In a recent development, the Supreme Court has set out the benchmark in determining the line for trade mark infringement of foreign websites selling to UK customers. In a nutshell, Lifestyle Equities' ("Lifestyle") trade mark right to use in the UK and EU has been found to have been infringed upon by Amazon US, due to the US website targeting UK customers by marketing their products for sale to them. Amazon targeted UK customers through advertisements and offers for sale of trade marked goods on their website, which constituted infringing trade mark use.
Background:
Lifestyle are the owners of various UK and EU trade marks for "Beverly Hills Polo Club" and identified that Amazon were selling identical products under an identical mark in the US. Those products could be sold lawfully in the US where an unrelated entity held registered trade mark rights.
Lifestyle's claim failed at the High Court but was successful at the Court of Appeal, which held that that the cross-border sales infringed EU caselaw, even if there was no targeting. Amazon then appealed this decision and the Supreme Court was faced with the following question:
Q: 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 the marketing and selling of such goods infringe the EU/UK trade marks?
Decision
The Supreme Court agreed with the Court of Appeal but took a different approach. The Supreme Court stated that the courts must evaluate whether the average UK customer, with an understanding that foreign websites might capture their attention unintentionally, would know that they were being targeted. The Supreme Court conducted a review of the customer's journey through the US website from start to finish to determine whether they were being targeted, thus providing guidance for the courts to follow in future cases.
The Court paid particular attention to the following within their decision:
- The "deliver to the United Kingdom" message on the website's landing page and almost all subsequent pages.
- The specific display of products stated to be available for shipping to the UK.
- On the closing "review your order" page, the offers for sale of relevant products destined for UK addresses – which included delivery times and prices tailored for the UK and the option to pay in GBP with an associated exchange rate.
The Supreme Court rejected Amazon's arguments that a lower number of sales to UK customers and that customers were given the option to switch to Amazon's UK based website showed that UK customers were not being targeted. This was because it was only optional for the UK customer to continue on the US website, the customer could easily change the currency on the US website to GBP and it also did not matter that Amazon's UK based website offered more favourable terms to UK based customers. The Supreme Court established the main point that the average customer could not be expected to carry out a comparison of the benefits of using Amazon's UK based website as opposed to its US website.
The Supreme Court determined that the average UK customer would perceive that Amazon was targeting them based on their experience of navigating the US website as a whole.
HC Comment:
The Supreme Court's decision provides further legal clarity on how the law should analyse the issue of targeting by outlining various factors/demonstrating a methodical approach to establish trade mark infringement from foreign sellers. This decision is a positive outcome for UK trade mark rights holders who are seeking to police online infringements from foreign sellers. Foreign sellers to UK Customers should take care to ensure their advertisements and offers of sale (i.e., their websites) of trade marked goods do not leave them exposed to trade mark liability in the UK. Please note that the decision has left open the possibility that any non-targeted sales of trade marked goods made to UK customers could still constitute trade mark infringement, which may result in further case law in this area.
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