Dealing with Amazon Takedown Notices Based on UK Registered Designs: Best-practice considerations

Online marketplaces such as Amazon rely heavily on automated or semi-automated processes to handle intellectual property complaints. When a seller receives a takedown notice alleging infringement of a UK registered design, the commercial impact can be immediate and severe: listings removed, advertising suspended, account health damaged, and stock stranded in fulfilment centres. Because the UK Intellectual Property Office (in common with many others) does not examine designs for validity before registration, there is a real possibility of bad faith registrations for existing products. In recent years we have seen an increase in such registrations, with a suspicion that many are registered for the purposes of use in take down notices on online platforms. 

This article sets out key legal and practical considerations for seller businesses faced with takedown notices, with particular focus on situations where the registered design appears invalid, generic, or registered in bad faith. We use Amazon as a well-known example online retailer in this article, but of course similar considerations will apply to others.

1. Understand the nature of registered design enforcement on Amazon

Amazon’s design infringement process is not a court process. It does not involve detailed legal analysis of evidence and Amazon is not equipped to make a determination on issues such as invalidity of rights especially where there is a dispute between the parties.

Key points to bear in mind:

• Amazon generally acts on the existence of a registered right: if  the design is in force and on the register Amazon does not and cannot assess its merits independently.
• The platform typically removes listings first and resolves disputes later.
• Mere assertions such as “the design is invalid” or “this is generic” are rarely sufficient on their own.

In summary, sellers should treat takedown notices as procedural administrative actions, not determinations of legal liability. They should also assume that the Amazon personnel dealing with the issues are not necessarily legally qualified and therefore straightforward logical and intuitive arguments will work much better than detailed legal arguments and references to legal texts.

2. Gather documents and evidence

Before engaging with Amazon or the complainant, it is critical to gather evidence and preserve all relevant documentation. This includes:

• Saving screenshots of the removed listing (including ASIN (Amazon’s reference number), images, and description)
• The takedown notice and any correspondence from Amazon.
• Evidence of first marketing or sale of the product. Indeed this can be one of the best and most straightforward tools to convince Amazon that there is no merit to the takedown request: if the seller has been selling the same or very visually similar products since before the date if the registered design, then this is a clear indication that the complaint is baseless.
• Gather supplier documentation, invoices, or manufacturing records.
• In the absence of the seller’s own products having been available prior to the date of the design, examples of third-party prior designs showing similar designs before the registration date (catalogues, websites, archived pages, trade listings)

All of this material will be essential to challenging the takedown notice regardless of the strategy adopted.

3. Seek legal advice

If the product is of sufficient importance, it would be wise to seek legal advice at an early stage. We as Marks & Clerk have significant experience of assisting clients in this area and can help formulate the best strategy to resolve the matter in the quickest and most cost-effective way. We can also assist with preparing legal opinions on non-infringement, which Amazon and others will often accept as a part of any challenge to a takedown request.

4. Review the registered design being relied upon with your legal advisors

Not all registered designs are equal, and some are significantly weaker than others.

At a minimum, sellers should:

• Confirm the registration number, filing date, and proprietor
• Review the representations (drawings or photographs) filed with the UKIPO
• Compare the registered design to the accused product

If the complainant is not the registered proprietor, if the design post-dates your sales, or if there are significant differences between the deign and the product these are all key points to be raised.

Common issues include:

• Designs covering basic shapes or common configurations
• Very broad visual representations with little distinctive character
• Registrations filed shortly before enforcement activity begins

The existence of such issues does not automatically resolve the Amazon takedown, but it informs the best strategy to adopt.

5. Consider available response routes with your legal team

There is no single “correct” response to a takedown notice. The best strategy often involves parallel tracks, seeking to achieve a quick resolution of the matter but also a sustainable one.

a) Legal opinion from your advisers

One of the options that Amazon offers in response to a takedown notice is the opportunity to submit a reasoned opinion from a UK IP professional explaining non-infringement. Outcomes vary but this if successful this route is by far the fastest and most cost-effective way to re-instate listings.

We can work with you to prepare such an opinion based on the materials and evidence gathered under point 1 above. Since Amazon requires “non-infringement” opinions, we can work with you to frame invalidity arguments as non-infringement ones as much as possible.

As indicated above, in our experience, although a legal opinion, simple, straightforward argument that enable the Amazon personnel to justify re-instatement are usually best.

b) Invalidation proceedings at the UKIPO

A slower and more costly option if the legal opinion is unsuccessful is to apply to invalidate the registered design directly addresses the root of the problem. Grounds may include:

• Lack of novelty – i.e. the same design was available prior to the registered design
• Lack of individual character – the differences between the designs available prior to registration of the design and the design itself are not significant, and the registered design has the same overall character as the prior designs.
• The design being exclusively dictated by its function -the shape of the design is what it is because of the technical function the product is designed to achieve. 

While this process takes longer (many months at the very), it can provide a definitive resolution and prevent repeated enforcement.

c) Court-based remedies

Where bad faith takedowns cause substantial commercial harm or are part of a broader pattern of abuse, court proceedings may be appropriate. In particular, UK law provides remedies for recipients of “unjustified threats” of registered design infringement procedures. Takedown requests from online marketplaces on the basis of bad faith registrations or otherwise meritless accusations of infringement have been found to amount to unjustified threats and the courts can impose injunctions and award damages payable by the complainant for losses caused by unjustified takedown notices that cause financial harm.

These procedures can be costly so are reserved from the most financially damaging and repeated instances. They also depend on being able to properly identify the bad-faith complainant. But in cases of significant harm they can be effective.

8. Anticipate and manage retaliation risk

Some complainants respond to pushback by:

• Filing additional design registrations
• Submitting further takedown notices
• Targeting related ASINs or product variations

This risk should inform:

• The tone and content of correspondence with the complainant
• Whether communications are sent directly or via legal representatives
• Whether formal proceedings are needed or whether some agreement with the complainant can be reached. If the action appears to be a concerted campaign to stifle competition, then court and intellectual property office procedures may become inevitable to resolve the issue.

Conclusion

in practice, sellers subject to takedown request can suffer immediate and often significant impact to their businesses. The fastest and most cost-effective means of resolution is to work with your legal advisors to engage with Amazon to seek reinstatement. But if that is unsuccessful then engaging with legal procedures, including court action where necessary may become the only remedy. Marks & Clerk can help you will all aspects of these approaches.