Discovering intellectual property infringing products at e-commerce malls is an extremely important theme in recent intellectual property strategies. In this article, based on my practical experience as a patent attorney, I will explain specific tips for discovering infringing products on major e-commerce malls such as Amazon, Rakuten Market, and Yahoo! Shopping, as well as how to deal with each platform.
Table of Contents
In recent years, intellectual property strategy has become one of the important pillars, not only of filing strategy, but also of discovering and taking measures against infringing products. For companies that sell products to general consumers, intellectual property strategies in e-commerce malls are becoming increasingly important.
Key points of this article
In this article, I will introduce methods for discovering infringing products that have been actually effective as a patent attorney. For inquiries regarding this article, please use the form at the end of the article.
At EC Mall, everyone from sole proprietors to small and medium-sized businesses can obtain permission to open a store relatively easily. In addition, it has become easier to purchase products through the Internet, and we are now in an era where even individuals can sell products on e-commerce malls.
For example, you can sell products on Amazon by paying the listing fee and sales commission, and you can open a store on Rakuten Market for a store opening fee and system usage fee of tens of thousands of yen. This low barrier to entry has resulted in a structure in which it is easy for products that infringe on intellectual property rights to be distributed.
Difference between EC mall vs. physical store
When selling a product at a retail store, the retailer may check with the manufacturer about the status of intellectual property rights investigations when handling the product. Therefore, infringing products tend to be less common in physical stores than in e-commerce malls. On the other hand, e-commerce malls lack such checking capabilities, so more active monitoring of infringing products is required.
E-commerce malls allow individuals to easily open a store and sell purchased products or their own original products. However, there are cases in which individuals and small and medium-sized enterprises do not have expertise in intellectual property rights and sell products without realizing that they are infringing on the rights of others.
Even if the company manufactures original products, there are many cases where they are manufactured and sold without conducting sufficient research to prevent intellectual property infringement. Against this background, it is essential for rights holders to proactively discover infringing products.
Here are five specific methods for efficiently discovering infringing products at e-commerce malls.
The basic method is to find infringing products using the product search on EC mall. However, there are some tricks to selecting search keywords. It is important to search using multiple keyword patterns, such as the general name of your product, distinctive function name, and category name.
Search keyword tips
Recent e-commerce malls have extensive recommendation functions. When you browse your own products or similar products, similar products will be suggested as ``Products that are often purchased together'' or ``Products related to this product.'' By utilizing this feature, you may be able to discover infringing products that are difficult to find through normal searches.
Nowadays, SNS marketing has become important, and many sellers are promoting their products on SNS such as Instagram. A previously unknown product can suddenly become recognized through SNS and sell in large quantities. By taking advantage of this trend and searching for and monitoring similar products on SNS, you can quickly discover sellers of infringing products.
An effective way to detect infringing products at retail stores is to share information about your company's intellectual property rights with your in-house sales representatives and instruct them to find infringing products during sales activities. Since sales representatives observe the market on a daily basis, they can contribute to the early detection of infringing products.
It is also effective to use Google image search or Amazon's image search function to search for similar products using images of your product. Especially in the case of design rights infringement, products with similar appearance can be efficiently discovered based on images.
In order to ensure the discovery of infringing products, it is important to establish internal and external systems.
Sharing information to EC staff
EC staff members are responsible for posting products on EC Mall on a daily basis, and they see the most information on EC Mall. It is a good idea to share information about your company's intellectual property rights, as there is a high possibility that you will discover infringing products during your work.
Sharing information with business partners
Products may be posted on the EC mall by business partners. By sharing information about intellectual property with business partners and their e-commerce personnel, you can widen the network for discovering infringing products.
Each major e-commerce mall has a program or contact point to respond to intellectual property infringement. The characteristics of each platform are summarized below.
| Item | Amazon | Rakuten Market | Yahoo! Shopping |
|---|---|---|---|
| Intellectual property protection program | Amazon Brand Registry | Rakuten Intellectual Property Protection Program | Intellectual property infringement notification counter |
| Declaration method | Online form | Special form email | Special form |
| Supported speed | Relatively fast (about a few days) | Depends on the project (1~2 weeks) | Depends on the project |
| Features | Automatic monitoring function available with brand registration | Relatively strict store opening examination | Can be declared from Store Creator Pro |
| Required documents | Trademark registration number, etc. | Certificate of title | Certificate of title |
If you discover infringing products, it is effective to take the following steps.
Step 1: Preservation of evidence
We will record and save the screenshot, URL, and seller information of the product page of the infringing product.
Step 2: Product delivery and physical confirmation
If it is difficult to make a judgment based on the web page, we will actually order the product and check the actual product. It is important to check the actual item as there are often differences between the photo and the actual item.
Step 3: Consultation with an expert
We will consult with an intellectual property expert such as a patent attorney and ask them to determine whether there is any infringement of patent rights, design rights, or trademark rights.
Step 4: Declaration to EC mall
Apply for deletion or suspension of listing of the infringing product through the intellectual property infringement notification desk of each EC mall.
Step 5: Considering responses to infringers
If the behavior is malicious or repeated, we will consider sending a warning letter or taking legal action.
Since only images and videos are posted on the EC Mall website, the specific specifications of the product are not known, and it may be difficult to determine whether there is infringement.
Points for determining infringement
At our firm (Intellectual Property Office EVORIX), we provide services to understand the content of intellectual property rights on behalf of our clients and investigate and examine infringing products.
Click here for details → Support for infringement of Amazon intellectual property rights
To summarize the tips for finding infringing products at e-commerce malls, the following five points are important.
Discovering infringing products is not a one-time event; continuous monitoring is required. By combining the above methods and checking them regularly, you can effectively protect your company's intellectual property.
If you have any questions about measures against intellectual property infringement products at EC malls, please feel free to contact us using the form below.
Are you having trouble with intellectual property infringement on EC Mall?
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AUTHOR
Takefumi SUGIURA （杉浦 健文）
EVORIX Intellectual Property Law Firm Managing Patent Attorney
Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).