Trademark protection on e-commerce platforms

Author: Victoria Georgieva

E-commerce is an essential marketing channel nowadays, and e-commerce platforms are crucial for trading goods online. Big online retailers have huge daily sales. However, sometimes they face complaints and intellectual property issues, resulting in losses and penalties. This turns e-commerce platforms into a battleground between trademark infringers and trademark proprietors. To mitigate the risks, merchants need to register their trademarks on time and renew them regularly. They can also use the intellectual property protection mechanism in e-commerce platforms to protect their rights and fight against unfair practices. In this way, a safe e-commerce environment can be created.

E-commerce platforms now better protect intellectual property (IP) rights, which benefits trademark owners. Selling counterfeit products is a challenge as platforms use a “three strikes and you’re out” policy for serious IP infringements. Each sale or attempt to sell counterfeits counts as one attempt, and after three attempts the account is permanently closed. Merchants can also be penalized for improper use of others’ intellectual property rights, with penalties such as the removal of infringing goods or a reduction in the number of page views. E-commerce platforms severely punish infringers of intellectual property rights, leaving them without a platform to operate on, which is good news for trademark proprietors.

On the one hand, trademark protection is now easier with low costs, simple procedures, and fast processing of complaints. On the other hand, some trademark infringers abuse this protection by filing malicious complaints to disrupt online traders. This problem needs attention from trademark owners and online traders in the world of e-commerce.

Early registration of trademarks is crucial to prevent malicious complaints by trademark infringers. With the increase in international purchases and sales of products through various channels, many trademark owners are realizing that their trademarks have been pre-emptively registered by other individuals, also known as “squatters”. These “squatters” infringe on the business activities of genuine trademark owners and may even demand high licensing fees or unreasonable demands.

Taking legal action against pre-emptive registrations can be difficult and time-consuming, especially if there is no evidence of prior use. If a registered trademark is used for more than five years, cancellation becomes even more difficult. To avoid the risks associated with trademark squatting, trademark owners should register their trademarks as early as possible and conduct trademark clearance searches to identify pre-emptive registrations. If necessary, cancellation of the “squatting” trademark should be done immediately. Preserving evidence of trademark creation, use, and media messages is essential.

To protect their trademarks, experienced applicants choose more suitable goods and services to broaden the scope of their trademark protection. Companies need to update their trademark portfolio to avoid gaps that trademark infringers can exploit. Squatters often pre-emptively register trademarks for unprotected goods and services and then file complaints against online merchants who use them.

A good strategy for filing trademark applications is to designate more relevant goods and services for broader protection. Engaging trademark attorneys can help companies prevent trademark gaps and protect their rights when doing business.

Some online retailers use popular but generic names and descriptive words in their product titles to increase visibility and user numbers. Although these words alone cannot be registered as trademarks, some people combine them with distinctive elements and apply for trademark registration.

After registration, these trademark holders can file complaints against other merchants who use generic names and words. E-commerce platforms usually support these complaints and penalize merchants who use such words. To avoid further problems, merchants who have received a complaint may compromise and pay a settlement fee to the trademark owners.

After receiving a complaint, the e-commerce platform allows the merchant to respond and explain their position. Traders must respond promptly and provide evidence that their use of the trademark is fair and lawful. If they face malicious complaints or extortion threats, they can report them through the platform’s channels.

Registering store names as trademarks on e-commerce platforms is critical for business operations. The store name appears at the top of online store web pages. Some merchants focus only on registering the trademarks of their goods but neglect to register trademarks for the services they provide. This can be risky as e-commerce activities include services such as ‘sales promotion for others’ and ‘presentation of goods on communication media for retail purposes’ in Class 35. Trademark squatters take advantage of this and register others’ store names in Class 35.

In order to protect their store names, online retailers must register the store names as trademarks as soon as their stores are opened. This includes filing trademark applications in Class 35 to prevent trademark squatters from taking advantage of any gaps in the list of goods and services.

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