Design Patent and Sales on Amazon

Amazon has a wide range of intellectual property related policies that
helps to protect the registered sellers from others counterfeiting their
products. Over the years several complaints have been filed by the
registered sellers against counterfeit products being sold in Amazon and
thereby losing their revenue. It was with this intent that Amazon had
introduced a brand registry which provides powerful tools such as text
and image search, so that the original seller can report if there is any
counterfeit products being sold. It covers trademarks, copyright,
patents, industrial designs and designs. The article analyses the
importance of the designs patents and how it enables the sellers to
increase their revenue.

In India, The Designs Act 2000 grants protection to the designs. To meet
the criteria the design must be original, undisclosed to anyone in India
or other country by publication or used in any manner, must
significantly distinguish one’s design from that of others and must not
contain any obscene or scandalous matter. So, once the seller is
registered under Designs Act, he gets copyright protection for 10 years.
A design patent is similar to an industrial design. It protects the
designs such as shape of the article, a particular style or look or even
the surface ornamentation. Designs protection is granted only for their
appeal and it does not have any utilitarian functions, i.e., the designs
are essentially different from that of the product and does not say
anything about their functionality. So to constitute a design
infringement is really hard. Such type of infringement takes place in
Amazon only when sellers try to list and sell products so similar to the
registered seller’s design and that it causes confusion in the minds of
the people.

The sellers in order to avoid design infringement must make sure that
original designs are being uploaded and also must try to avoid imitating
the designs of other registered sellers. From this, we can say that a
registered seller has an edge over others. They being registered can
enroll in Amazon Brand Registry and search for any violations and report
if any. Thereby they can protect their revenue from being diverted to
others.

However frivolous claims of infringement on generic products can be made
and to counter it, the seller has to prove that such infringement is not
valid or that the products he was selling was of generic nature.

The consequences of a design patent infringement can be suspension of
account, court appearances including cost payment and losing a listing
in Amazon can affect the seller’s reputation too. If the patent owner
proves the registration, then the other party will have to pay damages,
lost profits which are nothing but the profits which could have been
earned by the registered seller if their design was not counterfeited,
reasonable royalties or even total profits. It is unfortunate that many
sellers are not aware of such protections and Amazon policies and
thereby tends to lose revenue.

By browsing Amazon Seller Central forums one can find out how the Amazon
patent infringement cases are escalating.¹ It is a costly affair and
time consuming to resolve the infringement issues.

The following are the ways in which one can report an infringement-

1. Report infringement via Amazon- One way to report the
   infringement of design patent is by way of reporting through Amazon
   itself. There is a form available, the aggrieved seller can simply
   fill the form by filling all the details including the patent
   registration details, ASINs and contact details. If Amazon finds it
   be accurate, it will de-list the infringing party’s products from
   Amazon. It’s an easy way to prevent infringement.

2. Amazon Brand Registry- Another way to report the infringement is
   via ABR. If the seller is a rights holder he can enroll himself in
   the Amazon Brand Registry. It provides the enrolled sellers to have
   image and text search to find out if there is any infringement or
   increased authority over product listings under your brand name.
   Then if such violation is found out, the original seller can cause
   to send a notice of IP infringement with contact details. It differs
   from form filling in a way that ABR provides for 3000 characters
   description and can attach any links or files to prove the
   infringement which is 1000 characters in form filing method.

3. Utility Patent Neutral Evaluation Pilot Program- In 2019, Amazon
   launched it’s UPNEP pilot program which is more robust and cost
   effective mechanism than the above two methods to report
   infringement. However, the party can be enrolled in this only by
   invitation.

Conclusion

To sum up, even though proving a design patent is a difficult task, once
its proven that there is counterfeit of the seller’s registered design
the consequences can be devastating for the party counterfeiting. On top
of the accounts being suspended, the party can be asked to pay the
damages, lost profits or even the total profits earned by counterfeiting
the designs. Thereby, it is necessary to have a proper legal check
before listing the products on Amazon. It is also necessary to read the
Amazon’s Intellectual Property Policies to avoid any hurdles in the
future.