Protecting your brand on the Amazon marketplace ‒ Amazon Brand Registry launched in Australia

By Richard Hoad, Julia Gillies

01 Feb 2018

Businesses with registered Australian trade marks selling goods on Amazon should consider enrolling in the Amazon Brand Registry program.

Last year's Australian launch of Amazon was eagerly anticipated by Australian consumers - and nervously watched by Australian retailers. While Amazon's eventual arrival was widely critiqued as underwhelming, Australian retailers recognise that the retail landscape is shifting. Similarly, brand owners continue to confront the challenges posed by the ongoing growth of online retailing. One concern of brand owners has been the ability to deal with the sale of counterfeit goods on Amazon. In response to that concern, Amazon has created the Amazon Brand Registry program.

What is Amazon Brand Registry?

The Amazon Brand Registry program is a mechanism designed to help brand owners to protect their registered trade marks on Amazon. In particular, it enables brand owners to access proprietary search tools - for example, a brand owner can search for potentially counterfeit goods on the Amazon website by reference to the brand name and also using image searches. Amazon also markets the program as giving brand owners more control over their product listings.

Who can enrol in the Amazon Brand Registry?

The Amazon Brand Registry program is only available to brands with a registered trade mark incorporating a word (whether alone or in combination with other elements) in one or more of the following countries: the United States, Australia, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the United Kingdom or the European Union. Australia was only recently added to this list, following Amazon's Australian launch in December 2017.

In order to register, brand owners will need to provide Amazon with:

  • details of their registered trade marks, including the list of product categories in which the mark is registered;
  • a list of countries where the products are manufactured and distributed; and
  • images of the brand logo, products and packaging.

Brands can sign into their regular Amazon account, or create a new account online, and will then be able to complete the Amazon Brand Registry application process.

What options are available to brand owners who do not register?

Even if a brand owner does not have an Amazon Brand Registry account, it can still report trade mark infringements to Amazon. Amazon provides an online form to report intellectual property infringement, which can be completed either by the rights owner or by their agent. An Amazon account is not required to report infringement.

What about infringements of other intellectual property?

As noted above, the Amazon Brand Registry program is limited to registered trade marks having a word element. Complaints about infringements of other intellectual property - such as registered trade marks which do not have a word element, unregistered trade marks, patents, copyright and designs - can be submitted through Amazon's IP infringement reporting page.

Why should you care?

Brand protection is one of the key concerns confronted by brand owners with the arrival of Amazon in Australia - in particular, dealing with counterfeiting. The Amazon Brand Registry program is one mechanism by which brand owners can seek to manage the risk of counterfeiting. It is unlikely to resolve all of the concerns which have been expressed by brand owners (including allegations of Amazon itself selling counterfeit products), however it is certainly a welcome initiative.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.