The trademark often is infringed when we see the globalized world and the market becoming more virtual. Such an online marketplace which is primarily the e-commerce platform is accessible worldwide and provides efficient services that help in giving the customer more options while purchasing the product. Taking the example of Amazon, the seller of the product can list their product for purchase on the platform which can be seen to the consumer at a large scale. So if any customer purchases the order, Amazon will fulfill the order based on the nature of the contract with the seller. In this way, the global marketplace has been functioning.
Territoriality of TM
Issues concerning the trademark owner and providers of online marketplace inevitably occur due to the nature of e-commerce. Since e-commerce are accessible worldwide and the nature of TM is territorial. Such availability of e-commerce across the world tends to create various disputes among similar TM owners in two jurisdictions. Since this TM does not provide the protection worldwide and protect nationally where the TM is registered and tends to be used in the general course of nature. Therefore, there are probable chances that the TM has multiple users across the world.
This means the control over the TM has with the owner in that specific country and the original offer of those products for sale in that specific country. Nevertheless, in case of products being sold outside the domain of the specific country where the TM owner doesn't have the right, then it is highly probable that it will end up infringing the TM of other owner in the target country. Such an e-commerce industry generally sells the product even outside the specific country. In the case of parallel importation where the person purchases the product for their personal use in the country where the trademark owner has consented to put it in the market of that country, such trademark infringement rules won't follow. If that person transports the product to another country and further offers to a sale then there will not be any infringement as per the principle of parallel import.
Such a global nature has resulted in the product being sold anywhere to any interested parties, the major question that remains unresolved that whether such use of the trademark will be considered infringement.
This was the recent case on the trademark rights of brand Beverly Hills Polo Club which are owned by different entities in the US and EU/UK. The product was offered on the website of Amazon bearing the same trademark of an entity in the US but not of the UK/EU. The trademark owner at the UK/EU initiated the proceeding against Amazon. They contended that their consent needed to be obtained since the website is accessible in the EU/UK and they were the holder of the trademark in that jurisdiction. Therefore, Amazon is liable for infringement. The visibility of the mark in the EU/UK's consumer was the primary concern in this case. All such cases need to be assessed case to case basis and the important part is to assess the target consumer in the territory of the right owner. For making Amazon liable, it is necessary that the product being available to the EU/UK's consumer have been made available without the consent of the TM owner at the EU/UK.
In this case, Amazon succeeded to prove that the product being displayed was targeted only towards US consumers and not to the EU/UK's consumers. Its other website which targets the EU/UK's consumer does not show the products. The court stressed that Amazon would only have been found guilty of trademark infringement if they intended to put the goods bearing the trademark into free circulation in the UK/EU. The goods were not actively targeted towards the UK consumer whereby the court also referred towards the parallel importation analogy,
Summarizing the same, a trademark to be used in the e-commerce website can be accessed around the world on the premise that the consent of the owner has been taken where the product has been specifically marketed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.