An IP complaint on an online marketplace can quickly interrupt sales. Some complaints rely on registrations that are vulnerable to invalidation, making it important to review the right and the supporting evidence.
IPLEX IP Law Firm has successfully led the resumption of the sale of goods through patent attorneys’ opinions and declarations. In this article, we’ll show you how to reverse the claims of the rightholder and normalize sales.
Case Summary: Sudden Sales Interruption
The client was selling women's shoes in Coupang, and immediately the sale was suspended after the rights holder reported that he had "infringed his registered design".
The product had long been supplied by Chinese OEM factories, providing evidence that the cited design lacked novelty.
In other words, the registered design of the rightholder was clearly invalid.
Key Legal Issues
1. Novelty: the shoes had been sold on overseas platforms before the design's filing date, supporting an invalidity challenge.
2. Abuse of rights: enforcing a design right with clear invalidity grounds may constitute an abuse of rights.
3. Freely usable prior-art design: the product followed a design already available before filing.
4. Prior-user rights: the client's imports and sales before the filing date supported a statutory non-exclusive license, subject to the legal requirements.
IPLEX’s response strategy
1. A reasoned patent attorney's opinion
In addition to simple arguments, we have written a patent attorney opinion that combines the law and the case so that the Coupang team and the rightholder can be convinced.
2. A persuasive explanatory statement
A statement was submitted that the date of entry of the product was ahead of the date of application, objective evidence that the same product has already been sold abroad, and the concept of freely usable prior-art design. It also included a phrase to remind the rightholder of the disadvantage of legal disputes.
3. Encouraging withdrawal of the complaint
The response explained the complainant's potential legal risks, encouraging withdrawal of the allegation.
As a result, the client’s goods were returned to normal.
Lessons from the case and the role of IPLEX
An important lesson I learned from this case is as follows.
- Prompt response: prepare the legal opinion, explanatory statement and evidence as soon as sales are suspended.
- Expert intervention: We need a response based on legal grounds and cases, not just protests.
- Strategic approach: It is most effective to get the rightholder to withdraw on their own.
The IPLEX IP Law Firm is not only a document maker, but also a practical supporter of the rights of sellers based on legal analysis and hands-on experience.
Do not give up even if you are facing unfair claims of infringement in the online sales process. We will continue to be a strong shield for sellers on various platforms such as Coupang and Naver.
This article reflects the information available when it was published. Contact us to discuss your circumstances.