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27 June 2019Trademarks

Amazon teams up with Nite Ize to tackle counterfeiters

In another attempt to tackle counterfeits on the online platform, Amazon has united with Colorado-based Nite Ize to take sellers to court.

In a suit filed yesterday, June 26, at the US District Court for the Western District of Washington, Nite Ize and Amazon took on defendants from Canada, the US and China.

Nite Ize makes and sells the Steelie family of products, a hands-free system that allows you to dock your phone to your dashboard using a magnetic mounting system.

The defendants had opened at least 19 seller accounts on Amazon’s online store and, through these accounts, had unlawfully advertised and sold products bearing counterfeit trademarks of Nite Ize, according to the claim.

It added that the sale of these goods “harmed the integrity of Amazon’s store [and] tarnished Amazon’s and Nite Ize’s brands”.

Back in October 2018, Nite Ize received two notices from US Customs and Border Protection (CBP) that the agency had seized an imported shipment at its port of entry in Portland, Oregon.

The shipment contained 300 counterfeit Steelie car mount kits and originated from Hong Kong. A Canada-based individual in Canada was listed as the importer.

Clint Todd, chief legal officer at Nite Ize, said: “We’ve been locked in an ongoing battle with counterfeiters for many years. When CBP notified us of a counterfeit shipment of products it had seized, we weren’t surprised. However, the scope and complexity of the operation we uncovered was staggering.”

Amazon, after receiving notice from Nite Ize, confirmed the unlawful sale of counterfeit Nite Ize products and blocked the seller accounts.

The claim added: “In Amazon’s experience, however, it is not uncommon for sellers of counterfeit products blocked by Amazon to attempt to create new seller identities to obtain access to the Amazon store.

“Therefore, unless defendants and all of their affiliated and/or successor entities are immediately and permanently enjoined from using Amazon’s store to sell goods, the harm defendants caused to Amazon, legitimate third-party manufacturers/sellers like Nite Ize, and consumers is likely to continue.”

In addition to injunctive relief, Amazon and Nite Ize have asked the court to order the impounding of the fake goods, and triple damages.

Todd added: “Throughout our history with Amazon, the company has consistently supported our efforts to remove counterfeit listings and sellers.

“When alerted to the magnitude of the issue impacting one of our best-selling products, Amazon decided to join our fight against counterfeiters to ensure that our mutual customers can confidently shop with the knowledge that they are purchasing, and ultimately receiving, genuine Nite Ize products.”

A spokesperson for Amazon said that the company continues to invest and fight counterfeiters on all fronts—from “developing technology to proactively prevent counterfeits, to working with brands, leaders in the public sector and law enforcement to hold bad actors accountable”.

They added: “Counterfeit has no place in our store and we will leverage every tool available to protect brands like Nite Ize, our customers, and our store.”

In February this year, Amazon warned investors, reportedly for the first time, about the risk of counterfeits on its online platform.

That same month, the platform launched Project Zero, a programme which it claims “empowers brands to help drive counterfeits to zero”.

Project Zero includes automated protections, which are powered by Amazon’s machine learning expertise and continuously scan the online stores, proactively removing suspected counterfeits. Over five billion product listing updates are scanned every day, the platform said.

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