The Internet, Territoriality, Amazon & Trade Mark Rights.

T

he clothing trade marks BEVERLY HILLS POLO CLUB (words) and logo stand registered in the UK/EU on the one hand and the USA on the other hand – in different names and ownership.

Trade mark rights are territorial so that, for example, a UK registered trade mark is valid and enforceable in the UK only and a US registered trade mark in the USA only.

As Lord Kitchin noted in the recent UK Supreme Court case, Lifestyle Equities v. Amazon, this all works fine in the context of personal instore shopping.  So, if a consumer buys a t-shirt in the USA and brings it back to the UK in his/her suitcase that is not registered trade mark infringement of a UK mark because (a) the sale takes place in a US store and (b) the consumer is not acting in the course of trade when he/she brings the t-shirt back into the UK.

The doctrine of territoriality, however, sits uneasily with today’s preponderance of Internet shopping, international payment and delivery and online marketplaces like Amazon.

Trade marks laws have needed to adapt to accommodate online shopping, which the courts have done largely through the concept of “targeting”, that is, whether the seller’s online activities are directed at consumers in the country where the trade mark is registered.

In the present dispute, US branded BEVERLY HILLS POLO CLUB clothing was marketed and sold on Amazon’s US website, www.amazon.com to UK consumers.

The UK Supreme Court observed that:

“The coupling of purchase online with prompt home delivery is a key feature which has made Amazon sensationally successful in a market place which knows no territorial boundaries”.

The key question was, had Amazon targeted UK consumers on Amazon’s US website?

The English High Court said “no”; the English Court of Appeal disagreed and decided “yes”; and the case was referred to the UK’s highest court, the UK Supreme Court.

The UK Supreme Court held that UK consumers were targeted by Amazon’s US website.

This was despite Amazon’s terms and conditions, agreed to by consumers, whereby sales took place in the USA and the consumer then took the risk in the goods albeit delivered by an Amazon-instructed delivery service.

Persuasive findings included that the landing page of the US website from a UK enquiry stated: “Deliver to United Kingdom” and by clicking or hovering thereover:

“We ship internationally. We’re showing you items that ship to United Kingdom. To see items that ship to a different country, change your delivery address. Additional language and currency settings are available” and prices were shown in GBP, which trends were continued throughout the www.amazon.com website.

The upshot was that the Court of Appeal findings of registered trade marks infringement were upheld by the Supreme Court and the injunction and related orders made by the Court of Appeal against Amazon must remain in place.

The Lifestyle litigation emphasises, amongst other things, the importance of international searches and clearance before launch of a chosen brand on the global marketplace.

For advice on these issues, contact our expert trade marks team at enquiries@humphreys.law.

All the thoughts and commentary that HLaw publishes on this website, including those set out above, are subject to the terms and conditions of use of this website.  None of the above constitutes legal advice and is not to be relied upon.  Much of the above will no doubt fall out of date and conflict with future law and practice one day.  None of the above should be relied upon.  Always seek your own independent professional advice.

Humphreys Law