Late last year Amazon launched in Australia and while its arrival was a little underwhelming, online retailing is posing a number of challenges to brand owners including the ability to deal with the sale of counterfeit goods on Amazon. To assist sellers to protect their brands, Amazon has created the Brand Registry. While this program has been welcomed by Amazon sellers around the globe, there has been some confusion about its application, what it actually protects and how to enrol in the program.

This article aims to explain the Amazon Brand Registry and provide some guidance to Australian Sellers on Amazon how best to protect their trade marks and enrol their brands in the program.

What is the Amazon Brand Registry?

The Amazon Brand Registry is designed to help brand owners protect their registered trade marks on Amazon.

Benefits of Enrolling in the Amazon Brand Registry

Enrolling your brand in the Amazon Brand Registry provides you with many benefits including:

  • Increased authority over your product listings that have your brand name;
  • Amazon will work with you to reduce intellectual property and trademark violations;
  • Amazon will give you access to powerful tools including proprietary text and image search, and predictive automation based on your reports of suspected intellectual property rights violations.

Who can enrol in the Amazon Brand Registry?

The Amazon Brand Registry program is only available to brands with a “registered trade mark” (not a pending application) incorporating a word (whether alone or in combination with other elements) in one or more of the following countries:

  • Australia, the United States, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the US and the EU

How do you get your brand registered on the Amazon Brand Registry ?

In a nutshell – GET A REGISTERED TRADE MARK.

The trade mark you file will depend on what you want trade mark protection for. If the purpose of filing the trade mark is purely to enrol in the Amazon Brand Registry, then you may only wish to file a word mark application in relation to your goods. If however you require specific trade mark protection for your logo, then you should file a separate trade mark application for that mark also.

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

  • details of their registered trade mark, 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.

Note that once your trade mark is registered in Australia you can use an Australian Registered Trade Mark to apply for the Amazon Brand Registry in most if not all Amazon marketplaces, including the USA, UK, Australia, Canada etc. This means that once you have obtained a Registered Trade Mark in Australia, you don’t need to register your trade mark in those other countries to qualify for their respective Amazon Brand Registries.

Be aware – The Amazon Brand Registry is a separate trademark registry from the government trademark registries, such as IP Australia or the United States Patent and Trade Marks Office and enrolling on the Amazon Brand Registry does not give you trade mark protection in the countries in which you enrol your brand per se.  Simply because you have a registered trade mark in Australia does not mean you have protection for your mark in say the US or Canada. Therefore, without a registered trade mark in each country, there is a risk that you could be infringing a trade mark which is already registered in that country. It is a criminal offence in most countries to misrepresent a trade mark as registered and therefore, you should obtain registration of your trade mark in each country of interest before enrolling in the Amazon Brand Registry of a country where your mark is not registered.

Trade Mark Registration – Australia and beyond – How brandU Legal can help

As mentioned above, although obtaining a registered trade mark in Australia or one of the countries listed above will allow you to enrol in the Amazon Brand Registry, this may not be enough to protect your brand.

Because trade mark protection is jurisdictional, yu should consider filing your trade mark in each country where you require protection, that is where you are or are intending to sell your goods.

International Trade Mark Registration

There are two ways to apply for overseas trade marks:

  • directly to each country of choice; or
  • through the Madrid Protocol (there are now over 100 countries covered by the Madrid Protocol)

For further information concerning international trade mark protection, see the article  “International Trade Mark Protection? What you Need to Know” on our website.

It is important to note that once you apply for a trade mark in one country, you have six months to apply through the Madrid Protocol or nationally via our international associates and still obtain the same filing date of the first application filed.

For further information concerning the Amazon Brand Registry and how we can assist you with this or international trade mark protection please contact us.