The Role of Retailers and Intellectual Property Rights

By Sheena Gurbakhash

Increasingly brands are turning to online retailers to regulate piracy and the retailing of fake goods on their platforms. Two years ago, Alibaba formed its own anti-counterfeiting alliance, which has gone from 30 members at launch to 121 brands. According to a report in July this year,1 Alibaba has claimed a 70% year-onyear drop in listings removed from its e-commerce platform in response to consumer complaints of the product being counterfeit. Alibaba’s Intellectual Property Rights Report,2 which covers their efforts for 2018, includes closing more than 1,500 offline facilities which manufacture counterfeit goods, contributing to an estimated total value of $1.2 billion. Online, approximately 96% of listings featuring counterfeit products were removed before any items were sold, while IP rights holder takedown requests dropped by 32% from the previous year.

Matthew Bassiur, Alibaba’s vice president of global IP enforcement attributes Alibaba’s success to the use of big data and artificial intelligence (AI) capabilities. The group’s IP protection alliance now has members spread across 16 countries and regions. The group employs learning algorithms to detect counterfeit goods, so that “the more the brand holders are contributing to the enforcement of their own trademarks, the better the algorithms will understand what might be infringing their rights.”

In a 2017 report in Fortune, 3 Alibaba revealed it had the capability to “scan more than 10 million product listings a day” and put an end to around 675 counterfeit operations in an approximate four-month period from August 2016 to January 2017. Meanwhile, in all of 2018, the group’s efforts led to the arrest of more than 1,900 counterfeiting suspects, according to state-run media outlet China Daily.

Now it looks like Amazon has gone a step further. When Amazon launched in Singapore in October 2019, the general sentiment amongst consumers was one “What took them so long?” 4 Less talked about, is a new service being offered by Amazon via Amazon IP Accelerator which was launched at about the same time in the US.

Amazon IP Accelerator connects creators who want to register trademarks.

According to their website, 5 they offer “Trusted intellectual property law firms at competitive rates… and faster access to brand protections with the explanation the “IP Accelerator connects businesses with a curated network of trusted IP law firms that provide high quality trademark registration services to help brands secure a trademark, at competitive rates. Amazon provides businesses using IP Accelerator with access to brand protections and brand building features in Amazon’s stores, to better protect and grow their brand months, or even years, before their trademark registration officially issues.”

At the moment, the service is primarily geared to cater to those wishing to register in the US. Amazon IP Accelerator looks like a step in the right direction with the service being available to both Amazon retailers as well as those not retailing on the Amazon platform.

Rates are pre-set and there is a choice of 10 law firms to choose from. The FAQ reveals that “The program is available to brands worldwide. Law firms currently in IP Accelerator are based in the US, and focused on filing US trademark applications. They can serve clients in several languages including English, French, German, Japanese, Korean, Mandarin, Spanish, Hindi, Gujarati, Italian, and Portuguese.” The FAQ adds, “We look forward to expanding IP Accelerator to law firms and trademark offices in other countries.”6

According to the FAQ retailers on Amazon who use the service will be invited to enrol in Brand Registry and have access to the following benefits:7

Proactive brand protections
Amazon will use information that you provide about your brand to implement protections that attempt to proactively identify and remove potentially bad listings that could harm your brand and our customers.

Powerful search and report tools
You will have access to the Report a Violation tool that provides text and image-based searching capabilities and simplifies the process of reporting potential infringement (e.g., common law trademark infringement) with multiple features designed specifically for brands.

Other brand-building benefits
You will be able to further build and grow your business on Amazon by taking advantage of powerful tools designed for brands such as Enhanced Brand Content product detail pages, Brand Stores, Sponsored Brands, and the Brand Dashboard.

In a blog post announcing the IP Accelerator programme, Dharmesh Mehta who currently leads the WW Customer Trust and Partner Support (CTPS) organisation says, those who sign up with Amazon IP accelerator will have “accelerated access to brand protections in Amazon’s stores, to better protect their brand, months, or even years, before their trademark registration officially issues.” In addition, they will benefit from automated brand protections, which proactively block bad listings from Amazon’s stores, increased authority over product data in our store, and access to our Report a Violation tool, a powerful tool to search for and report bad listings that have made it past our automated protections.

While this is great for brand owners and retailers, the question that IP lawyers need to be asking themselves is what this bodes for the future of their business. But could this be a first step for Amazon in providing broader access to legal services? For IP lawyers, this could be a game changer. Are you ready?

7 Ibid.

This article first appeared in the October 2019 issue of the Knowledge: Client Bulletin published by OtterEsq.



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