15 July 2024
In a landmark trademark infringement decision issued on 6th March 2024, the UK Supreme Court upheld a Court of Appeal decision against Amazon for targeting of UK consumers.
Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8 centred around a dispute about whether Amazon had infringed Lifestyle Equities UK trademark.
|
|
|
|
Background of case
Lifestyle Equities, who own registered trademarks for the words ‘Beverly Hills Polo Club’ and associated logo, claimed that Amazon had targeted UK consumers via its US website to sell products by an unrelated US party who owned the US trademarks for a ‘Beverly Hills Polo Club’ logo (the ‘US products’).
Lifestyle Equities claimed that sale of the US products to UK consumers led to a trademark infringement by Amazon.
Trademark infringement
A trademark is a type of intellectual property that identifies you as the owner of goods or services. More and more fashion brands are utilising trademarks as a powerful tool for brand recognition. Trademark protection can cover brand names and logos, for example Calvin Klein or the Nike tick. Trademark protection can be granted following an application to the Intellectual Property Office and will last for 10 years, unless renewed.
Trademark protection is a territorial right, meaning that protection to the trademark owner is available only in the jurisdiction that it was registered. The difficulty in recent times is that the advertisement or sale of goods on the internet does not have territorial boundaries.
Where a trademark is similar and is in relation to identical or similar goods or services, infringement will occur if the mark is likely to cause confusion to the reasonable consumer.
Targeting
For Lifestyle Equities to be successful, they had to show that Amazon, via its US website, was ‘targeting’ consumers in the US.
At the High Court, Lifestyle Equities were unsuccessful in proving ‘targeting’. The Judge determined that due to the prices on the website being in dollars and the products being shipped from the USA, it would have been clear to the consumer that they were buying US products.
The Court of Appeal overturned this decision and held that although the US products were primarily directed at US consumers, they were not restricted to them. The Court of Appeal therefore found that there had been targeting.
The Supreme Court ultimately upheld the Court of Appeal’s decision that Amazon were targeting UK consumers. The court placed particular weight on the following factors in their determination:
- A ‘deliver to United Kingdom’ message displayed on every page of the website;
- A precise indication of which products displayed are available in the UK;
- UK specific delivery times and prices and the option to pay in sterling, along with an exchange rate on the ‘review your order’ page.
Blomqvist Issue
Lifestyle Equities also argued that there had been trademark infringement, irrespective of targeting, due to the mere sale and supply to a UK consumer without their consent to such use. This question is known as the Blomqvist issue after the EU case, Martin Blomqvist v Rolex SA, in which it was first raised.
The Court of Appeal determined that the sale of goods under a trademark by a foreign website to UK consumers constituted use of the trademark in the course of trade in the UK and therefore constituted trademark infringement, even if there was no proceeding offer to sell or advertisement targeting consumers in that territory.
The Supreme Court’s determination that Amazon did target UK consumers meant that it did not find it necessary to consider the Blomqvist issue. The Court of Appeal decision therefore remains the most recent authority on this matter.
How does this affect me?
For brand owners, the ruling reinforces the ability to protect against online infringement. For e-commerce platforms, it highlights the need for diligence.
If your business is selling products to international consumers, careful attention needs to be given to how goods are presented and advertised to consumers. It is always advisable, where you are selling products that bear another party’s registered trademark in the territory you are shipping to, to get consent from the trademark owner.
In circumstances where you have identified third party rights, it is important to put robust measures in place to limit activities to the relevant jurisdiction, for example allowing only payment in local currency or using geo-blocking software.
Amy Campbell, Trainee Solicitor: aca@bto.co.uk / 0141 221 8012
Lauren McFarlane, Associate: lmf@bto.co.uk / 0131 222 2939