The continuing rise in popularity of online shopping on e-commerce platforms, such as Etsy, eBay, Shopify, AliExpress, etc., has also seen a rise in infringement of intellectual property rights. This has created a minefield for online platforms to navigate, as they balance their desire for increased usage of their services, with the need to be actively aware and mindful of third parties’ intellectual property rights. A number of online platforms now have what is known as a “takedown procedure”, using a one size fits all approach, allowing trade mark owners to enforce their rights in the online space. However, this approach relies on third parties, generally the trade mark owners, to notify the host of the particular online platform of any alleged infringement, rather than the platform itself having to monitor each and every piece of uploaded content.
Shopify and takedowns
By way of example, Shopify (an online space, where people can set up their own stores within the platform) has an intellectual property policy. The owner of a trade mark registration is able to have any unauthorised use of its mark removed from Shopify’s platform, and in some instances have the account(s) of repeat infringers disabled or terminated. The owner simply needs to notify Shopify of the alleged infringement(s), including providing details of:
- the owner’s full name and contact information;
- a description of the mark, where it is registered, its registration number and the goods/services covered by its registration;
- links to the alleged infringing content;
- an outline of why the alleged content is infringing; and
- statements that the online use has not been authorised, that the information provided is accurate and an acknowledgement that all the details provided may be passed on to the alleged infringer.
Once Shopify has been notified, the alleged infringing content is taken offline. Shopify will then contact the store owner, informing them of the content that has been removed, and the ability to dispute its removal.
Benefits for owners of registered trade marks
Using the takedown procedure of online platforms, such as Shopify, is an effective way of quickly removing unauthorised use of your trade mark. This will quickly prevent any further consumer confusion as to the source of your goods and/or services, assist in protecting your reputation, and prevent any further loss of business to you. However, it is also important to follow up with the alleged infringer, where possible, to ensure that they understand your rights and the potential consequences of their conduct.
What if someone asserts rights that they do not have?
These takedown procedures are quite simplistic, as online platforms are not trade mark experts and do not have powers of a court to determine liability. Therefore, if your content has been removed, and you would like to dispute this on the basis that it was inappropriately done, it is important to consider what options are available, including:
- checking the validity of the trade mark registration, including whether it is registered in Australia. Trade marks are territorial and if it is not registered in Australia, you may not be infringing;
- compareing the marks to assess whether they may be considered substantially identical or deceptively similar. If you can show that the marks are not at least deceptively similar, there may not be any trade mark infringement; and/or
- comparing the goods and/or services. Even if the trade marks are identical, if you are using your mark for goods and/or services that are not the same as, similar to, or closely related to those covered under the registered mark, your use may not be infringing the trade mark registration.
The onus is on the alleged infringer to dispute the takedown of its content, and the above options are only a sample of ways in which you may be able to prevent your content from being permanently removed from an online platform. If an online platform, such as Shopify, does not re-instate your content, there may be further avenues you can take to seek to defend your use of your trade mark.
Our trade mark attorney team at Baxter IP are highly-experienced trade mark attorneys, and we can advise you on all of your options, both in relation to submitting a takedown notice or disputing one, as well as your further options for seeking protection of your brand, including trade mark registration. Baxter IP can also advise you when setting up your business to ensure that you have the right to use and/or register any mark.
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