07 Jun 2022At what point does selling goods via the internet risk infringing trade mark rights in foreign jurisdictions? In Lifestyle Equities v Amazon, the Court of Appeal provided a helpful summary of the position.
The facts were relatively straightforward. Amazon.com is primarily targeted at US customers. However, it allows UK customers to place orders there, ships products to addresses in the UK (specifically stating that it “Delivers to the UK”) and, among other things, allows customers to pay in GBP pounds sterling.
Lifestyle, which owns the Beverly Hills Polo Club (BHPC) trade mark rights in the UK and EU, brought a claim against Amazon for trade mark infringement as a result of Amazon’s advertisement and sale of BHPC goods to UK consumers – those goods originating from an entirely separate company which owns the BHPC trade mark rights in the US.
In the first instance decision, the judge decided that Amazon.com had not infringed Lifestyle’s rights. However, the Court of Appeal decided otherwise and considered the following questions in assessing the claims:
- Was the advertisement or offer for sale ‘targeted’ or ‘directed’ at UK customers?
- The mere accessibility of the website from the UK is not a sufficient basis for a finding that UK customers have been targeted.
- Would UK customers consider that the advertisements or offers for sale were targeted at them?
- All relevant circumstances should be taken into account when assessing these questions.
In reaching its decision the Court of Appeal also acknowledged CJEU guidance, taking into account factors such as the international nature of the activity, the use of local languages relevant to the ‘targeted’ state and the use of telephone numbers local to that state. The court was also mindful of determining whether the business had “pushed” itself into the UK, rather than being “pulled” there, by customers going out of their way to buy goods internationally.
In reversing the first instance decision, the following comments of Lord Justice Arnold provide a fair summary of the approach taken:
“If one asks whether that offer was targeted at the UK, in my view it is manifest that the answer is yes. The purchaser is located in the UK, the shipping address is in the UK, the billing address is in the UK, the currency of payment is GBP and Amazon will make all the necessary arrangements for the goods to be shipped to and imported into the UK and delivered to the consumer in the UK. I do not understand how it can seriously be argued that this offer for sale was not targeted at the UK..”
The key question, then, is whether ‘targeting’ has taken place. Whilst there is nothing a trade mark owner can do if UK consumers go out of their way to buy from a business which is based in a foreign country, the picture is very different if that business can be shown to have ‘targeted’ or ‘directed’ its business towards UK customers.
The above is a short and simplified summary of the issues dealt with in the case. Please contact us if you would like to know more about the case, or its implications.
JP Mitchell Solicitors 07/06/22