In the competitive world of e-commerce, protecting your brand is essential, especially when selling across different marketplaces. However, many sellers overlook the importance of registering local trademarks in every country they operate in, leading to potential legal risks that could jeopardize their business. This article explores the common pitfalls sellers face with trademark "blind spots" and offers practical advice on safeguarding your brand.

 

The Importance of Trademark Registration

 

Seller A: “I opened a store on Amazon’s European marketplace and registered my brand using a U.S. trademark. This allowed me to access various tools like Vine and A+ Content in Europe. Do I still need to register a European trademark?”

Seller B: “Saving money is great, but what are the risks if I don’t register local trademarks in Europe or Japan?”

 

Tips:
While brand owners can authorize their brand tools across different Amazon marketplaces, if you don’t have a trademark in one of the countries/regions where you sell, you might be at risk of trademark hijacking or infringement. This lack of Amazon brand protection can lead to not being able to defend your rights, potentially harming your sales performance.

 

 

Amazon’s Advice for Sellers Facing These Issues

 

If you’ve registered your brand with Amazon using a trademark from one country, you’ve unlocked many tools on Amazon’s platform. However, if you haven't registered a local trademark, you might be vulnerable to trademark hijacking, which could result in your products losing access to these tools or even facing infringement risks, forcing your products to be taken down. This could mean that all your previous efforts and investments go to waste. Additionally, if your brand is infringed upon in the European or Japanese marketplaces, you won’t be able to effectively defend your rights. Don't underestimate the importance of local trademarks in your sales markets—small savings now can lead to significant losses later.

 

Amazon strongly recommends that brand owners register local trademarks in their target markets as early as possible to protect their brand-related rights.

 

As interest in the European and Japanese marketplaces has grown, Cuiling Cui, a lawyer from Luo Si International, shared a guide on trademark registration in Europe and Japan. The Forest Shipping team has compiled this information to help you safely expand your business in these regions.

 

Steps to Add a New Trademark to Amazon Brand Registry

 

After you’ve registered a new trademark in your target sales country (such as Europe or Japan), here’s how to add it to your existing Amazon Brand Registry account:

1. Log in to the Amazon Brand Registry portal and click on “Manage” under the “Manage Intellectual Property” section in the menu.

2. Click on “Associate Trademark.”

3. Select your “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” button will be activated. Click on it to associate your new trademark.

 

Guide to European and Japanese Trademark Registration

 

1. European Union (EU) Trademark Registration

 

Overview:  

An EU trademark is a regional trademark registration that is examined and registered by the European Union Intellectual Property Office (EUIPO). Once successfully registered, the trademark is protected in all 27 EU member states, with rights equivalent to those of a national trademark registration in each member state, eliminating the need for separate registrations.

 

Note:  

The EU consists of 27 member states, 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.

 

Impact of Brexit:  

The United Kingdom officially exited the EU on January 31, 2020, and EU trademark laws no longer apply there. Since December 31, 2020, UK-related information from registered EU trademarks has been automatically copied into the UK national register.

 

Requirements for EU Trademark Registration:

- Application Priority: Follows a “first-to-file” principle.

- Application Method: Accepts multi-class applications.

- Registerable Trademarks: Includes a variety of forms such as words, graphics, color combinations, three-dimensional shapes, sounds, etc.

- Required Information: Applicant’s name and address, trademark image, designated classes and goods/services, and priority documents (if applicable).

- Other: No use requirements or power of attorney needed at the time of application.

 

Application Process:

- Formal Examination: EUIPO examines the goods/services and the trademark’s format.

- 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: Available if the EUIPO’s standard goods/services descriptions are used and fees are paid at the time of application.

- Opposition Period: Three months.

- Registration Timeline: Typically takes 4-8 months.

 

Opposition Process:

- Filing Opposition: Relevant parties can file opposition within the specified time.

- Qualification Check: EUIPO will assess the admissibility of the opposition.

- Cooling-Off Period: EUIPO gives both parties two months to negotiate a settlement, extendable up to 24 months if agreed upon.

- Opposition Period: If no settlement is reached, the opponent must submit reasons and evidence, and the applicant can respond. Settlement is still possible during the opposition period. If the opposition is based on a trademark that has been registered for over five years, the applicant can request the opponent to provide proof of use.

- Opposition Decision: EUIPO makes a decision based on the submitted evidence. The losing party is required to compensate the winner up to €600, though enforcement is difficult.

- Appeal: The losing party can appeal the decision within two months to the Board of Appeal, and further appeals can be made to the General Court (Luxembourg) and the Court of Justice (Luxembourg).

 

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

- Assignment: Trademarks can be assigned, though registration is not mandatory. However, an unregistered assignment cannot counter subsequent registered assignments.

- Licensing: Both applied-for and registered trademarks can be licensed, including partial licensing.

- Non-Use Revocation: Any party can file for revocation after the trademark has been registered for five years, provided there is a valid reason. The EU’s evidence of use requirements are relatively high, and actual use of the trademark must be consistent with the registered goods/services. Use in any member state suffices to maintain the EU trademark registration.

- Renewal: The trademark is valid for ten years, and renewal applications should be submitted six months before expiration, with a six-month grace period.

 

Applying for a Chinese Trademark in the EU:

It’s recommended to submit a combined application for both Chinese and English trademarks, rather than solely for a Chinese character trademark. Chinese characters are typically treated as graphics during the examination. EUIPO doesn’t require the applicant to provide a Chinese translation or transliteration; EUIPO examiners focus primarily on visual similarity rather than pronunciation or meaning. For Chinese trademarks, evidence of use in pinyin may also be accepted.

 

2. United Kingdom Trademark Registration

 

Requirements for UK Trademark Registration:

- Application Priority: Follows a “first-to-file” principle.

- Application Method: Accepts multi-class and series trademark applications.

- Registerable Trademarks: Includes various forms such as words, graphics, color combinations, three-dimensional shapes, sounds, motion marks, smells, etc.

- Required Information: Applicant’s name and address, trademark image, designated classes and goods/services, and priority documents (if applicable).

- Other: No use requirements, and no power of attorney or additional documents are required at the time of application.

 

Application Process:

- Formal Examination: UKIPO examines the goods/services and the trademark’s format.

- Substantive Examination: Only absolute grounds are examined; relative grounds are not. For similar trademarks, UKIPO notifies prior rights holders of the search results, allowing them to decide whether to oppose. The applicant is also notified, but this does not form the basis for refusal.

- Opposition Period: Two months, extendable to three months by submitting a “Notice of Threatened Opposition.”

- Registration Timeline: Typically takes 3-4 months.

 

Opposition Process:

- Filing Opposition: Relevant parties can file opposition within the specified time.

- Fast Track Opposition: Only prior rights holders can file opposition under the fast-track process, generally without a hearing. Cases are typically resolved within three months, while the standard opposition process takes 12-15 months.

- Defense: After the opposition is filed, the applicant has two months to submit a defense. Failure to do so will be deemed as abandonment of the application.

- Cooling-Off Period: During the defense period, the opposition can enter a cooling-off period if agreed upon by both parties (either party can propose). The cooling-off period is nine months, starting from the opposition notification to the applicant. It can be extended by nine months. If negotiations fail during the cooling-off period, either party can terminate it early.

- Opposition Decision: UKIPO makes a decision based on the case materials or after holding a hearing. The winning party can request compensation for favorable costs.

- Appeal: Either party can appeal the decision within 28 days to an “Appointed Person” or the High Court. Appeals to the Appointed Person are final, while High Court appeals can be further appealed to the Court of Appeal if granted permission.

- Note: The Appointed Person is a senior intellectual property lawyer appointed by the Ministry of Justice, completely independent of the court.

 

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: Any party can file for revocation after the trademark has been registered for five years. Evidence of use can be minimal but must be genuine, and the actual use of the trademark must not have materially changed.

- Renewal: The trademark is valid for ten years, and renewal applications should be submitted six months before expiration, with a six-month grace period.

 

3. Japan Trademark Registration

 

Requirements for Japanese Trademark Registration:

- Application Priority: Follows a “first-to-file” principle.

- Application Method: Accepts multi-class applications.

- Registerable Trademarks: Includes various forms such as words, graphics, names, three-dimensional signs, color combinations, slogans, sounds, holograms, motion marks, etc.

- Required Information: Applicant’s name and address, trademark image, designated classes and goods/services, and priority documents (if applicable).

 

Application Process:

- Trademark Examination: Includes both formal and substantive examination, with substantive examination covering both relative and absolute grounds.

- Opposition Period: Two months.

- Registration Timeline: Typically takes 8-10 months.

 

Special Considerations:

- Cross-Search: Cross-search for goods and retail/wholesale categories.

- Selection of Goods/Services: Choose goods/services that are in use or planned for use. If the applicant’s selected goods span too widely or if retail/wholesale services in Class 35 are obviously unrelated, the examiner may issue a rejection notice.

- Pronunciation Considerations: Pronunciation is given significant importance when determining trademark similarity.

- Coexistence Agreements: Coexistence agreements are acceptable, starting from April 2024.

- Registration Approval: After passing the examination, the examiner will issue a “decision for registration,” and the applicant must pay the fee within 30 days.

- Accelerated Examination: Requires providing reasons, such as receiving a warning letter or needing to apply for a license.

 

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

- Assignment: Must be recorded, and both applied-for and registered trademarks can be assigned.

- Licensing: Ordinary licensing does not require registration, but exclusive licenses must be recorded to be effective.

- Non-Use Revocation: Any party can file for revocation after the trademark has been registered for three years.

- Renewal: The trademark is valid for ten years, and renewal applications should be submitted six months before expiration, with a six-month grace period.

 

In conclusion, securing your brand across multiple marketplaces is crucial for long-term success. By completing the EU trademark registration and Japan trademark registration, you can safeguard your brand's integrity and prevent costly legal battles. Ensuring robust Amazon brand protection through comprehensive trademark registration not only shields your business from infringement risks but also strengthens your brand's presence globally. Don't leave your brand vulnerable—take action today to protect your assets in these vital markets.