In this insight we investigate how an Amazon takedown notice can be a communication which amounts to a “threat of infringement proceedings”.
Carku v Noco [2022] EWHC 2034 (Pat) established that Amazon takedown notices constitute a threat of infringement in the UK. Earlier this year, the decision was appealed in Noco v Carku [2023] EWCA Civ 1502 but the decision stands. We explore the decision and its implication for all IP holders who regularly sell on Amazon and use the takedown notice procedure.
Background – Amazon
Amazon has a very robust IP policy that does not permit listings on its platform which violate the intellectual property (IP) rights of owners or their licensees.
Where sellers have valid IP rights such as trade marks, patents, registered designs, unregistered design rights or copyright they can use those rights to file an IP infringement complaint with Amazon by using its Report a Violation (RAV) tool.
When your IP rights are violated, assuming your claim is accepted by Amazon, the offending page and/ or listing will be removed from its platform.
Amazon’s RAV tool is an efficient procedure which helps to quickly remove infringing listings and products from Amazon’s sales marketplace, but what happens when it is exploited unfairly?
We set out the current legal position and the dangers of filing repeated or unfounded violation reports below.
Background – law
Under the Unjustified Threats Act 2017 a person aggrieved by any threat of infringement proceedings relating to a patent, trade mark or design can (in certain circumstances) sue the person making the threat in the event that the threat turns out to be unjustified.
The person aggrieved by unjustified threats does not need to be the direct recipient of the communication containing the threat of legal action in order to have an actionable case under the Unjustified Threats Act 2017.
Essentially, the communication must be a threat and the person who has received it, even indirectly, must have considered it as a threat and changed their commercial activities/ interests following the communication and/ or can show that they would likely be changed due to the communication.
The type of communication which could constitute a threat can take many forms and is not limited to the standard “Cease & Desist” letter.
Current legal position
In 2022, the High Court considered this very topic in Shenzhen Carku v NOCO [2022] EWHC 2034 (Pat) and decided that using the RAV tool and takedown procedure on the Amazon online marketplace could constitute a threat to sue for infringement. In this case, the threat was found to be unjustified because the IP right asserted was not valid.
The NOCO Company (“NOCO”) filed multiple reports of violation of its intellectual property rights on Amazon which alleged that Shenzhen Carku Technology Co., Ltd (“Carku”) products infringed NOCO’s patent and requested that the relevant listings be removed.
Judge Meade J concluded (with “little or no hesitation”) that:
- The takedown notices were threats of patent infringement proceedings, against Amazon itself, and also clearly against the third-party distributors, as its communications made reference to proceedings against third parties in respect of its patent rights.
- Amazon evaluates the notifications it received and will have taken a decision whether to de-list based on (amongst other factors) the potential risk of litigation and the general impetus to maximise sales.
- Since the dispute between the parties required an analysis of the validity of the IP right in question, lawyers were involved and, presumably, advising as to legal risks. There was enough therefore for the Judge to “divine that Amazon makes a judgment in its own self-interest” and did not adopt a blanket policy of de-listing in response to a notification.
In 2023 the decision was subject to an appeal before the Court of Appeal. The appeal was dismissed, with a decision dated 19 December 2023, which confirmed that the High Court’s decision of Judge Meade J was correct, that the takedown request submitted by NOCO before Amazon did indeed constitute an (unjustified) threat of an infringement action, either directed at Amazon itself or third parties.
Final comments
Whilst the above decision relates to a patent case, it is the first time that the law on unjustified threats has been ruled on by a court in relation to Amazon’s Intellectual Property Infringement Policy.
The decision suggests that, in certain circumstances, any alleged infringement of any IP right (a trade mark, a patent, a design or even copyright) submitted via Amazon’s RAV tool, which insists on the delisting of an item, could be considered an actionable unjustified threat, where the claim is groundless.
It is therefore important that you have taken reasonable steps to ensure that you have valid intellectual property rights and there is a solid case of infringement when filing violation reports on Amazon. Despite how simple the RAV form is to fill out, the underlying legal issues can be complex, and it is recommended that you seek professional advice before filing such reports to ensure that you do not fall foul of the provisions set out in the Unjustified Threats Act 2017.
Contact an expert
Should you believe your IP rights may have been infringed upon discovering identical or similar products on sale on Amazon, eBay, Facebook or other marketplace platforms, please get in touch with one of our experts below, or find out more about our intellectual property services here.