Avoid Costly Mistakes: Secure Your Brand with Amazon Trademark Registration

Seller A: I opened a store on Amazon's Europe marketplace and completed the Amazon brand registry using my U.S. trademark. I then authorized my European store, allowing me to use many tools like Vine and A+. Do I still need to register a European trademark?

 

Seller B: Can I save the effort and costs by not registering local trademarks in Europe and Japan? What are the potential risks?

 

Tips:
By authorizing your brand across different marketplaces, you can unlock brand-building tools on multiple platforms. However, without completing the Amazon Trademark Registration in a particular sales country or region, you may face the risk of trademark hijacking or infringement. This could prevent you from defending your rights, potentially harming your business performance.

 

 

Amazon's Advice for Sellers Facing These Issues:

Even if you unlock many tools within Amazon by using a trademark registered in one country, failing to register a local trademark could lead to significant risks if your brand is hijacked. Not only could you lose access to these tools, but your products might also face infringement claims, forcing you to remove them from the marketplace. This could result in a complete loss of your initial investment. Moreover, if your brand is infringed upon in Europe or Japan, you won't be able to effectively defend it. It's crucial not to neglect the importance of registering local trademarks in your target sales countries.

 

Amazon recommends that brand sellers register local trademarks in their target sales countries as early as possible to protect their brand rights.  

With increasing attention on the Europe and Japan marketplaces, Attorney Chui Hong from Law International has shared a guide on trademark registration in these regions. The Forest Shipping team has compiled and organized this content to help you safely tap into the European and Japanese markets.

 

Tips:

Before we start, make sure to save a copy of the Amazon trademark registration guide.

 

After registering your trademark in the target sales country (such as Europe and Japan), how do you add the new trademark to Amazon Brand Registry and link it with your existing trademarks? Here are the steps:

 

1. Step 1: Log in to the Amazon Brand Registry website and click on "Manage" in the menu, then select "Manage IP."

2. Step 2: Click on "Associate Trademark."

3. Step 3: Select "Brand Name," choose the "Trademark Office" related to your brand, enter the "Registration Number or Serial Number," and click "Verify." Once verified, the "Associate Trademark" icon will be activated, and you can click "Associate Trademark."

 

Trademark Registration Guide for Europe and Japan

 

1. European Union Trademark Registration

 

01 Overview of EU Trademarks  

The EU trademark is a regional trademark registration managed by the European Union Intellectual Property Office (EUIPO). Once registered, the trademark is protected in all 27 EU member states, with the same rights as a national trademark. There is no need to register separately in each member country.  

* The EU consists of 27 member countries, including France, Germany, Italy, the Netherlands, Belgium, Luxembourg, Denmark, Ireland, Greece, Spain, Portugal, Austria, Finland, Sweden, Poland, Czech Republic, Hungary, Slovakia, Slovenia, Cyprus, Malta, Latvia, Lithuania, Estonia, Bulgaria, Romania, and Croatia.

 

02 Impact of Brexit  

The UK officially left the EU on January 31, 2020, and EU trademark law no longer applies. From December 31, 2020, the UK registration information of registered EU trademarks is automatically copied into the UK national register.

 

03 EU Trademark Application Requirements

• Application Priority: The "first-to-file" principle applies.
• Application Method: Multiple classes can be included in one application.
• Registerable Trademarks: Trademarks can include words, graphics, color combinations, 3D shapes, sounds, etc.
• Required Information: Applicant's name and address, trademark sample, specified classes and goods/services, priority documents (if applicable).
• Other: There is no need to use the trademark or provide a power of attorney at the application stage.

 

04 Application Process

• Formality Examination: EUIPO examines the goods/services and trademark form.
• Substantive Examination: Only absolute grounds are examined; relative grounds are not. For similar trademarks, EUIPO notifies the relevant parties of their right to oppose.
• Fast Track Examination: Use EUIPO's standard goods/services descriptions and pay the fees during application.
• Opposition Period: 3 months.
• Registration Timeline: Typically 4-8 months.

 

05 Opposition Process

• Filing an Opposition: Relevant parties may file an opposition within the specified time.
• Qualification Examination: EUIPO examines the admissibility of the opposition.
• Cooling-Off Period: EUIPO allows both parties two months to attempt to reach a settlement. The cooling-off period can be extended by mutual agreement for a total of 24 months.
• Adversarial Period: If no settlement is reached, the opponent must submit reasons and evidence, followed by the applicant's defense. The adversarial period allows for a settlement. For oppositions based on trademarks registered for more than 5 years, the applicant may require the opponent to provide proof of use.
• Opposition Decision: EUIPO makes a ruling based on the submitted evidence. The losing party is required to pay compensation of up to 600 euros, but enforcement is difficult in practice.
• Appeal: The dissatisfied party can appeal to the Boards of Appeal within 2 months and may further appeal to the General Court and the Court of Justice of Luxembourg.

 

06 Licensing, Assignment, Non-Use Revocation, and Renewal

• Assignment: Trademarks can be assigned. Assignment registration is not mandatory, but unregistered assignments cannot counter registered assignments.
• Licensing: Both applied-for and registered trademarks can be licensed, including partial licenses.
• Non-Use Revocation: After 5 years of registration, anyone can apply for revocation, but reasonable grounds must be provided. EUIPO has high proof-of-use requirements, and actual use must be consistent with the goods/services registered. Using the trademark in multiple member states is sufficient to maintain EU trademark registration.
• Renewal: Valid for 10 years, with renewal applications submitted 6 months before expiration. There is a 6-month grace period.

 

07 Applying for Chinese Trademarks in the EU  

Applicants are advised to apply for a combination of Chinese and English trademarks rather than applying for purely Chinese trademarks. Chinese characters are often treated as graphics in examinations. EUIPO does not require Chinese translation or transliteration. The examiners focus on visual similarity rather than pronunciation or meaning. Pinyin usage evidence may also be accepted.

 

 

2. UK Trademark Registration

 

01 UK Trademark Application Requirements

• Application Priority: The "first-to-file" principle applies.
• Application Method: Multiple classes and series trademarks are accepted.
• Registerable Trademarks: Trademarks can include words, graphics, color combinations, 3D shapes, sounds, motion, smells, etc.
• Required Information: Applicant's name and address, trademark sample, specified classes and goods/services, priority documents (if applicable).
• Other: No requirement for use, nor the need for a power of attorney or other documents at the application stage.

 

02 Application Process

• Formality Examination: Examination of goods/services and trademark form.
• Substantive Examination: Only absolute grounds are examined, not relative grounds. For similar trademarks, UKIPO notifies prior rights holders of the search results, allowing them to decide whether to file an opposition. This does not form a basis for refusal.
• Opposition Period: 2 months. The period can be extended to 3 months by filing a Notice of Threatened Opposition.
• Registration Timeline: Typically 3-4 months.

 

03 Opposition Process

• Filing an Opposition: Relevant parties may file an opposition within the specified time.
• Fast Track Opposition Process: Only prior trademark rights holders can file an opposition through this process, generally without a hearing. The process usually concludes within 3 months, while the normal opposition process takes 12-15 months.
• Defense: After the opposition is filed, the applicant has 2 months to submit a defense. Failure to submit a defense is considered an abandonment of the trademark application.
• Cooling-Off Period: During the defense period, opposition can enter a cooling-off period by mutual agreement (initiated by either party). The cooling-off period lasts 9 months from the opposition notification to the applicant. It can be extended by another 9 months. If negotiations fail, the parties can terminate the period early.
• Opposition Decision: UKIPO makes a ruling based on the case materials or after a hearing. The winning party may request compensation for favorable costs.
• Appeal: The dissatisfied party can appeal to the Appointed Person or the High Court within 28 days. Appeals to the Appointed Person are final, while appeals to the High Court may be further appealed to the Court of Appeal if permission is granted.  

  *Note: The Appointed Person is an independent, senior intellectual property lawyer appointed by the Ministry of Justice.

 

04 Licensing, Assignment, Non-Use Revocation, and Renewal

• Assignment: Both applied-for and registered trademarks can be assigned.
• Licensing: Both applied-for and registered trademarks can be licensed.
• Non-Use Revocation: After 5 years of registration, anyone can apply for revocation. Evidence of use can be minimal but must be genuine, and the actual use of the trademark must not undergo substantial changes.
• Renewal: Valid for 10 years, with renewal applications submitted 6 months before expiration. There is a 6-month grace period.

 

3. Japanese Trademark Registration

 

01 Japanese Trademark Application Requirements

• Application Priority: The "first-to-file" principle applies.
• Application Method: Multiple classes can be included in one application.
• Registerable Trademarks: Trademarks can include words, graphics, names, 3D shapes, color combinations, slogans, sounds, holograms, motion graphics, etc.
• Required Information: Applicant's name and address, trademark sample, specified classes and goods/services, priority documents (if applicable).

 

02 Application Process

• Trademark Examination: Includes formality and substantive examination, covering both relative and absolute grounds.
• Opposition Period: 2 months.
• Registration Timeline: Typically 8-10 months.

 

03 Special Considerations

• Cross-Category Search: A cross-category search for product categories and retail/wholesale categories.
• Goods/Services Selection: Choose goods/services that you are using or plan to use. If the applicant’s goods/services choices are too broad or unrelated to retail/wholesale services in Class 35, the examiner may issue a rejection notice.
• Emphasis on Pronunciation: Pronunciation is heavily considered when assessing trademark similarity.
• Coexistence Agreement: Accepted starting April 2024.
• Approval for Registration: Once the examination is complete, the examiner will issue a "decision for registration," and the applicant must pay the fee within 30 days.
• Fast Track Examination: Reasons such as receiving a warning letter or needing to apply for a license must be provided.

 

04 Licensing, Assignment, Non-Use Revocation, and Renewal

• Assignment: Must be recorded; both applied-for and registered trademarks can be assigned.
• Licensing: Ordinary licenses do not require recording, but exclusive licenses must be recorded to be effective.
• Non-Use Revocation: After 3 years of registration, anyone can apply for revocation.
• Renewal: Valid for 10 years, with renewal applications submitted 6 months before expiration. There is a 6-month grace period.

 

Conclusion

In the complex world of global e-commerce, securing your brand's identity across multiple marketplaces is more important than ever. By completing the Amazon Trademark Registration and in the Brand Registry, you can take full advantage of the Amazon Brand Protection tools to safeguard your business from potential threats like trademark hijacking or infringement. This proactive approach not only helps you maintain control over your brand but also ensures that your business performance remains strong, regardless of where you operate. Protect your brand today to build a more secure and successful future on Amazon.