How quickly can I get my Amazon product re-listed after an unjustified registered design takedown?

Sellers on online marketplaces such as Amazon™ are increasingly receiving takedown notices citing UK registered design infringement, only to look at the illustrations of the registered design and see a product which had been on sale for years before the filing date of the registered design.

Our clients are often under time pressure to get their products re-listed, before they are forced to pay for transportation and storage of their de-listed stock. Furthermore, their Account Health score may be impacted by the takedown, affecting the visibility of their store. Re-listing a taken-down product can result in sanctions up to store deletion. 

If the registered design holder does not agree to retract their complaint, we consider there to be four options at present: 1) an attorney opinion acceptable to Amazon, 2) proof of invalidation, 3) a court ordered interim injunction against the unjustified threats, or 4) a court-ordered final injunction against the unjustified threats. 

1) Attorney opinion 

When we are provided with identical prior art designs to compare with the registered design, it is possible to prepare an attorney opinion on our letterhead within a matter of days and at a much lower cost than applying for invalidation. If accepted, the listing could be reinstated very soon thereafter. 

Our experience is that this approach has inconsistent results, but may be worth trying. In one case, our detailed opinion letter explaining why the registered design was clearly invalid (with evidence) unfortunately resulted in an automated message stating that the information provided was insufficient. It is not clear that the letter was read by a human. In another case, our letter explaining that the registered proprietor of the design was a dissolved company (unable to bring proceedings) was successful. 

Therefore, we currently only recommend submitting attorney opinions on an experimental basis, with the expectation that another approach may be necessary. 

2) Invalidation before the UK Intellectual Property Office (UKIPO)

The UKIPO invalidation process is summarised in our previous article.

In our experience, the process takes approximately four to five months from filing the invalidation application, if the proprietor fails to file a defence. We also advise providing two-weeks’ notice to the design holder before filing the invalidation action. You may also wish to try an attorney opinion (option 1) before applying for invalidation. 

If the proprietor files a defence, the process may take at least 10 months, to over 18 months in some cases. The cases with the longest lead times are those which involve a hearing.

If an image of the pre-existing design is identical to the registered design and accompanied by a publication date that pre-dates the registered design by at least a year, there is little reason why the invalidation action should not succeed. The evidence and grounds must however be presented in a manner that is acceptable to the UKIPO. 

Please note that if the invalidation action is filed without attorney assistance, there is a high chance that the evidence or grounds will not comply with UKIPO requirements so the invalidation action will fail. This especially includes grounds prepared or reviewed by generative artificial intelligence (AI) platforms, not least due to their inherent inability to understand the pictorial evidence, and their present tendency to cite wrong or non-existent case law and sections of the relevant statute. The UKIPO’s published designs decisions are strewn with cautionary tales of self-represented individuals failing with invalidation actions that should have succeeded with representation.

3) Court-ordered interim injunction

It is possible to seek an interim injunction for unjustified threats of registered design infringement, meaning that a temporary court injunction against the takedown could be granted in a matter of days rather than waiting for a full trial or summary judgment. 

Unjustified threats are discussed in one of our previous articles. The courts have the discretion to grant interim injunctions for serious and urgent cases. 

In Quads 4 Kids v Colin Campbell [2006], an interim injunction was granted to order the withdrawal of complaints made through eBay’s™ Verified Rights Owners Programme (“VeRO”). The circumstances included the allegedly-infringed registered design being an unpublished application at the time of the threat, and validity concerns being identified.

Various factors may be considered in an interim injunction application. Firstly, and importantly, the interim injunction application must be made without delay, and the threat must be likely to continue in future. Secondly, the registered design should appear clearly invalid or non-infringed at first glance, or there should be some other procedural deficiency such as the registered design being an unpublished application. 

An interim injunction may be awarded if damages are not an adequate remedy. Loss of sales of a product can be difficult to quantify when assessing damages, especially when considering the time of year and how long the product was on sale for prior to the takedown. Furthermore, the seller’s whole store may be impacted due to a drop in their Account Health score, which may be difficult to address through normal damages calculation. Furthermore, the seller may encounter incidental costs such as warehousing and transportation of de-listed items that have to be removed from Amazon’s warehouses. These may favour awarding an interim injunction.

Other factors that may weigh in favour of an interim injunction may be that the design holder may not be trusted to pay court-awarded damages. Furthermore, the harm to the seller from the takedown may be greater than the harm suffered by the design holder if the takedown is retracted, due to compromised Account Health, and upcoming transportation and storage costs for de-listed stock. 

Although the initial cost of seeking an interim injunction is greater than an invalidation action, the potential for a much faster resolution could save more money in the long term, than waiting for invalidation to conclude.

4) Court-ordered final injunction against the threats

If the issues of validity and infringement of the registered design, and unjustified threats, are heard in the courts, the court has the power to award a final injunction against the unjustified threats among other things. This happened in Shenzhen Carku Technology Co., Ltd v The NOCO Company, in relation to threats of patent infringement through Amazon. 

A court judgment may take 9 to 18 months to reach, depending on current court backlogs. If the court can award a summary judgment, the time may be reduced by several months. 

Full litigation is the most expensive option, and is generally regarded as a last resort. However, the courts have the power to award damages, a high proportion of legal costs, and high additional damages if one side has abused the process. Failure to comply with a court judgment can result in criminal sanctions. One should be mindful of whether the registered design holder is outside the UK, and whether English court judgments can be easily enforced in the country where they reside. 

Final remarks

The current article is written in the context of law, policy, and practice as they currently stand. These may change, and this article may become obsolete in due course. Furthermore, new case law may emerge.

If you have any questions with regards to this article or how Swindell & Pearson can help you and your business with intellectual property, please don’t hesitate to get in touch with the author Tim Gilbert or call +44 1332 367 051.