Summary
This landmark ruling provides much needed guidance on what amounts to “targeting” UK consumers in trade mark infringement claims. It was confirmed that the question to be asked is whether an average consumer (being someone who is reasonably well-informed and circumspect) would consider that the website is targeted at him or her.
It is not enough that the website is available to access from the UK, there must be a multi-factorial assessment of available facts to establish whether UK consumers are being targeted.
The relevant facts in this case supporting a finding of targeting were:
(i) a message on the landing page and almost all subsequent pages stating “deliver to the UK”;
(ii) the content of the pop-up box itself stating which of the goods displayed on the webpage can be shipped to the UK; and
(iii) a “review your order” page with UK delivery times, prices and a current exchange rate.
There were some factors leading away from a finding of targeting, including the option to use Amazon’s UK website and the default display of prices in US dollars. However, these were outweighed by the above factors. It was held that from start to finish, the UK consumer’s journey on the website, pointed towards a finding of targeting. Lifestyle’s subjective intention in bringing the proceedings was held to be irrelevant.
Background
Lifestyle are the owners and exclusive licensees of a number of UK and EU trade marks comprising “BEVERLEY HILLS POLO CLUB” (the “UK/EU Marks”). The case concerned the application of UK/EU trade mark law to the cross-border marketing and sale of goods on the internet, specifically Amazon’s US website.
Amazon marketed and sold goods bearing the UK/EU Marks on its .com website, which Lifestyle alleged amounted to UK/EU trade mark infringement, as the website targeted UK consumers. Lifestyle have never consented to the goods being put on the market in the UK/EU. Amazon denied infringement based on its .com website not targeting UK consumers and that the sales took place in the US.
The Supreme Court ruled that Amazon was targeting UK consumers but declined to answer whether non-targeted sales would be infringing.
Takeaway
This decision potentially makes it easier for brand owners to enforce their UK trade marks on cross-border platforms and online marketplaces where the use is infringing. It provides helpful guidance on the relevant (and irrelevant) considerations in the multi-factorial assessment of whether UK consumers are being targeted. It will be interesting to see whether online marketplaces will now make changes to their websites to restrict sales to UK consumers in light of this decision.
For more information or if you have any questions, please contact Emily Roberts or Holly Webb or your usual IP team contact.
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