The UK Supreme Court hearing in the Lifestyle Equities vs Amazon case (dealing with online marketplace trade mark infringement) will take place this week, on 15 and 16 November.
The question to be answered is: "when does the sale or advertising of trade-marked goods on a foreign website infringe the relevant trade marks in the UK or EU?"
Amazon is seeking to overturn a Court of Appeal decision that found them liable for infringement of Lifestyle Equities' UK/EU trade mark registrations for the BEVERLY HILLS POLO CLUB brand through use of the marks on the US site (amazon.com) and sales of products from this site to consumers in the UK/EU.
I have briefly summarised the case to date below.
High Court decision
Lifestyle Equities ("Lifestyle") owns various UK and EU registrations for the BEVERLY HILLS POLO CLUB brand. There is a split in ownership of the BEVERLY HILLS POLO CLUB marks, and the corresponding US registrations are held by a different party which produces and sells goods in the US including on Amazon's US marketplace - amazon.com.
Lifestyle claimed that Amazon infringed their UK and EU trade mark registrations by advertising, offering for sale and selling US branded and manufactured goods bearing the BEVERLY HILLS POLO CLUB marks to UK and EU consumers via amazon.co.uk, amazon.de and amazon.com (as viewable in the UK/EU).
Amazon admitted liability in respect of the listings on the .co.uk and .de sites, however they denied that sales from their .com website to consumers in the UK/EU constitutes infringement of UK/EU trade mark rights.
To cut a long story short, the High Court found in favour of Amazon and dismissed Lifestyle's claims of infringement. It was held that Amazon were only infringing Lifestyle's UK / EU rights by advertising and selling the US manufactured goods on UK/EU designated websites (ie. the co.uk and .de sites) and sales to UK/EU consumers from the amazon.com website do not constitute infringement.
It is plain that both amazon.com and the ... listings on it are not targeted at the UK/EU consumer. Such a consumer knows full well that they are viewing or shopping on the Amazon website that is primarily directed at US consumers.
Court of Appeal decision
Lifestyle appealed and Lord Justice Arnold overturned the initial decision in Amazon's favour.
In particular, the Court of Appeal examined how amazon.com operates in the UK and the EU, with statements such as "Deliver to United Kingdom" and "Ships to United Kingdom" present on the listings in question when viewed by consumers in the UK. It was held that the message to a UK consumer is clearly that the products in question are available to them and that Amazon will ship the products to the UK. Use of amazon.com is not jurisdictionally restricted to consumers in the US and sales of goods from the .com website to customers in the UK/EU therefore constitutes use of a trade mark in the UK/EU for the purposes of infringement.
The purchaser is located in the UK, the shipping address is in the UK, the billing address is in the UK, the currency of payment is GBP and Amazon will make all the necessary arrangements for the goods to be shipped to and imported into the UK and delivered to the consumer in the UK.
Supreme Court case
Amazon is seeking leave to appeal to the UK Supreme Court and the hearing will be held on 15 and 16 November. In particular, Amazon argues that the Court of Appeal has misinterpreted CJEU case law when deciding that sales on foreign websites can infringe UK/EU trade marks, and the High Court analysis that the amazon.com listings are not targeted at UK/EU consumers should stand.
Comment
The Court of Appeal decision is very much "pro brand owner" and firmly places the burden on online marketplaces to ensure that trade mark rights are not being infringed on a jurisdiction-by-jurisdiction basis. The High Court decision on the other hand focuses on the fact that Amazon has different websites for the US and UK/EU markets, and held that there is no "cross-targeting" of consumers (i.e. the US site targets US consumers, and the UK/EU sites target UK/EU consumers). It will be interesting to see which way the Supreme Court leans.
At the end of 2022, I wrote about the CJEU decision that opened the door for EU Member State National Courts to hold marketplaces such as Amazon liable for trade mark infringement in relation to the advertisement of fake products by third parties on their sites. If the UK Supreme Court upholds the decision to find Amazon liable for trade mark infringement in the Lifestyle Equities case, the onus will very much be on online marketplaces to make sure that they are not infringing brand owners' rights, certainly in the UK and the EU. Marketplaces will need to ensure that they fully address reports filed by brand owners regarding infringement issues to avoid the risk of being held liable themselves.
Amazon's sales of US branded goods to UK and EU consumers constituted use of the signs in the relevant territory, and thus infringing uses - Lord Justice Arnold, Court of Appeal decision
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