UK Registered Designs and Amazon Takedowns: What Does It Mean for Your Business

What is a UK registered design and how does it drive Amazon competitor take downs

A UK registered design protects the appearance of a product. This includes the shape, contours, colours, texture and ornamentation, but it does not protect how a design functions (Registered Designs Act 1949).  For business owners who wish to protect their designs, it is essential to remember that a registered design is protected only to the extent that it is new (no identical or only slightly different design is already in the public domain), and it has individual character, which means that the overall impression on the informed user differs from earlier designs.

Once an individual possesses a registered design in relation to a product, they are entitled to file an infringement notice with Amazon (or other platforms) to take down other highly similar or identical products.  Amazon usually removes the listing first, and asks questions later. Amazon gives IP owners a “Report Infringement” tool which takes down a listing upon receiving a claim. Amazon acts as a neutral party, and lets the other parties resolve disputes outside of their platform rather than adjudicating them.

Having a UK registered design proves to be a very effective tool to take down sellers of similar or identical products on Amazon in the UK. Given that Amazon or other platforms take down listings as soon as a claim is filed, even a vulnerable or later-invalidated design registration can function as a low-cost weapon against rival listings.

The downsides of UK design registrations

Although a UK design registration can be a low-cost effective take down tool for businesses, they also have several weaknesses:

No substantive examination: the UKIPO does not conduct novelty or prior art searches as part of their examination, which means that an examiner does not consider refusals based on novelty or individual character grounds. This means that designs that do not meet these requirements can still be registered but remain vulnerable to third-party invalidity challenges.

Low cost to invalidate: a third-party can easily invalidate a design registration that should not have been granted. Although costs may vary depending on legal counsel, it is a straightforward process which is likely to succeed if clear grounds on novelty or individual character are available.

The overseas manufacturer trend

Many Amazon and other online retail sellers source visually identical products from virtually the same overseas factories, such as in China. Since platforms like Amazon rarely investigate the substance of a claim and act on the basis of evidence such as UK registered designs, it often leads to a scenario where whoever secures the design first can take down competitors even if they are sourced from the same place. This trend has led to design registration becoming a race to the register among sellers of a commoditised product, rather than a reward for genuine design innovation.

Takeaways

Whether you are in the race to obtain a UK registered design first, or are on the other side of a takedown, these are the practical steps you should consider:

Assess the market: before commencing commercial sales and ordering stock from overseas, assess the UK market on Amazon or other platforms. Consider whether the market is oversaturated and if similar or identical designs exist in the UK and have been sold for over a year.

UK design registration: this can be a genuine and effective tool to protect your designs, however, be aware of novelty or individual character issues ahead of filing. If you are registering the design simply as a take-down tool, be prepared for invalidation action from a third-party.

Invalidation: if you are on the receiving end of a take-down, consider whether you have grounds to invalidate a design on lack of novelty or individual character.

If you have a design you wish to protect in the UK, or are a seller facing take down action via Amazon or other platforms, please do not hesitate to reach out to our team of expert solicitors who will be able to advise you.