Amazon “Bullies” Double BAFTA-Winner

The importance for a new business of protecting its IP cannot be overemphasised. Before adopting a new trade mark or trade name, any business, large or small, should get searches done to check that the name is available to use. Having found a suitable name, an application to register it as a trade mark should follow quickly. Failure to do so can have severe consequences if a third party registers the mark instead.

A recent case, reported in the Sunday Times, concerns on-line retail behemoth Amazon, and Kindle Entertainment, an independent production company which has made award-winning TV shows including two recent Children’s BAFTAs. Kindle Entertainment was founded in London in 2006, several months before Amazon launched its well-known Kindle reader in the US, but not before Amazon began protecting its Kindle trade mark for a wide range of goods and services. Amazon is now reported to be suing Kindle Entertainment for trade mark infringement.

Anne Brogan, a director of Kindle Entertainment, told the Sunday Times: “We could not possibly afford to change our trading name after eight years. We would love to reach a sensible settlement with Amazon, but [it] is just behaving like a playground bully.”

This case appears to involve a number of important factors regarding the protection of trade marks.

1. It is important to carry out searches to see if you are free to use your mark. It should be highlighted, however, that if a registration has only recently been applied for it may not be publicly available in searches. In this case, it may be that Amazon had applied for registration of the KINDLE mark only a month or so before any searches that Kindle Entertainment may have carried out, in which case the searches may not have discovered this problem.

2. If you do decide to apply for registered trade mark protection, think carefully about the list of goods and services you may want to cover. There is a balance to be found between casting your net too close and possibly allowing third parties to use an identical or similar mark on goods or services that you may want to prevent, and casting your net too wide and covering goods or services that you are never likely to provide, thereby potentially rendering your registration vulnerable to partial revocation in the future. In the present case, there appears to be a discussion to be had about whether the services that Kindle Entertainment provides, namely TV production services, are similar to those that Amazon provides under the KINDLE mark.

3. This dispute appears to be happening after both parties have been trading in their respective sectors for some time, with both establishing good reputations. It will be interesting to find out exactly what the nature of the dispute is. Is Amazon merely objecting to Kindle Entertainment wanting to register their mark, or is Amazon trying to go further in their actions...? An owner of a registered trade mark can bring an infringement action against a third party at any time, so it is important to protect a trade mark at an early stage.

Despite all of the aspects of this case, the lesson is clear: if you are establishing a new brand, check that you are free to use that mark and protect your trade mark. If you don’t, someone else may.