The Court of Appeal has recently reversed the decision of the High Court in a move which could strengthen brand owners’ ability to protect their trade marks globally.
Background
Lifestyle Equities CV (“Lifestyle”) owns the UK and EU trade marks consisting of the words and logo BEVERLY HILLS POLO CLUB (the “Trade Marks”).
A separate company based in the US has the licence to sell Lifestyle’s goods in the US under an identical US trade mark (the “US Branded Goods”). Amazon.com sells these US Branded Goods.
This case centred around Lifestyle alleging Amazon.com was infringing its Trade Marks by advertising and selling the US Branded Goods to customers in the UK and EU. Amazon.com denied this, stating it only sold the US Branded Goods on Amazon.com, not on Amazon.co.uk, and was not responsible for the fact UK and EU customers could access Amazon.com.
In the High Court, the judge agreed and ruled Amazon would only have infringed Lifestyle’s rights if it had sold the US Branded Goods on Amazon.co.uk. This decision made it significantly more difficult for businesses to address intellectual property infringements on global websites.
The Court of Appeal verdict
Lifestyle subsequently appealed the High Court decision and the matter duly came before the Court of Appeal. The judge was asked to consider whether Amazon.com had ‘used’ the Trade Marks without permission – ‘use’ in this context would be established if UK and EU customers had been targeted with the adverts and offers for sale.
The judge considered the following factors relevant to their decision:
- The purchaser was located in the UK or EU
- The shipping address was in the UK or EU
- The billing address was in the UK or EU
- The currency of the payment was in GBP or EUR;
- com made the necessary arrangements to have the goods shipped to the UK or EU.
On this basis, the judge found Amazon.com could not argue the goods were not targeted at UK and EU customers and, therefore, Amazon.com had infringed Lifestyle’s intellectual property rights.
Commentary
This Court of Appeal decision is important for all businesses to consider and understand how it may affect its own advertising practices. The reversal of the High Court’s decision make it easier for a company to argue its intellectual property rights have been infringed on a global marketplace or website.
In addition, significantly, the judge’s use of simple factors to assess whether Amazon.com had targeted UK and EU customers shows the threshold for meeting such infringement is lower than first thought.
Key takeaways for businesses operating in multiple jurisdictions
- Ensure your trade marks and other intellectual property rights are protected in all territories in which you operate.
- There is an obligation to prevent purchasers from other jurisdictions accessing the goods or services where this would be infringement; and
- Intention is not a relevant factor in determining infringement in such scenarios.
Hamlins has the expertise to assist with UK, EU and international trade mark applications and provide guidance on a global perspective for your brand protection strategy.
If you would like more information about how you can best protect your business and its intellectual property rights, please contact Matthew Pryke.
