Sales through a US website can infringe UK trade marks

UK’s Supreme Court has ruled that goods sold on a US website (Amazon.com) can be “targeted” at UK consumers and therefore capable of infringing UK trade marks.

This is an important decision for trade mark owners and their licensees as it clarifies the basis on which goods offered for sale in one territory could be found to be offered for sale outside that territory. Trade Mark owners who licence goods for sale on a territory basis should consider including specific restrictions on activity that could amount to targeting. Authorised distributors should consider the extent to which third party platforms such as Amazon are able to limit or restrict sales to authorised territories.

In finding there was targeting of UK consumers, the court indicated that the options to pay in GBP (pounds sterling) and to select delivery options in the UK , outweighed factors such as the default price being is US Dollars and shipping costs and delivery times being increased. The decision took into account the customer journey on the US Amazon.com site, including that the user’s IP address was used to automatically generate a “deliver to the UK option” . The Court stated “This is an indication that Amazon has thought about whether it is seeking sales to UK consumers for delivery to the UK and decided that it is. …. That piece of clever automation has been inserted by design” . The Court highlighted a number of other automated features in the customer journey that made it easier for UK customers to make the purchase.

It remains the case that simply because a website based overseas is accessible to UK customers, it does not automatically mean that website site is targeting UK consumers. However where a site adds functionality to specifically assist UK customers to make a purchase and ship to the UK, there is a risk that the site may be found to be targeting individuals located in the UK.The case concerned sales of goods branded with BEVERLY HILLS POLO CLUB or a logo consisting of those words coupled with a device of a horse and rider, offered for sale through Amazon.com. The claim was brought by the owners of the BEVERLY HILLS POLO CLUB trade marks in the UK and EU. The rights in the trade marks in the US were owned by a different entity.

Read the summary: Lifestyle Equities CV and another (Respondents) v Amazon UK Services Ltd and others (Appellants)

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