it is important to verify that the appropriate trademark agent is correctly listed with CIPO and has been advised that Amazon may send such a code. Upon receipt, the trademark agent must forward the code to the individual who submitted the Registry application, who must then provide it to Amazon in order to confirm that the applicant is indeed the owner of the trademark registration at CIPO.

Strategic Management of the Amazon Brand Registry

While this process is relatively straightforward, its efficiency largely depends on the quality of the information included in the initial Registry application and on the subsequent communications between the trademark agent listed with CIPO and the person responsible for the Registry application.

As a result, since filing and managing trademarks within the Registry may sometimes prove more cumbersome than anticipated, it is possible to add the name of the trademark agent responsible for the Registry applications directly within the Registry. This helps ensure better oversight and management of this aspect of trademark protection, which may become increasingly important as Amazon sales continue to grow within companies’ business operations.

Protection Limitations for Unregistered Trademarks

This does not mean that businesses using unregistered trademarks, in which they nonetheless have rights, cannot report listings that infringe their rights. Unfortunately, however, they will not have access to the expedited reporting system reserved for Registry users.

Protecting Your Trademark and Your Presence on Amazon

Our trademark team can advise you on the many legal issues surrounding your business and its online presence, including on Amazon. You may also contact the author of this article directly, Johanne Auger, Partner and Trademark Agent.