Brand protection and online marketplaces
Brand protection and online marketplaces

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Brand protection and online marketplaces
  • Challenges facing brand owners policing online marketplaces
  • Practical steps to strengthen brand position
  • Taking legal action
  • Taking action against individuals
  • Taking action against online marketplaces
  • Taking action against ISPs providing access to sites selling infringing goods
  • Parallel imports
  • What relief is available to brand owners?
  • Threats

A growing proportion of retail sales are taking place online. Many consumers purchase goods via online marketplaces, such as Amazon, eBay and Alibaba. National boundaries have become blurred and counterfeiters and infringers can better hide their identity online. Brand owners therefore face a challenge in tackling the sale of counterfeit and infringing products online.

Challenges facing brand owners policing online marketplaces

Brand owners may have to tackle multiple types of infringement:

  1. trade mark infringement, for example:

    1. sale of counterfeit goods bearing the brand owner's logo or brand name. In a virtual shopping environment it is difficult for consumers to distinguish genuine products from copies

    2. parallel imports or grey market goods—products intended for sale outside the EEA that are put on the market within the EEA without the brand owner's permission

    3. sale of generic goods being sold in a 'shop' bearing the brand owner's name. The consumer is under the misapprehension that the goods originate from the brand owner at the point of sale

  2. copyright infringement, for example:

    1. using proprietary product photographs to sell counterfeit or legitimate goods

    2. products that infringe copyright, eg pirate DVDs

  3. design or patent infringement

    1. products sold incorporate a proprietary design or patent without the permission of the right owner

There are many practical steps that can be taken by brand owners to address these issues and