In an eagerly anticipated decision, yesterday the Supreme Court unanimously dismissed Amazon's appeal regarding the marketing and sales of "BEVERLY HILLS POLO CLUB" (BHPC) branded goods via Amazon's US marketplace (see the full judgment here: Lifestyle Equities CV and Anor v Amazon UK Services Ltd and Ors [2024] UKSC 8). A more detailed analysis of the judgment will follow, for now we look at the Supreme Court's key findings on the issue of targeting.
Since trade marks are territorial rights, to establish infringement it is essential to prove that the allegedly infringing sign was used in the relevant territory, such as the UK or EU. In an online context, the use in question does not necessarily involve physical use in a particular territory, such as the UK, therefore the courts use the concept of "targeting" to assess if the allegedly infringing use is sufficiently directed to the relevant territory.
The primary issue in the case was whether listings of BHPC brand products on Amazon's US marketplace were "targeted" at UK and EU consumers for the purpose of UK trade mark infringement. The decision is the first Supreme Court ruling on the concept of targeting for the purpose of online trade mark infringement in the UK.
Background
Lifestyle Equities alleged that offers for sale and sales of BEVERLY HILLS POLO CLUB branded products via Amazon's US marketplace were targeted at consumers in the UK/EU and therefore constituted trade mark infringement in the UK.
At first instance, the High Court rejected Lifestyle Equities' claims, finding that the advertisements and product listings on Amazon's US marketplace were not sufficiently targeted at consumers in the UK/EU. On appeal, the Court of Appeal overturned the High Court's decision, finding that the listings on Amazon's US marketplace were sufficiently targeted at UK/EU consumers. Amazon appealed to the Supreme Court.
The Supreme Court's decision and reasoning
Given Amazon's criticisms of the Court of Appeal's approach to assessing targeting, rather than simply concluding that the Court of Appeal was entitled to reach the finding it did, the Supreme Court considered it appropriate to reassess the question of targeting afresh. That assessment involved closely analysing how Amazon's US marketplace was presented to consumers based in the UK.
Having reviewed the relevant webpages from Amazon's US marketplace, the Supreme Court concluded that the average consumer would have perceived Amazon's US marketplace to be directed at UK/EU consumers. According to the Supreme Court, that finding was supported by a number of factors, in particular:
(a) the repeated offerings on the Amazon's US webpages to deliver products to the UK;
(b) Amazon's US webpages specifying products that could be delivered to the UK; and
(c) the fact that the "review your order" page offered to deliver goods to a UK address, with UK specific delivery times and the option to pay in pounds sterling.
Although the Supreme Court ultimately reached the same conclusion as the Court of Appeal, the Court did agree with some of Amazon's criticisms of the Court of Appeal's approach. The Supreme Court agreed that the Court of Appeal's assessment focused too narrowly on a small selection of webpages from Amazon's marketplace, rather than as assessing the impression of the marketplace as a whole and balancing all of the factors identified by the trial judge.
The Supreme Court also indicated that the Court of Appeal had attached too much weight to the "review your order" page alone, which led the court to assess the customer journey backwards rather than as the consumer would experience it. According to the Supreme Court, focusing the assessment on specific webpages was too simplistic and risked setting the threshold for targeting too low since online retailers are unlikely to have pages significantly different to Amazon's "review your order page".
Comment
A more detailed analysis of the Supreme Court's decision is in the works, but the immediate reaction is that the decision will be welcomed by trade mark owners seeking to guard against infringement in an online context.
In contrast, operators of online marketplaces and platforms will need to carefully consider how goods are presented to consumers to avoid inadvertently infringing trade mark rights in the UK.
Operators of online platforms can, however, take some comfort from the fact that the Supreme Court's decision clearly illustrates that the assessment of targeting is a fact specific multi-factorial assessment which is likely to turn on a case-by-case basis.
Additionally, the way the Supreme Court assessed webpages from Amazon's US marketplace can provide a template for online operators to assess how their own customer journeys could be perceived by consumers, and a guide as to the factors that will be relevant to whether an online platform or marketplace is directed to UK consumers.
An essential feature of trade mark law is that it provides only territorial protection to the proprietor of the mark... But the marketing and sale of goods on the internet knows no such territorial boundaries.
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.
