Amazon Takes Pro-Active Steps to Eliminate Counterfeits from its Marketplace

Amazon has adopted two programs in an effort to discourage the sale of pirated or counterfeit goods on its website, namely the “Project Zero” and “Neutral Patent Evaluation” programs...

The Project Zero program is currently in an invitation only pilot phase and has three elements to it. The first element is an automated tool that utilizes the power of Amazon’s machine learning technology to scan for and remove listings of suspected counterfeit goods on a daily basis. To make use of this feature a participating rights owner needs to upload their registered brand data, such as textual and device trade marks. This feature has resulted in a dramatic decrease in the amount of counterfeit listings. The second and potentially controversial element gives rights holders the power to remove listings that they consider to be for counterfeit goods. Such removals also feed into and inform the algorithms for the automated removal tool. As a guard against abuse of this facility Amazon requires a very high percentage of the removed counterfeit listings to have been correctly identified as such, failing which a rights owner will be removed from the Project Zero program. The third element is product serialization for third-party products purchased in Amazon stores. This requires each unit of each third-party product to be assigned a unique code which is then attached to the product in the manufacturing process so as to allow Amazon stores to scan and verify its authenticity when purchased. The optional product serialization service is offered for a volume weighted per unit charge.

In order to qualify the registration needs to have been issued by at least one of the government trade mark offices in the following countries / regions: the United States, Australia, Brazil, Canada, the European Union, France, Germany, India, Italy, Japan, Mexico, Spain, the United Arab Emirates, or the United Kingdom. Owners also need to have an Amazon account. Only owners can enrol their brands in the Amazon Brand Registry, but the owners can then authorise agents to be representatives in relation to some or all of those brands.

The Neutral Patent Evaluation program began in late 2018 and provides patent owners with a non-judicial process to challenge products on the Amazon marketplace that they believe are infringing their patent rights. This is done by way of referral of the issue to an independent expert who is tasked with determining whether patent infringement has occurred on the basis of written submissions by both parties, with the patent owner making the allegation to which the merchant replies to which in turn the patent owner has a right of reply. The product is removed if an infringement determination is made, as well as if the merchant does not provide a response to the patent owner’s allegation. The entire process should take no more than 4-months and the losing party has to pay the charge of US$4,000. The parties retain the right to initiate infringement or invalidity actions through the Courts. However, each use of the Neutral Patent Evaluation program needs to be in respect of a single claim of a single US utility model patent.

Author: Quinn Miller

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