Private sellers on Amazon have faced a variety of challenges relating to monitoring their product listings, amending their details, and, most importantly, protecting themselves against cheap knockoffs. Last year, Amazon updated their Brand Registry, providing sellers with more control over their brand and helping them fight counterfeits. With this new update, the biggest change is the requirement to have a registered trade mark. This article outlines the various ways to obtain a trade mark to be eligible to enrol in the Amazon Brand Registry.
Amazon Brand Registry Requirements
Previously, to enrol in the Amazon Brand Registry, the only requirement for the seller was to hold the domain name for their brand and provide proof of brand packaging. The new Brand Registry, however, is a lot more rigorous and you must meet the following criteria:
- have a registered trade mark;
- the registered trade mark must be, or include, words, letters or numbers (an image alone, such as a logo without words, does not meet the criteria); and
- the trade mark must be registered in Australia, the US, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, UK or the European Union (EU).
Additionally, you must also provide:
- images of the products and packaging that show the trade mark;
- a list of products that are sold in relation to the brand; and
- a list of countries that manufacture and distribute the products.
Therefore, you need to understand how to successfully apply for a trade mark to meet these criteria.
Where to Apply for your Trade Mark
If you are selling your products through Amazon, you probably have a worldwide market. While a global market is great for revenue, it can make brand protection difficult. Does that mean you should trade mark your brand in every country you could potentially sell to? Technically, the answer is yes.
Protecting your brand is an important step in establishing a successful business. It prevents others in another country from using your brand and selling your products if they register the trade mark before you.
However, registering a trade mark in every country may be financially out of reach, especially for a new brand. Therefore, it is important to prioritise. Think about where your biggest markets are and how losing that market may affect your business. If the majority of your sales are from Australia, the US and the UK, register trade marks in those countries. If France or Canada only provide you with an occasional sale, registering trade marks there may not be worth it because losing those markets would not significantly affect your business.
Quickest Way to Register a Trade Mark
(with no objections)
|Australia||7.5 months||The option of the headstart process via IP Australia provides you with an initial report within five business days. The report notifies you of any issues IP Australia may have with your application. Although the entire process is lengthy, the initial approval is quicker than any other country.|
|US||8-12 months||Examination takes three to five months. The US also requires evidence of the use of the mark within five years of registration.|
|Canada||10-14 months||Your application will only be examined after 6 to 12 months. Canada also requires evidence of use if the mark is not used at the time of the application.|
|Mexico||6-7 months||There is no option to select multiple trade mark classes. If you want to register a trade mark under several different classes of products or services, you must apply under each class.|
|India||12 months||An application must be signed by a power of attorney. Once accepted, the trade mark will be open for third-party opposition for four months (in comparison to two months in other countries).|
|Japan||6-10 months||There is an option to request an accelerated examination, which can take approximately two months.|
|France||4-5 months||A resident of France or another EU member state (the resident can be a representative of the applicant) must submit the application. An application can be refused if it infringes a prior unregistered trade mark that is well-known.|
|Germany||3-6 months||There is an option to request an accelerated examination, which can take anywhere between a few days to six months. A German resident (who can be a representative of the applicant) must submit the application.|
|Italy||9-12 months||Once you file a trade mark, a third-party has three months to oppose the application.|
|Spain||6-8 months||The application must be signed by a power of attorney.|
|EU||8-10 months||Covers 28 member states. The option to ‘fast track’ an application can take only 8 to 11 weeks. However, if there is an issue in one European country, it may defer your whole application.|
Rather than applying for a trade mark in each country separately, you can use a single application to apply in multiple countries through the Madrid Protocol. The Madrid Protocol is a treaty, administered by the World Intellectual Property Organisation (WIPO).
In order to apply through the Madrid Protocol:
- you must ensure the countries in which you want to register your trade mark have signed the treaty. All the approved countries for the Amazon Brand Registry are parties to the Madrid Protocol, except for Canada;
- you must have a national application or registration upon which to base your Madrid Protocol application;
- the mark and the goods or services on the international application must be identical to your national application; and
- the applicant on the international application must be the same as the national application.
To list your products on the Amazon Brand Registry, you must have a registered trade mark and meet certain criteria. You can either register international trade marks in each of the individual countries you sell products in, or you can use a single application under the Madrid Protocol and register a trade mark in multiple countries.
If you have any questions or need assistance registering an international trade mark for the Amazon Brand Registry, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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