Within the framework of a notice-and-take-down procedure, operators of online marketplaces such as Amazon & Co. are obliged to immediately block offers from merchants that violate competition law once they have been notified of such infringements by third parties.
In addition, they are required to monitor merchants who have already been reported and to block unlawful content. The purpose of this principle is to effectively prevent infringements of intellectual property rights such as patents, trademarks, utility models, and designs in e-commerce.
Table of contents
- What is the notice-and-take-down procedure?
- Background: Legal framework for notice and take-down
- How does a notice-and-take-down procedure work?
- Notice-and-take-down procedures: support from experienced patent attorneys
- Enforcing IP rights effectively
What is the notice-and-take-down procedure?
The notice-and-take-down procedure is a key mechanism in digital intellectual property protection and serves to protect trademark, design, patent, and utility model rights on platforms such as Amazon from abuse. If you discover that a product offered by another merchant infringes one of your intellectual property rights, you can notify the relevant e-commerce platform and have the product removed.
In the past, however, there have also been frequent cases of abusive use of the notice-and-take-down procedure. In such cases, sellers on an e-commerce platform were reported for allegedly infringing another party’s IP rights. In most instances, these involve unexamined IP rights, such as utility models or designs. Once such a right is registered, the rights holder is entitled to have an offer blocked on Amazon & Co. For this purpose, it is sufficient to assert to the platform operator that the respective offer infringes its IP right.
Do you suspect that you have become the victim of such an abusive complaint, or are you concerned that one of your IP rights may have been infringed? Our experienced patent attorneys will be happy to advise you.
Role and liability of platform operators
As a rule, the platform operator is not qualified to decide whether an infringement has actually occurred. However, it runs the risk of being held liable if it refuses to carry out a blocking request. In such cases, the operator relies on the EU E-Commerce Directive, which governs key issues of electronic commerce, in particular the liability and responsibility of service providers. Pursuant to Article 14 of this Directive, providers are exempt from liability if they block access to infringing content as soon as they become aware of it.
Notice-and-take-down: consequences for merchants when listings are blocked
This type of blocking following a report on e-commerce platforms is referred to as a notice-and-take-down procedure. Within this framework, Amazon & Co. are obliged to monitor reported accounts and are entitled, if necessary, to close them entirely. The consequence is that, regardless of whether an infringement actually exists, you can no longer sell blocked products on these platforms, and you may face significant revenue losses.
To take action against this, rapid legal support is crucial. RGTH’s experts assist you in challenging blockings and protecting your business. Contact us for individual advice.
Background: what legal framework applies to notice and take-down?
The notice-and-take-down procedure is not only relevant for liability exemptions in e-commerce, but also plays an important role in combating copyright infringements on the internet.
In addition to the EU E-Commerce Directive, the Digital Millennium Copyright Act (DMCA) provides the legal framework that exempts operators of online services such as social media platforms, internet service providers, or hosting services from liability for copyright infringements committed by their users. As in online commerce, the dissemination of copyrighted or otherwise unlawful content is subject to the principle that hosts or providers can only be held liable under the concept of secondary liability in copyright law if they fail to respond to a rights holder’s notice and neither remove the content nor block access to it (take down).
How does a notice-and-take-down procedure work?
Regardless of whether the case involves an infringement of intellectual property rights in e-commerce or a copyright infringement, the notice-and-take-down procedure begins with the reporting of the alleged violation to the platform operator, host, or provider.
Obligations of platform operators
Instead of immediately deleting or blocking content or products, platform operators may initially request a statement from the affected merchant or the person responsible for the content. Unlike competent courts or experienced patent attorneys, however, these companies are often not sufficiently qualified to determine whether an infringement actually exists. In order to protect themselves as effectively as possible from the consequences of legal disputes and court proceedings, it is therefore common practice to delete or block too much rather than too little. The same applies to the obligation to monitor previously reported accounts and, if necessary, to close them entirely. This often leads to lawful content and products being blocked or removed as a precaution.
Overblocking in notice-and-take-down procedures
From the perspective of platform operators, this approach is understandable. From the merchants’ perspective, however, so-called “overblocking” can be devastating. In a fast-moving business such as online trading on Amazon & Co., prolonged blocking can not only cause substantial financial damage but can also permanently harm a company’s reputation. Statements made to platform operators are usually ineffective, as they often lack the necessary experience and expertise to assess whether an IP right has been infringed.
Notice-and-take-down procedures: support from experienced patent attorneys
In notice-and-take-down procedures, support from experienced patent attorneys is essential to enforce your rights. On the one hand, this is necessary to assess whether your own IP rights have actually been infringed and to take appropriate action. On the other hand, legal assistance is crucial to take action against unjustified blockings on Amazon & Co..
Assistance in cases of unjustified blocking – key steps
The market power of Amazon & Co. is immense. Without sound knowledge of the correct procedure for notice-and-take-down actions, it is difficult to achieve the lifting of an unjustified blocking on Amazon or eBay. To enforce your own rights and effectively counter unjustified blockings, the experienced patent attorneys at RGTH support you with, among other things, the following services:
- Warning letter and cease-and-desist declaration with penalty clause: If your product or account has been blocked on Amazon, the first step is to send a substantiated warning letter to the company whose report triggered the blocking. This should include a cease-and-desist declaration subject to a contractual penalty.
- Preliminary injunction: If the company does not accept the warning letter, the only remaining option is to obtain a preliminary injunction from the court.
- Judicial clarification: If the company still fails to respond, the matter proceeds to court proceedings.
Protecting your intellectual property – key steps
Advice from experienced patent attorneys is equally important when it comes to enforcing your own intellectual property rights within the framework of notice-and-take-down procedures. RGTH’s experts assist you with:
- Registration of your IP rights: Our patent attorneys help you effectively protect your intellectual property against misuse by registering it with the German Patent and Trade Mark Office (DPMA). IP rights such as a patent, a utility model, a trademark, or a design form the basis for effectively taking action against infringements in e-commerce.
- Assessment of infringements: If you suspect that other merchants are infringing your registered IP rights, caution is required. If no infringement exists, initiating a notice-and-take-down procedure without justification may expose you to claims for damages. Our patent attorneys assist you in assessing whether an infringement has actually occurred.
If an infringement of your IP rights exists, the case is reported to the platform operator (notice). This warning letter must comply with specific formal requirements, content requirements, and proper service:
- Notification to the platform operator: In addition to a detailed description of the infringement, the notification must also include a reference to the relevant IP right.
- Review by the platform operator: In the next step, the platform operator reviews the notification and decides whether it considers the complaint justified and whether it will delete the reported content and, if applicable, block the merchant’s account. The platform operator then informs the affected merchant, who has the opportunity to file an objection to the deletion or blocking.
- Response to the objection: This so-called “counter notice” must also meet certain legal requirements and may result in the platform operator reinstating the deleted content or lifting the account suspension.
- Further legal steps: If this occurs, legal action may be initiated in the next step to have the lawfulness of the notification reviewed by a court and to prevent the abuse of your intellectual property rights.
Enforcing IP rights effectively
The notice-and-take-down procedure forces trading platforms such as Amazon to act quickly once they become aware of infringements of intellectual property or competition law. Not infrequently, such notifications lead platforms to remove products preventively or even block entire accounts as a precaution in order to avoid potential liability risks. This results in unwanted overblocking, which can have both financial and reputational consequences for merchants. In such cases, support from experienced patent attorneys is crucial to defend against unjustified blockings or to effectively enforce your own IP rights.
We would be pleased to advise you on enforcing your IP rights and to work with you to develop a solution tailored to your individual situation.
Disclaimer: The information provided above does not constitute legal advice. No guarantee is given as to its accuracy or completeness.