Trade marks target: direction of travel

Trade marks are territorial.

So: a UK registered trade mark is enforceable in the UK only; an EU registered trade mark is enforceable in the EU only; a US trade mark is enforceable in the USA only; and so on.

Global marketplaces like eBay and Amazon throw up challenges to these traditional demarcations – both to potential claimants in protecting their exclusive trade mark rights, and potential defendants in ring-fencing their operations.

‘Targeting’

Can, say, a UK-registered trade mark proprietor stop a US manufacturer offering goods on a global marketplace like eBay or Amazon under the same trade mark?  The answer is no, unless the US manufacturer (or as the case may, the global marketplace) is ‘targeting’ UK consumers which will often depend on the website/sale terms and conditions of the US manufacturer (or the global marketplace).

Lifestyle Equities CV v Amazon [2021]

These issues arose for decision by the English High Court in Lifestyle Equities CV & Anor v Amazon UK Services Ltd & Ors [2021] EWHC 118 (Ch).  The facts were complicated, but essentially the registered trade mark BEVERLY HILLS POLO CLUB for clothing, watches, luggage and perfumery was owned by two separate and independent entities, one in the UK and EU and the other in the USA.

US BEVERLY HILLS POLO CLUB goods lawfully marketed in the USA were advertised for sale on the www.amazon.com website, which was accessible by UK consumers.

The owners of the UK and EU registered trade marks sued Amazon for registered trade marks infringement in the English High Court.  It was clear that the main bugbear for the UK/EU proprietors was having the US pricing etc. visible to customers on www.amazon.com.  In fact, though, very few US BEVERLY HILLS POLO CLUB goods physically got through to UK consumers.

High Court judgment

The High Court judge held that amazon.com was not using the UK/EU BEVERLY HILLS POLO CLUB registered trade mark in the UK (a sine qua non of registered trade mark infringement), and was therefore not liable for registered trade marks infringement.  This was because, although the US BEVERLY HILLS POLO CLUB goods were accessible to the UK consumer on www.amazon.com, amazon.com was not targeting UK consumers with advertisements/offers for sale/sale of these goods.

A UK consumer who tried to buy on amazon.com would have been directed to the UK-specific website, and even if a UK consumer did manage to get through the sales procedure on amazon.com, the shipping costs to the UK would have been prohibitive, and the UK consumer would have realised that the goods in question were for the US market and not for them.

Practical aspects for UK/EU manufacturers/suppliers

There are at least two practical aspects for UK/EU manufacturers/suppliers that arise out of this decision.

• First, if a UK/EU-based trader has goods and, or services that are, or are intended to be, marketed on an international basis then a global registered trade marks portfolio is best set up, either worldwide or in countries of interest, through comprehensive national and regional trade marks registration.
• Second, outward-facing global traders need to review their website/sale terms and conditions to guard against trespassing on third party trade mark ownership rights.

This piece was researched and prepared Tristan Morse.  If you have any questions or queries about any of the issues raised above or trade marks generally, then do please let Tristan know.

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.  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.

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