IP in the Online Marketplace

IP in the Online Marketplace

Online marketplaces have continued to surge in popularity as a preferential method of selling products overseas. Established platforms such as Amazon provide an easy route to market, allowing businesses to build their brands internationally and access consumers across the globe.

However, a lot of planning is needed to get products ready for marketing on such platforms. Ensuring you have ownership and control of your brand in the countries where you are selling is necessary to prevent competitors and opportunists from trading off the reputation you build in your brand.

At the outset you need to identify the countries you will likely export to. As Intellectual Property (IP) rights are territorial, trade mark clearance searches should be conducted in your proposed export markets to ensure use of your brand won’t infringe existing IP rights, and that you can secure registered ownership of your brand.

An IP advisor can advise on a filing strategy that best aligns with the countries with the most potential for returning a profit. At the same time, and with regard to avoiding conflict with existing IP rights, the scope of your trade mark rights should be considered to ensure they adequately cover current and future ranges of goods and services on which your brand might be used.

It takes a minimum of 6 months to register a trade mark and in most countries the time frame is more like 12 to 24 months. Given that some countries, distributors and sales platforms require you to have registered your trade mark in their jurisdiction before you can sell products under that brand, it pays to think about branding early in the due diligence phase. Once your brand/mark is registered where your sales are occurring, you can confidently market your products online.

Unfortunately, selling online also comes with an increased risk of misappropriation of your rights by unscrupulous opportunistic competitors and fly-by-nighters.  Most online marketplaces have a set process for dealing with infringement, but it usually involves you identifying the infringing use of your trade mark and proving your exclusive rights in that mark. Crucially, it is far easier and more cost effective to prove and prevent infringement of your rights if you have a registered trade mark, than if your brand is unregistered.

To protect the IP of its branded sellers, Amazon has established the Amazon Brand Registry program. This allows sellers to have better control over who can use their brands and logos and provides a convenient system reporting and preventing unauthorised use of your brands. In order to enrol your trade mark in Amazon’s Brand Registry, you need to meet certain eligibility requirements and go through a verification process. At present, a New Zealand registered trade mark is not accepted by the Amazon brand registry, and consequently New Zealand businesses need to register their brands in one of the other accepted countries like Australia, the United Kingdom or the United States.

Each online marketplace has its own terms and conditions which you will need to sign up to before selling on the platform. These terms usually involve a licence to use your IP for the purposes of selling the product and may entitle the online sales platform to use your business name and logo for its own purposes. It is important to fully consider such terms to ensure you are comfortable with the potential scope.

So, if you are planning to sell your products on an online marketplace, it pays to have a cohesive IP strategy in that plan from Day One. Getting advice at the outset will not only save you time and money building up your brand protection, but it will also minimise the risks involved in exposing your brand and the reputation of your products to the world. 

Authored by Stephanie Hadley, Associate, James & Wells

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