The Court of Appeal has upheld a first instance finding by Meade J that communications to Amazon via its IPR Procedure amounted to a threat of patent infringement proceedings. We considered the High Court judgment here in September 2022.
The case involved a UK patent relating to battery-powered car jump starters, owned by NOCO. It is believed to be the first case in England and Wales relating to Amazon’s IPR Procedure, which enables rights owners to report suspected infringements on Amazon’s marketplace.
Complaints amount to threats
In his judgment, Lord Justice Lewison noted that the form NOCO filled in and submitted to Amazon both asserted infringement and requested Amazon to remove the impugned products from sale. He said the complaints amounted to threats:
“The reasonable recipient in the position of Amazon would surely ask: what happens if I don't remove the impugned products from sale? The answer must surely be: the patentee will enforce his rights by action. It was, at the very least, a veiled threat.”
He added that it did not matter whether or not a reasonable recipient in the position of Amazon would regard the complaint as a threat against Amazon itself:
“the statutory scheme does not require that the communication be understood as a threat to bring proceedings against the recipient. It is sufficient that the threat is one to bring proceedings against ‘a person’.”
In this case, he said, Amazon itself was potentially liable for secondary infringement: it had “skin in the game”.
Application to other cases
Lewison LJ added that not every communication that Amazon receives under its IPR procedure is a threat of litigation against Amazon itself. This is for two reasons:
“First, the question is not (at least directly) what Amazon would have understood. The question is what a reasonable person in the position of Amazon would have understood. Second, mere resort to the IPR complaints procedure may or may not be so understood, depending on what the complaint actually says. The "boilerplate" part of the "Infringement Form" simply invites provision of neutral information, the provision of which is capable of being a permitted communication. In this case, it was the Additional Information that went further by positively requesting Amazon to remove the impugned products before any investigation had been carried out.”
The other two judges agreed with Lewison LJ.
What does this mean?
The IPR Procedure is widely used by owners of all types of IP rights to tackle counterfeits sold on the Amazon marketplace. This judgment is a warning that use of this takedown procedure can lead to actions for unjustified threats in the UK.
Brand owners wishing to use the IPR Procedure should therefore seek legal advice before doing so. We can advise on how to use it to tackle counterfeits while minimising the risk of a threats action.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com