Amazon: Trade mark and sign law pitfalls

The Amazon system is in itself a good thing. The centralised data management achieved through standardising product descriptions ensures maximum comparability of offers, facilitates the work of marketplace sellers and Amazon's administration. However, this system has its pitfalls when one sells one's own goods thoughtlessly under an already existing product description that another seller has created. This is namely only possible where there is absolute product and sign identity.

The product descriptions available on Amazon for all sellers originate from one of them, namely the first one to have created a particular product. Amazon obtains the rights to images and texts from this seller in order to make the product description available to other sellers who sell the same product. A product is usually identified via the EAN (European Article Number) or the GTIN (Global Trade Item Number), which has been gradually replacing the EAN since 2009. These numbers are printed in machine-readable code on virtually every product that is placed on the market within the European Union. Behind this lies a unique possibility of identification with regard to product and manufacturer or importer. Amazon converts this EAN/GTIN into its proprietary ASIN format, without any change to the function of the number.

Two products are the same in the legal sense only when not only the goods themselves are absolutely identical, but also the product-responsible company. If therefore two companies import the same unbranded goods from China in order to provide them with their GTIN and bring them onto the German market, these products are not the same and generally cannot be offered on Amazon under the same product description. However, this happens regularly and sometimes leads to costly trade mark and sign law disputes.

The two main problems are that each product listing has, following the title, a 'from' reference (not to be confused with the seller information further below), which contains a mark, a company sign or the name of the – in whatever way – responsible company. Regardless of how this sign is to be classified in legal terms, it should certainly be established that it is understood directly or indirectly as an indication of the origin of the offered product and is thus inseparably linked to the GTIN or ASIN. If this is a protected mark, which is certainly the case with trade marks and company signs, the product with this description cannot be offered from the outset unless this origin indication matches, that is, the goods actually originate from the stated source and not merely apparently so.

With branded articles, this is generally not a problem, unless they are counterfeits (classic trade mark piracy). However, the situation is different with unbranded products imported and offered in Europe by various companies. Even if the goods remain unbranded, the importer at least applies his product-identifying GTIN and other origin indications, making the mass-produced item unique. As a result, he creates a new Amazon product description and enters an indication of the source of the goods in the 'from' field, whereby the now individualised mass product obtains a unique home on Amazon. The exact same product, which however does not come from or was not imported by this company, but is offered under the same product description, is a 'counterfeit' (in the non-technical sense) because actual and apparent origin do not match. A sign law warning is not uncommon, because the infringement is generally immediately noticeable and is not tolerated. The competition on Amazon and other online marketplaces is simply too fierce for that.

At best, this constitutes only misleading competition regarding origin, but usually a company sign infringement, depending on what the subject of the 'from' information is. If this even contains a registered trade mark, there is undoubtedly a trade mark infringement. The same applies if a trade mark is mentioned in the product description or another origin reference to a specific company is made. This also precludes the offering of identical goods of different origin. However, it would not be a problem if the information consisted merely of a fancy mark that is protected neither as a trade mark nor as a company sign and the trade circles would not infer from its use any (specific) origin. However, one usually cannot know this in advance.

Many importers and sellers of mass-produced goods have in the meantime taken advantage of this factual and legal situation and have secured their product description through the use of their own marks, for which dozens of trade marks are not infrequently registered. The advantage of this is not only that one then has one's article description exclusively for oneself, but also that the previously unbranded product is upgraded through a trade mark. This approach is indeed contrary to the Amazon system, but it does follow the legitimate interests of retailers in improving and consolidating their competitive position.

There are two things one should by all means avoid in this context. For one, difficulties can arise if a product description for mass-produced goods is later supplemented with a trade mark and on this basis an attempt is made to exclude third parties from using this description or to hold them liable for a trade mark infringement. This can be abusive and obligate one to reimburse costs. On the other hand, one should not make the mistake of upgrading and securing the product description with the trade mark for tactical reasons, but leaving the product itself unbranded or – worse still – sending it under a different sign (e.g. that of the Chinese manufacturer). By doing so, the trade mark owner may themselves commit a misleading competitive practice.