Beyond the Courtroom - enforcing registered designs on online market places

In today’s digital-first retail landscape, enforcing registered designs doesn’t always require a courtroom battle. Platforms like Amazon, Etsy, and eBay offer streamlined takedown procedures that empower rights holders to act swiftly against infringing listings. But while these tools empower claimants, they can also leave accused sellers scrambling to defend their businesses.

Amazon provides a robust IP enforcement system through its Report Infringement Form and Brand Registry. Registered design owners can submit complaints detailing the product and nature of the infringement. If this complaint is accepted, Amazon may delist the product within days. 

Etsy’s takedown policy operates under the US derived Digital Millennium Copyright Act (“DMCA”), which allows design owners to file infringement notices via its Reporting Portal or by email. Etsy prefers that the Reporting Portal is used to ensure the notice is processed with greater efficiency. The process requires proof of ownership and a good faith belief that the listing violates your IP rights. Under the DMCA, Etsy accepts counter notices for US-based copyright infringement reports only. Etsy acts quickly, often removing listings within hours and repeated violations may lead to shop suspensions.

eBay uses the Verified Rights Owner (VeRO) Program, enabling registered design holders to submit a Notice of Claimed Infringement. Once verified, infringing listings are removed, and sellers are notified. The process is global, covering design rights in regions like Europe and Asia. 

These systems are attractive for claimants because they’re low-cost, fast, and don’t require litigation. However, they also carry risks – particularly if used aggressively or without solid legal basis.

A takedown can be devastating for a business. Listings can vanish overnight, often without warning, leading to lost revenue, damaged reputation, and even account suspension. So, what do you do if an unfounded take down is issued against your product with a registered design.

Unfortunately, these systems generally operate on a presumed guilty and ask questions later basis. Whilst sellers can respond by filing counter-notices and outline proof of ownership of a registered design, these platforms do not act as mediation services and to avoid liability will remove products from their listings and expect parties to negotiate separately to remove the take down notices. 

While these platforms offer powerful tools, misuse or vague claims can backfire. Rights holders should ensure their designs are properly registered and that takedown requests are well-founded as if they do not, it could raise a claim (i.e. under the unjustified threats provisions).

In many cases, these non-court mechanisms offer faster, cost-effective enforcement which can be especially vital for small businesses and emerging brands.

Whether you have received a takedown notice and need advice on your options regarding validity and alleged infringement, are considering submitting a takedown request and wish to verify your rights and assess potential infringement, or are in the midst of negotiations with another party, such as settlement discussions or licensing arrangements, our team here at Mewburn Ellis is able to assist you.

This blog was co-authored by Liam Batty and Caroline Hart.