Unfair Competition Law

Amazon has blocked a product due to alleged design infringement – what now?

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If Amazon suddenly removes a product from its range and invokes an alleged infringement of design rights, this is not only annoying for many retailers, but often also damaging to their business. While the seller account usually remains active, affected ASINs can no longer be sold, which can directly lead to lost sales and reputational damage. If this also happens repeatedly, this can also lead to a suspension of the seller account by Amazon.
In my legal practice, I often see cases in which the blocking is based on registered design rights that, on closer inspection, are either ripe for cancellation or in whose scope of protection the objectionable goods do not fall at all.
It should also be noted here that design law is in most cases a so-called unexamined intellectual property right. This means that the substantive requirements for protection, such as novelty and individual character, are not examined by the respective offices.
In the following, you will find initial legal information on how to react correctly in the event of an article being blocked.
1. Keep calm – and proceed in a structured manner
Even if the blocking of a single article seems less dramatic than an account blocking, uncoordinated quick fixes can become problematic later. It is important to proceed systematically:
• Save the notice from Amazon and all related documents
• Make a note of which ASIN is affected
2. Understand what Amazon is accusing you of
Amazon usually acts after a notification by a third party – in this case, presumably the owner of a registered design (design patent). The accusation is then that your product infringes this intellectual property right. Look for the following information in Amazon’s notice:
• The number of the allegedly infringed design (e.g. EU design number)
• The name of the copyright holder or complainant.
• The exact text of the complaint (if indicated)
3. Examination of the legal situation by a specialized lawyer
A design right infringement does not already exist if two products “look similar”. Rather, it depends on the exact design, scope of protection and, in particular, whether the design was rightly registered. In particular, I check for my clients:
• Is the design legally effective and enforceable?
• Is your product really similar – or are there relevant differences?
• Do you have own older rights to the product design or has your product design illegally been registered by a third party?
Depending on the result of the examination, various legal options are then available.
4. Remedies at Amazon – use them in a targeted manner
Even without withdrawal by the complainant, Amazon can release the product on the basis of a convincing “appeal”. This should contain in particular:
• A legal assessment of the allegations
• A presentation of the differences to the protected design
• Objections to the legally valid registration of the design
A legally sound objection significantly increases the chances of success, even if Amazon will refer to other ways in legally ambiguous cases.
5. Contacting the rights holder – only sometimes promising
In many cases, Amazon points out that a withdrawal of the complaint by the rights holder can lead to the reinstatement of the product.
If the legal situation allows this, the complainant can be asked to withdraw the complaint and claim damages. This can always be promising if the complaint can be traced back to a company based in the EU. For a complainant who is not resident in the EU, it is often more difficult. According to my own experience, residents outside of the EU often do not respond to warning letters, so that only legal action remains.
6. Otherwise: Cancellation proceedings before the respective offices
If neither appeal against the blocking decision by Amazon, nor a warning letter or court proceedings against the complainant can achieve a withdrawal of the deletion in a manageable period of time with acceptable costs, cancellation proceedings against the asserted design rights may be considered at the offices. The costs for this have just been reduced slightly at the EUIPO (to € 320). From July 2026, there will also be a fast-track deletion procedure at the EUIPO. However, the exact details of such proceedings are currently still open.
Conclusion: React professionally in the event of individual blocked ASINs
Even if only a single product is affected, a design rights complaint can quickly affect other items – or even lead to the exclusion of Amazon if the reaction is incorrect or too late. With legal assistance, many closures can be successfully lifted.
Are you affected?
I support you in the short term in the examination, evaluation and defense against unjustified design rights accusations – as well as in professional communication with Amazon and rights holders.
Make an appointment now for a free of charge first consultation.

ECJ: Use of product names such as “Tofu butter” or “Plant cheese” violates EU Law

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In its decision of 14 June 2017, the ECJ stated that the terms milk as well as the names of other protected milk products cannot be used as part of product names for entirely vegan / vegetarian products (decision on case C-422/16). This also applies if the product names contain clarifying or descriptive further elements which indicate the pure vegetable nature of the product.

The ECJ was called to decide on these questions in preliminary ruling proceedings which were referred to it by the District Court Trier, Germany. In the proceedings before the District Court Trier, the Verband Sozialer Wettbewerb (“VSW”) a German association, whose responsibilities include combatting unfair competition, sued the company Tofutown.com GmbH (“Tofutown”) for promoting and distributing its purely plant-based products under designations like “Soyatoo Tofu butter”, “Plant cheese” and “Veggie Cheese”. VSW was of the opinion that the promotion and distribution of the products under these names is contrary to the provision of § 3 a of the German Unfair Competition Act in conjunction with the regulations of Regulation (EU) No. 1308/2013 establishing a common organisation of the markets in agricultural products. That regulation provides, inter alia, that the name ‘milk’, as well as the names of other milk products, such as butter, cheese, cream, buttermilk, yoghurt etc., may in principle be used only for milk and milk products. Exceptions are only allowed for products whose nature is well-known due to their traditional use and/or where the designations are clearly used to describe characteristic properties of the product. The Regulation contains, in the second subparagraph of Annex VII, Part III, subparagraph 5, a list of the products which fall under this exception.

According to the ECJ, it is clear from the wording of the Regulation that the term “milk” should in principle not be used for a purely plant-based product. Likewise, terms for milk products such as butter, cheese, cream, buttermilk, yoghurt etc. cannot be used for purely plant-based products. No exceptions were given in the aforementioned list for the terms used, such as “Tofu butter”, “Plant cheese”, “Veggie cheese”, “Cream” when used for the attacked soy / tofu products.

Tofutown also could not successfully rely on a breach of the principle of equal treatment, as there was no unfair treatment compared to the producers of vegetarian or vegan substitutes for meat or fish which do not face comparable restrictions. These products are dissimilar and are subject to different rules.

German Federal Supreme Court limits the personal liability of company directors for violations of the Unfair Competition Act

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In its decision of 18 June 2014 (Case ref: I ZR 242/12) the Federal Supreme Court reversed its jurisdiction according to which a company director was always already personally liable for the company’s violations of the Unfair Competition Act due to his position and the general responsibility for the business operations.

In the future the question of personal liability will always depend on whether the director was actively involved in the violation of the Unfair Competition Act or whether he was due to special circumstances in a guarantor position which required him to prevent violations of the Unfair Competition Act.

On top of this a personal liability may under the new jurisdiction only be given if the director himself created a business model actually aiming at infringing the Unfair Competition Act.