Date: 16 March 2021
On 27 January 2021, the High Court handed down judgment in Lifestyle Equities CV v Amazon UK Services Ltd dismissing trade mark infringement claims brought by the owners of the “BEVERLEY HILLS POLO CLUB” (BHPC) brand against companies within the Amazon Group.
Link to judgement: Lifestyle Equities v Amazon UK
The question was whether the listing of BHPC-branded goods on Amazon’s US website, amazon.com, had infringed the claimant’s trade mark rights in the UK and EU.
The claimants, owned and controlled by their managing director, Mr Eli Haddad, registered UK and EU trade marks to protect the words “BEVERLEY HILLS POLO CLUB” and the logo shown below for a wide variety of goods, including clothing, luggage, watches and perfumery:
Since 2008, two of Mr Haddad’s brothers have owned the BHPC brand and corresponding trade mark rights in the US.
Mr Haddad and his brothers had gone their own separate ways in respect of the BHPC brand and pursued very different methods of promoting and selling BHPC-branded goods, which gave rise to the current dispute.
The claimants alleged that BHPC-branded goods that had been had been listed on amazon.com with the authorisation or licence of Mr Haddad’s brothers were being marketed and sold by Amazon in the UK or EU by being listed either on amazon.com or through its global store service on amazon.co.uk. They contested that this infringed the claimants’ trade mark rights under art.10 of the EU Trade Mark Regulation (EUTMR) and s.10 of the Trade Marks Act 1994.
After issues of possible trade mark infringement had been raised by the claimants, Amazon had implemented certain technical restrictions to prevent sales of BHPC-branded goods from amazon.com to the UK and EU. According to Amazon, this case was really about Mr Eli Haddad’s desire to prevent any visibility of BHPC goods to consumers in the UK and EU.
The claimants alleged that amazon.com effectively targets the world, including UK and EU consumers. However, the clear problem with that argument was that mere accessibility of a website could not constitute targeting (see Case C-324/09 L’Oreal SA v eBay International AG).
As Mr Justice Michael Green explained, if it was correct that amazon.com targeted the world then “it would drive a coach and horses through the concept of targeting and the territorial nature of trade mark rights. It would mean that any court across the world, assuming they had similar jurisdictional rules, could purport to exercise jurisdiction over the whole of amazon.com in respect of potential national trade mark infringement”.
Accordingly, the judge found it was plain that both amazon.com and the BHPC listings on it were not targeted at the UK or EU consumer.
It was considered highly relevant that the average UK consumer believed that amazon.com was targeted at US consumers and not them, for such a consumer would clearly have appreciated all the disadvantages of shopping on amazon.com in terms of delivery in the UK. If they then made the decision to shop on amazon.com despite all those disadvantages, the judge considered it largely irrelevant that Amazon made the process as painless and easy as possible.
In any event, Green J said, it was not appropriate to consider whether amazon.com as a whole targeted UK or EU consumers. The issue was whether the sign had been used by one or more of the defendants in the UK or EU. In this context, the use had to be by way of an “offer for sale” or an “advertisement”.
Green J found that the listing of BHPC-branded goods which were lawfully marketed in the US on amazon.com did not constitute the use of a sign in the UK or EU.
Amazon was found to have responded reasonably and responsibly after the unusual and difficult issue of the split trade mark rights in relation to BHPC goods was brought to its attention: “[Amazon] cannot have been expected to have realised that there might be a problem before being notified of it.”
The judge concluded that this situation had come about not through Amazon’s activities, but through the complications of dealing with the split in trade mark ownership between the claimants’ MD, Mr Haddad, and his brothers, and their opposing strategies in relation to the BHPC brand.
The issues in this case arose from a split in the ownership of the trade mark rights between the US and the UK/EU, a situation which the judge acknowledged as being “fairly unusual”. The increased popularity of global e-commerce has seen an increase in the ability to purchase products bearing identical trade marks from different countries, which has also given rise to increased opportunities for trade mark infringement. This decision highlights some strategies that website owners can take to avoid accusations of “targeting” UK or EU shoppers, as well as confirming that the European Court of Justice’s ruling in Case C-98/13 Blomqvist v Rolex SA does not mean that sales of goods to EU consumers through internationally accessible online marketplaces, prior to their importation into the EU, are acts of trade mark infringement. If it had so held, then it would mean that the EU exercised a very long jurisdiction over online sellers in third countries (in that particular case, a Chinese online seller). The judge considered that extending jurisdiction far beyond the EU’s borders in this way would have been a radical and unjustified change in trade mark law.
Our full article on this case will appear in Computer and Telecommunications Law Review.
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