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The push and pull of online trade mark infringement

Posted on 19 May 2022

The Court of Appeal has overturned the judgment of the High Court in Lifestyle Equities v Amazon, finding Amazon liable for trade mark infringement through its acts of advertising, offering for sale and selling US branded goods to consumers in the UK and EU markets via its website amazon.com.

The case emphasises that liability for online trade mark infringement often depends on the extent to which a trade mark user has 'pushed' their trade mark into a certain territory. As a judge in another recent case put it: "a proprietor should be treated as having used a mark in the UK if it has itself 'pushed' its business and mark into the UK, not if it has been 'pulled' into the UK by (for example) its customers abroad, even though they may be based in the UK". Here, the requisite element of 'pushing' was made out. The case also confirms that actual sales in a territory constitute use of a trade mark when assessing infringement.

Background

The case concerns two parties selling the same types of products bearing the 'BEVERLY HILLS POLO CLUB' trade marks, with one authorised to use the trade marks in the US, the other in the UK and EU. The US seller sells its products via Amazon.com and other Amazon-affiliated services, which meant that UK (and EU) residents could buy the US branded goods (even though this meant that those purchasers had to pay shipping and import duties). The UK seller saw this as an encroachment on its territory and brought proceedings for trade mark infringement in the High Court.

The key issue was whether Amazon had 'targeted' EU and UK consumers through the advertising and offer for sale of the US products on Amazon.com.

The High Court found there was no targeting by Amazon of the US products on Amazon.com. Those products were meant for the US market and UK consumers would need to specifically look for those products on Amazon.com in order to buy them.

Court of Appeal decision

The Court of Appeal disagreed and found that the relevant listings of the goods intended for the US market did constitute trade mark infringement in the UK. The Court of Appeal also said that the fact that goods were sold to UK and EU consumers meant there must have been 'use' of the trade marks in the UK and EU that could constitute infringement.

In order for a claim for trade mark infringement to succeed, the claimant has to show the signs they are complaining about have been 'used' in the relevant jurisdiction (the UK and the EU in this case). The claimants said the trade marks had been 'used' in three ways: by advertising them, offering them for sale, and actually selling them.

Advertising and offering for sale

The Court of Appeal concluded that the adverts and offers for sale targeted the UK (and, in the same way, EU) consumers. In particular, the Court focussed on the later part of the purchasing process: the Amazon order review pages showed the purchaser as being in the UK, a UK shipping and billing address, the price in GBP and statements that Amazon would arrange for the goods to be shipped to and imported into the UK and delivered to a UK customer. In doing so, the Court applied principles set out in a recognised line of case law on whether consumers in a certain jurisdiction are 'targeted' by offers for sale on websites. Mere accessibility of a website from a territory is insufficient for users from that territory to be targeted. Instead, what matters is whether the average consumer of the goods in question considers that the relevant content (e.g. an advert for goods) is targeted at them. The Court reiterated that the question is not whether the whole website on which the advert (in this example) is targeted at those consumers, but whether the individual content, or advert, is targeted.

Selling

The Court of Appeal also disagreed with the trial judge on whether actual sales to UK and EU consumers constituted use of the trade marks in those territories by the US seller. It concluded that the fact that an actual sale had taken place and goods had been sold to UK consumers under the relevant sign meant that it had been 'used' in the territory where the consumer was situated. The Court reiterated that, when considering the act of selling, it is unnecessary for there to have been antecedent offers for sale or adverts 'targeting' UK consumers.

Comment

Whilst this case does not change the law, it is a useful reminder of the acts that can constitute trade mark infringement, and when trade marks are 'used' in different territories for the purposes of trade mark infringement. Brand owners should remember that, while advertisements and some other acts must be 'targeted' at consumers in a territory in order for that act to constitute infringement there, if actual sales have been made from a jurisdiction then relevant trade marks are likely to have been 'used' in the territory under trade mark law. This is the case even when internet traffic volumes are small – and even though Amazon had in this case taken some technical measures to stop the kind of sales complained about. The case will now proceed for an assessment of the financial compensation payable.

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