IPO Opposition - Don't know how to proceed

Maak

Member
Hi Guys,

Urgent help needed please.... Less than a year ago, I along with my wife decided to enter in to Amazon venture under our private label. We have inventory now available in Amazon warehouses with our brand name. Meanwhile, we put brand approval application with IPO. The brand name was available and also we bought domain name (co.uk).
Unfortunately, today one of the companies in UK through their solicitor has opposed our brand name (initial legal notice) as it look similar to their brand name (our brand name has six letter and the first three letters are similar to their registered brand name - they have multiple brands but this brand was not caught by our eyes as not familiar). We have given two weeks notice to reply and take back our application from IPO along with various other actions. Else, they will proceed with the opposition with IPO and we must incur any expenses if lose.

We are in real stress as if we proceed we might not be able to bear the legal fees/expenses as already put our savings in our startup. If we withdraw, then not sure what will happen to our inventory and also brand approved in Amazon brand registry (under pending application process).

Please could you give us an advice where to proceed. Your quick reply is really appreciated.

Kind Regards,
MAAK
 

steveh

Well-known member
Hi Maak,

I probably wouldn’t do anything without seeking legal advice.

The initial consultation is usually free-of-charge (the lawyer will advise on the best course of action, then they will outline their fees if their input is needed).


Do you have any business insurance? If so, it may cover some or all of the legal fees.
 

Maak

Member
Hi Steveh,
Thanks for the suggestion. Is it worth not going through legal process as I end up loosing more £ and just step back from brand and remove my inventory from Amazon. My inventory is not more than £3000 at the moment which I believe would still less than solicitors charges. But how to convince Amazon that I didn't copy other brand but its a potential conflict, to avoid any account suspension.
Kind Regards
 

steveh

Well-known member
I would still reach out to a trademark attorney and have an initial meeting free of charge.

If they feel it’s defendable, they will defend you (if you can afford it) and advise of charges. Typically in the hundreds for a letter, but might be worth it if it’s likely you’ll win.

If they feel it isn’t easily defendable, then I suppose you’ll have to try and come up with an agreement with the brand who has contacted you to sell through your inventory and not replenish. They may want a cut of your profits but if you only have £3000 of inventory, they may not bother.
 

Darren - FBA Elite

Administrator
Staff member
Did the opposition come via the Trademark process rather than via Amazon?

If so, then the other party may not be selling on Amazon so it may very well be possible to sell through the inventory with the current branding and then you can rebrand for the next batch if it sells well.
 

Maak

Member
Hi Darren,
They came via trademark process, can't find them selling on Amazon but few sellers selling their products- no way close to my category.
The strange thing is they not only want me to withdraw my application but also enter in to agreement with them about other conditions like inventory removal, domain removal etc...need to reply in two weeks while I can't book myself with a solicitor in that short time.
Why should I come in agreement with them when not exactly using their brand? That's the annoying part. I am willing to withdraw but Amazon part is a bit tricky to me as already in brand registry.
Thanks and regards
 

Darren - FBA Elite

Administrator
Staff member
I can't really advise on the legal side of things but surely at this stage all they can do is oppose the Trademark and then Trademark then gets rejected?

They don't even know if you have any inventory so I imagine the solicitors are sending a template letter that is designed to scare you, but equally I would probably follow Steve's advice and try and get a free consultation with someone.

You could potentially sell this batch without needing brand registry, when you add the product you will probably receive a 5665 error and Amazon will just ask for photos of your product/packaging with the brand on it.

You won't have the brand registry protection for things like hijackers but these are usually quite rare.
 

Maak

Member
Hi Darren,

Thank you for your detailed message and yes as I am approaching the solicitors as Steve mentioned but their waiting time is 7-10 days, hopefully I will get in touch with them for a final advice.

Regarding Brand registry, I am already registered for brand registry based on my pending application with IPO, Amazon allowed me to register my brand. Do I need to inform Amazon if I decide to withdraw my application with IPO? I don't think they (opposition) would approach Amazon until they get my brand approved under their name with IPO after my withdrawal.
Kind Regards.
 

Darren - FBA Elite

Administrator
Staff member
I'm not 100% sure whether Amazon has a process in place to check if a pending trademark ever gets approved.

As it Brand Registry has already been approved, I would be tempted to use it to sell this stock and then contact Amazon afterwards to remove it - definitely not legal advice lol!

A quick question on the objection, is the brand from the same class or a different class?
 

Maak

Member
Hi Darren,

The brands are in the same class but my products are still different than theirs. I've seen other brands which are also having same letters (first three) as their brand but in different class.
The funny part is I believe they started monitoring me as soon as they see my presence and only found a way to object when I went to IPO. I started to believe that someone was tracking my brand name after I got domain (co.uk), at that time (.com) was available but I didn't bother to purchase it. But after few weeks, when I checked again (.com) domain was bought by someone.

My products are not that good (from demand perspective) nor I've invested heavily (but still a lot to me considering I utilized my savings plus a lot of time spent) but I do love my brand name which I believe attracts them as well.

kind regards,
 

Darren - FBA Elite

Administrator
Staff member
If they are in the same class then this definitely sounds problematic, the trademark people will only care about the class and the trademark names and not the actual products.

Please let us know what the solicitor says.
 
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