American and European companies that have their consumer products made in China constantly have to contend with their own products or a counterfeit of their own products showing up on Amazon. My law firm’s international IP lawyers frequently get inquiries from companies that sell their products on Amazon and have seen their sales fall by 30 to 80 percent because they are now having to compete with duplicate/counterfeit products sold on Amazon. These inquiries spiked when Amazon started encouraging Chinese companies to sell their products on Amazon.
The following are five key things you can do to reduce the risk of your product showing up on Amazon and to better position yourself to remove those products if they do show up.
- File for United States Trademark Protection. Amazon is quick to remove products that clearly violate a registered U.S. trademark. If you ask Amazon to remove a product because it “duplicates” yours, but it does not use your trademark, Amazon virtually never will do so. This is true even if the offending product violates one or more of your patents. In our experience, Amazon typically will not take down cloned products without a court order.
- File for China Trademark Protection. If you have a China trademark, the odds of anyone making a product similar to yours and putting your exact name on it go way down. See China Trademarks — Do You Feel Lucky? Do You? This can be a cheap and effective way to stop someone in China from making your product with your name on it and then selling it on Amazon. Oh, and register those trademarks in China directly, not via Madrid.
- Block your China Manufacturer From Competing with you. In Your China Factory as your Toughest Competitor we noted how our China attorneys have become fond of pointing out to our clients, “since you will essentially be educating your Chinese manufacturer in how to compete with you, you need contracts that will at least limit what it can do when it does so.” The most deadly copiers of all are those that are literally making your exact product. How do you compete with that if they are selling it for 50% less than you are?
- Copyright your key photos in the United States or in China or in both countries. Counterfeiters are often lazy. It never ceases to amaze me how often Chinese copiers will use our client’s own photos (oftentimes downloaded straight from Amazon) on Amazon to sell their products. We have on many occasions been able to remove entire listings because the photo or photos on those listings violate our client’s registered copyright in either the United States or in China. Technically, in both the United States and in China, you do not need a registered copyright to hold the copyright to a photo, but you are far more likely to get a listing removed from Amazon for copyright infringement if you have a registered copyright. A registered copyright in one country (either China or the United States, or even some third country) should be enough for this, but where you choose to register should depend on a whole host of factors. It is true that if you remove a listing for copyright infringement of one of your photos, the company that violated your copyright can just put up a new listing with a new photograph that does not violate your copyrights. Surprisingly enough, we have found that they generally just move on instead, either because they were blocked by Amazon from listing or because they simply choose a different product to push. See China Copyright Law: We Need to Talk.
- Build your brand, be distinctive, and change often. This is non-legal advice, but I have found that companies that work from day one on building their brand and their image and have well-crafted Amazon listings are simply more difficult to copy. Being difficult to copy not only means that you will be copied less often than your competitors but it also means that when copied the negative impact on your business will be less. And if you are constantly changing up what you do, you can sometimes stay at least somewhat ahead of your imitators.
What are you seeing out there?