Trademark infringements on Amazon: How to effectively protect yourself as a trademark owner and when Amazon is liable
Amazon: Sales platform and legal risk at the same time
An article from Dr. Norman Dauskardt
Amazon is both an opportunity and a risk for brand owners. Although the platform offers enormous reach, many companies are coming under pressure from third-party sellers in particular: fake or misleading offers that are confusingly similar to their own products keep popping up.
The risk of confusion not only often leads to damage to the company's image, but also often constitutes a trademark infringement. It becomes particularly critical when providers operate from abroad - difficult to identify, but nevertheless damaging to business. The key question is: When is Amazon itself legally responsible?
- Typical forms of trademark infringements on Amazon
- When is Amazon liable as a company?
- Amazon and the Digital Service Act
- Recent judgments: How has case law ruled on trademark infringements by Amazon?
- What can trademark owners do?
- Conclusion: Amazon can be liable for trademark infringements
- Our legal services in trademark protection
Your contact person:
Lawyer
Specialist lawyer for intellectual property rights
Phone: +49 30 36 41 41 90
E-Mail: kontakt@abd-partner.de
More articles from
Dr. Norman Dauskardt:
1. typical forms of trademark infringements on Amazon
Trademark infringements take place on Amazon every day. These constellations are particularly common:
- Counterfeit products: Third-party providers offer imitations with identical or similar brand names. Customers then often opt for the cheaper version, which can result in a loss of sales for the company's own product, possibly damaging its image and ultimately confusing the customer.
- Misuse of existing offers: Third-party sellers link into a genuine brand offer. This is possible because Amazon allows multiple sellers to sell under the same product page (ASIN). As a result, not only does a third-party seller sell a different, possibly lower-quality product under your brand, but your own product also loses value and credibility. Because if there are negative reviews, this will affect your brand image.
- Illegal use of brand names: Protected trademarks are used in product titles or descriptions without permission. Not only does this often constitute a clear trademark infringement, but it also creates the impression that the other product is associated with your trademark.
- Problematic Amazon suggestions: Even automatic recommendations can contain illegal content. If product recommendations or search results contain incorrect trademark attributions, this can lead to trademark infringements.
2 When is Amazon liable as a company?
Amazon is liable as a proprietary trader
Amazon acts as a retailer if it sells a product directly. This is particularly the case if the product is offered with the addition "Sale by Amazon" or if an Amazon own brand is sold. In such a case, the platform is fully liable. This is illustrated by the case of the red shoe sole: In the ECJ ruling of 22/12/2022 (C-148/21 and C-184/21), Amazon has been included in the so-called Louboutin case was held responsible. The case concerned the sale of shoes with a characteristic red sole - a registered trademark of Louboutin - by third-party sellers via the Amazon platform. Although Amazon had not sold the products itself, the ECJ ruled that Amazon was directly liable. The reason for this was that users could not clearly recognize that the products came from third parties. According to the ECJ, this is the case if Amazon presents its own products and third-party offers in a uniform manner and displays its own logo. The presentation of the offers gives the consumer the impression that they come from Amazon itself. It is precisely this circumstance that leads to legal self-responsibility.Amazon liable as platform operator
Amazon is also liable for its role as a platform. If third parties sell products via Amazon, Amazon as a platform is basically only an intermediary. However, if Amazon is aware of the infringement and does nothing, the company can be held liable. This is also referred to as "fault-based liability". One example of this is plant-based products such as "soy milk" or "oat milk", which are offered by third-party sellers on Amazon. Although they are purely plant-based, EU law (Art. 78 para. 2 Regulation (EU) No. 1308/2013) cannot be referred to as "milk". If Amazon is made aware of such infringements, the company must not only react, but also independently prevent similar infringements in the future, the Higher Regional Court of Frankfurt ruled on December 21, 2023 (Ref. 6 U 154/22). Amazon is therefore also liable as a marketplace operator.3 Amazon and the Digital Services Act (DSA)
Amazon must afterwards:
- Offer reporting options for illegal content (Art. 16 DSA): Amazon must offer a system through which users and rights holders can report illegal content quickly and easily. The reporting options must be accessible, comprehensible and user-friendly. This provision is intended to ensure that those affected can report infringements quickly and easily.
- Respond quickly to tips (Art. 17 DSA): If Amazon has been notified of an infringement, the company must investigate the incident quickly and - if the notification is justified - remove or block the content concerned. The regulation requires the platform to react quickly and investigate the matter.
- Publish transparency reports (Art. 42 DSA): Amazon must regularly inform the public and the responsible authorities (such as the Federal Office of Justice in Germany as Digital Services Coordinator - DSC and the EU Commission as VLOPs) how much content has been reported and removed and what measures have been taken against illegal content.
And in the event of breaches of duty?
In the event of a breach by Amazon of its obligations under the Digital Services Act (DSA), the EU Commission may adopt measures in the form of sanctions (Art. 52 DSA).4. recent rulings - how has case law ruled on trademark infringements by Amazon?
In addition to the Louboutin case (ECJ, 22.12.2022, C-148/21 and C-184/21) and the soy product case (OLG Frankfurt am Main, Urt. v. 21.12.2023, Ref. 6 U 154/22), there are other decisions in which Amazon has been held responsible:
- BGH judgment of July 25, 2019 ( I ZR 29/18 - Ortlieb II): In this case, Amazon placed Google Ads in which protected brand names such as "Ortlieb" were used without the advertised products originating from the brand owner. The Federal Court of Justice ruled that Amazon was liable for such misleading advertisements and prohibited the use of brand names in Google Ads without the consent of the brand owner.
- LG Munich I, judgment of February 20, 2019 ( 37 O 5140/18): A third-party seller used product photos of a manufacturer of sports and leisure backpacks on Amazon without permission. The court ruled that Amazon was liable for the copyright infringement as the platform also used the photos for its own offers. Amazon was ordered to cease and desist and pay damages.
5 What can you do as a trademark owner?
- Amazon Brand Registry: If your trademark is officially registered, you can register it with Amazon. This can make it easier for you to enforce your rights, for example by giving you priority consideration for complaints.
- Report infringements of trademark law: In a "Notice & Takedown" procedure offered by Amazon, action can be taken against individual listings.
- Secure evidence: Document every infringement thoroughly. Records such as screenshots, correspondence, offer URLs and sales figures can be decisive in the event of a dispute.
- Achieve a sales lock: Inform Amazon in order to have the illegal offer blocked. A lawyer can help to inform Amazon of the trademark infringement in a legally secure manner and to enforce the blocking of the offer.
- Amazon warning: A warning letter against third parties or Amazon itself can be an effective means of preventing the infringement. Consulting a specialized lawyer can be helpful to avoid formal errors and to proceed with legal certainty.
- Interim injunction: A temporary injunction can ensure rapid judicial protection in acute cases (deadline: usually 1 month from knowledge). Here too, it often makes sense to seek legal advice in order to maximize the chances of success.
6. conclusion: Amazon can be liable for trademark infringements
7 Our legal services in trademark protection
As experienced lawyers in intellectual property law, we know how crucial trademark protection is for the economic success of a company. Especially on large online platforms such as Amazon, it is important to enforce this protection and your rights.
If you or your company are affected, for example because:
- Your trademark is infringed on Amazon,
- another retailer sells an inferior product under your ASIN,
- your trademarked brand name is used in product titles, descriptions, listings or advertisements without your consent, or
- you generally have the impression that your trademark rights are being infringed on or by Amazon
we will be happy to examine your legal options. In the event of a trademark infringement, we will support you quickly and in a targeted manner: with warning letters, cease and desist letters and the assertion of your rights in court.
Of course, we also work for the other side:
If you are accused of trademark infringement, for example, we will examine the claims carefully and defend you resolutely, e.g. against excessive warnings or attempts to exclude you from the competition.
You are welcome to contact our lawyers specializing in trademark law and platform liability directly. We are happy to offer you a free, no-obligation initial consultation about your concerns and advise you and your company in Berlin, throughout Germany and Europe.
Call us now on the telephone number 030 36 41 41 90 e-mail us at kontakt@abd-partner.de or use directly our contact form!
