According to the U.S. Department of Commerce, U.S. consumers spent $601.75 billion online in 2019. Unfortunately, a significant portion of that went to purchasing counterfeit products.
Counterfeiting is a growing problem with everything from luxury goods to toothbrushes. In 2019, the Organisation for Economic Co-operation and Development reported that counterfeit goods accounted for 3.3% of all global trade, up from 2.5% in 2013.
If you are selling products on Amazon and you are tired of having your products knocked off by counterfeiters, the new Amazon anti-counterfeiting tool, called project zero, will interest you.
“If you need an anti-counterfeiting advisory service you can trust the Moeller team.”
Amazon and Counterfeiting
Counterfeiting has long been a problem for Amazon and other online marketplaces. But, now with the growing popularity of online shopping, counterfeiting has become even more of an issue.
Amazon’s overwhelming share of the online shopping market means no consumer product merchant can afford to avoid it. However, both merchants and consumers have accused Amazon of doing too little to combat counterfeit products.
In response to these concerns, Amazon has introduced Project Zero as a new tool to combat counterfeiting on its platform and ensure that goods that are shipped from Amazon warehouses are authentic.
What is Amazon’s Project Zero?
“Zero” stands for zero tolerance for counterfeit goods on Amazon websites. Project Zero represents a combined effort between Amazon and brand owners who sell on the platform.
The idea behind Project Zero is to block the sale of counterfeit products on Amazon websites and ensure that all Amazon customers receive authentic products. Amazon intends to accomplish this by introducing additional tools for identifying and removing counterfeit products before they are sold through its websites and/or stored and shipped from its warehouses.
What Measures Does Amazon’s Project Zero Involve?
Amazon’s Project Zero consists of three separate measures for combating counterfeiting:
Self-service Counterfeit Removal; and
Automatic Protections – Artificial intelligence is used to automatically and continuously identify, block, and remove suspected counterfeit goods.
Self-service Counterfeit Removal – Brand owners can directly remove counterfeit products that they identify, without having to contact Amazon and undergo a lengthy process.
Product Serialization – Amazon provides brand owners with unique serial codes that can be printed and attached to every unit of a product that is manufactured. Then, every time a product is shipped to or from an Amazon warehouse, it will be scanned to verify its authenticity. Also, customers can use Amazon’s Transparency app to scan these labels and further verify the authenticity of the product they have received.
Eligibility for Project Zero?
In order to be eligible for Amazon’s Project Zero, you must:
- Be the owner of a registered trademark;
- Have an Amazon Brand Registry account.
- Have reported potential infringements with at least a 90% acceptance rate in the last six months.
Project zero is available to all qualified brand-registered owners. Furthermore, except for Brand Serialization, it is free to use.
For more information regarding Amazon’s Project Zero and other steps you can take to protect the intellectual property rights you have in products that you sell on Amazon and elsewhere online, contact Moeller IP Advisors to consult with an experienced IP lawyer.Read More
After jumping through all the hoops to register your international trademark, filing the application, and following various quick guides on how to do so, it can be quite concerning to receive a notification of provisional refusal, stating that your trademark, your brand, has hit an obstacle in being protected.
What can I do to protect my IP now? you might be thinking. In this article, we will go over what a provisional refusal is, why it was most likely issued, and what you can do to oppose it and protect your brand.
International TM Registration Recap
The first thing to remember is the process of international trademark registration. After being initially approved by the WIPO, the notification is then sent out to all national trademark offices belonging to Contracting Parties of the Madrid Protocol. The national offices now have up to 12 months to grant or refuse protection (18 months in certain cases). If they refuse, they must send a Notification of Provisional Refusal to the WIPO, where you will soon after receiving news of it through the Madrid Monitor. It will probably look something like this.
It is important to note that it is not a final decision, but instead, the Office must indicate the reasons for why it could likely get refused. This could be from either a negative examination by the Office itself or due to an opposition from a third party. Such an opposition will most likely be from a local company, a preregistered TM holder, that believes that your trademark is infringing upon theirs, or is too similar to their own and could get confused.
It should be noted that this is a provisional refusal by opposition, which is different from an ex officio refusal, which occurs when the national office finds a fault in the application and decides to refuse protection of their own accord.
What can I do against a provisional refusal?
The next step will depend upon which country’s IP office put forward the provisional refusal. Each national office has its own specific procedure to deal with the matter.
All the necessary details should be included in the notification of provisional refusal you received. These details would likely include the grounds for the provisional refusal, the time period in which you must reply to the refusal and request a review/appeal, to whom you should direct such reply, and if you need to hire a local attorney in that country to assist you with the procedure.
If your request for review and appeal is accepted by the national IP office, you will likely have your trademark application compared with an already existing trademark registered nationally in that country.
Depending on what exactly you are wanting to register, the national IP office will compare the shapes, colors, words, and letters included, as well as the similarity of the service/good in relation to the pre-existing trademark, also taking into account the sectorial similarities if any exist. This process may take many months to come to its conclusion, however, every national office has its own rules and deadlines, so you should be very aware of the specific situation of every country.
To learn more about a specific country’s provisional refusal rules and procedures, take a look at our country-by-country guide that will take you through everything you need to know. EU & UK Guide.
Replying to a provisional refusal
Replying to a provisional refusal will often mean that you will have to convince the national office or a court of appeals why your trademark is sufficiently different from an already existing one in order to be granted protection of your IP. To do so effectively requires not only a strong argument regarding the differentiation of the trademark but also a comprehensive understanding of the legislation and the case-law of that country. Therefore, it is highly recommended that if you receive a notification of provisional refusal regarding your international trademark registration, that you should hire an experienced IP lawyer to help you in the process.
If you are wanting to reply to a provisional refusal, we have vast experience in these procedures and would be more than happy to explain the situation to you and see how we could help out. Contact us!Read More