A Chinese hand-bag seller (Guangzhou Xiao Ling Wan Trading Co.) and owner of the Amazon Store, LINGWANUS, has recently filed for a declaratory judgement with the U.S. District Court for the Southern District of New York in retaliation to take down requests filed by Marc Jacobs.
Guangzhou claim that by making “fraudulent assertions of trademark infringement” which ultimately caused Amazon to remove its listings for three handbag styles, Marc Jacobs has caused damage to its business relationship with the e-commerce platform.
The new lawsuit follows increased activity from Marc Jacobs in looking to prevent copycat versions of the ‘it’ TOTE BAG which has increased in popularity since its introduction in 2019.
When filing the Amazon take-down complaint, Marc Jacobs relied upon two US trade mark applications for THE TOTE BAG word mark and a figurative mark with an intent-to-use basis covering wallets and card cases.
Unsurprisingly, Marc Jacobs’ applications for THE TOTE BAG do not include coverage for handbags, seemingly due to risks of objections from the USPTO on descriptiveness grounds.
However, Guangzhou allege that by relying on the intent to use applications Marc Jacobs is “taking advantage of [the Amazon] system” which “offers trademark owners a substantial benefit that entities typically will not get from a court, because an Amazon de-listing effectively amounts to an injunction removing the accused product(s) from the marketplace.”
Guangzhou has sought declaration from the court that it is not infringing and has not infringed the pending THE TOTE BAG marks. Guangzhou is also seeking damages, as well as preliminary and permanent injunctive relief, including a requirement that Marc Jacobs withdraws its trade mark infringement complaint and that Marc Jacobs is barred from making any future complaint against them for use of the marks at issue (namely 98/066,565 and 98/066,640) on “any online marketplace.”
The case serves as a reminder of the risks of retaliation in online take down complaints and for consideration to be given to any potential wider dispute at the outset. It will also be interesting to see the U.S. District Court's comments on the critique of Amazon’s take down process and whether this results in any changes being made internally to their complaints procedure.