The Court of Appeal has reversed the High Court’s decision in Lifestyle Equities v Amazon, finding that Amazon.com’s advertisements, offers for sale and sales of certain US branded goods to UK and EU customers did amount to use in the UK and the EU and infringed Lifestyle’s UK and EU trade marks.
Lifestyle are the owner and exclusive licensee of various UK and EU trade marks for the words BEVERLY HILLS POLO CLUB and a related device mark registered in respect of various goods including clothing. A commercially unrelated third party owns corresponding US trade marks and markets identical goods under them in America.
Lifestyle claimed (amongst other things) that Amazon had infringed their trade marks by advertising, offering for sale and selling certain US branded goods to consumers in the UK and EU via its US based website (Amazon.com).
As trade mark rights are territorial rights, in order to establish infringement it is necessary to prove that the allegedly infringing sign was used within the relevant jurisdiction. Whilst it is usually straightforward to determine this in the context of advertising and selling goods through physical stores, that question is much more difficult to answer in the online world. To help with that analysis, the courts look at whether the uses complained of were “targeted” at the UK/EU.
Targeting and the Law
The issue of targeting has been addressed by the Court of Appeal a couple of times prior to this case – in Merck v Merck and Argos v Argos – as well as by the CJEU on various occasions. The Court of Appeal in Lifestyle provided a helpful summary of the key principles arising from those cases, and added a few points of its own. At a high level:
- Whilst the word “targeting” is a convenient label, it shouldn’t detract from the assessment of whether there is “use” of the sign in the relevant jurisdiction.
- Accessibility of a website alone is not sufficient to give rise to an infringement.
- The issue of targeting is to be considered objectively from the perspective of the average consumer.
- There are various factors which may indicate that a sign is being targeted at the relevant territory, including: use of a language or currency other than the language or currency generally used in the territory in which the alleged infringer is established; mention of telephone numbers with an international code; use of a top-level domain other than that of the territory in which the alleged infringer is established; the nature and size of the trader’s business; the characteristics of the goods/services in issue; and the number of visits made to, and purchases from, the website by consumers in the relevant territory.
The court applied the above principles to various parts of the consumer’s journey on Amazon.com (including the “Review your order” page, full product details page and search results page) and found in each case that the relevant pages were targeted at the UK. Relevant factors included that the purchaser was located in the UK, the shipping and billing addresses were in the UK, the currency of payment was GBP and Amazon made all necessary arrangements for the goods to be shipped to and imported into the UK and delivered to the consumer in the UK. The court therefore held that Amazon’s advertisements and offers for sale, as well as sales, of the US branded goods did amount to use of the relevant signs in the UK and EU (the claim was brought when the UK was still part of the EU) and were infringing.
This is a decision that trade mark owners will welcome. Whilst it doesn’t result in a significant change in the law, it is useful to have another example of how the English courts apply the law of targeting.
The judgment also contains a few helpful clarifications, including: (i) a website doesn’t need to uniquely target the UK in order for there to be use in the UK; (ii) the assessment is an objective one – there is no requirement for subjective intent or “taking deliberate aim”; and (iii) a specific assessment should be run for each type of use complained of.
This case will be of particular interest to those selling internationally online who do not intend to target the UK or EU. They may wish to check aspects of their consumer journey (such as currency of payment, delivery destinations and shipping/importing arrangements) and adjust as appropriate in order to limit the risks of them being exposed to unwanted trade mark infringement action in the UK or EU.