08/03/2024
On 6th March 2024 the decision was issued. Amazon have lost an appeal at the UK Supreme Court against an earlier ruling that they had infringed the rights of a trade mark holder Lifestyle Equities CV by ‘targeting’ British consumers on the US version of the Amazon website. Targeting in relation to Trade Mark law is when an online retailer creates advertisements that are pushed or geared towards a particular audience. In doing so, trade marks are used. Those marks may be registered in the target consumer’s country.
The UK Supreme Court were asked to review earlier decisions and answer the question: Where goods marketed and sold on a foreign website are identical to goods for which trade marks are registered in the EU or UK, in what circumstances would such marketing and selling infringe the EU or UK trade mark registrations?
The action started pre-Brexit under the EUTM registration, which is why there are references to EU member states and the law governing infringement of an EU registration.
Background
In the 2018 UK High Court case, Amazon was alleged to have infringed the registration of the trade mark Beverly Hills Polo Club (BHPC) by selling and displaying items of clothing bearing the BHPC mark on the US version of the Amazon website.
Amazon contended that as the display and listing of clothing items bearing the BHPC mark were only available for sale on their US website, they were not marketing those goods to the UK/EU, and the listings on their US website did not amount to use of Lifestyle Equities’ registered trade marks in the UK/EU.
This case went onto the UK Court of Appeal. Here Lifestyle Enquires further argued that as the US version of Amazon’s website enables consumers to shop in ‘8 languages, 60 currencies and allows shipping to the UK from their US sites’, Amazon is targeting British consumers from their US website. The UK Court of Appeal overturned the first decision and found in favour of the registration holders, Lifestyle.
The Supreme Court judges, in agreeing unanimously with the Court of Appeal, provided clarification on actions that amount to targeting and those which fall short. Though the mere accessibility of the trader’s or the intermediary’s website in the EU member state in which the consumer is domiciled is insufficient to amount to targeting, the decision says that ‘the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them.’ The Supreme Court held that the average UK consumer would consider the Amazon USA website to be directed at him or her. Particularly significant factors in that assessment included: (i) a message on the landing page and almost all subsequent pages offering to deliver to the UK; (ii) specifying which of the goods displayed can be shipped to the UK; and (iii) a “Review your order” page offering to sell the relevant goods to a consumer at a UK address, with UK specific delivery times and the option to pay in sterling. It was held that offers to move to the Amazon UK site, and the fact that the default pricing was in US$ did not outweigh the factors above.
This shift of balance in favour of the rights holders will be welcomed. Will global retail platforms now expect more takedown requests. Or as consumers, will we be blocked when we look outside the UK-focussed platforms?
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
