The UK Supreme Court has provided extensive guidance on what constitutes “targeting” in trade mark law in its recent judgment in Lifestyle Equities v Amazon.
As readers may recall, this case concerned the sale of goods bearing the BEVERLY HILLS POLO CLUB mark on Amazon.com. Lifestyle Equities owns EU and UK trade marks for the brand and brought a claim for trade mark infringement. The claim pre-dated, and was unaffected by, Brexit.
At first instance, the judge rejected Lifestyle’s claim on the ground that Amazon.com was targeting US not UK consumers. The Court of Appeal reversed that finding, finding that the offer for sale was clearly targeted at the UK (see our blog on that judgment here).
Targeting the UK
In a judgment jointly written by Lord Briggs and Lord Kitchin, with which the other judges agreed, the Supreme Court has upheld the finding that Amazon.com was targeting the UK. However, it set out its own reasons for reaching that conclusion.
The judges stated that the relevant facts about Amazon’s marketing and offer for sale showed “with reasonable clarity” that it was targeting consumers from the UK:
“In outline, viewed from the perspective of the average UK consumer, they are from start to finish in their encounter with the USA website being told that they will be shown goods (including the US branded goods) available for delivery to them in the UK, and that those goods will indeed be delivered there if they choose to make an online purchase of them from the USA website.”
Factors which led to this conclusion included the “Deliver to United Kingdom” message on the landing page, a pop-up box showing items available for delivery to the UK, the UK-specific delivery times and the ability to pay in pounds (GBP).
Based on their own analysis of the evidence, the judges concluded that Amazon “targeted” the UK as a destination when a product was marked as available for shipment to the UK:
“That is, in our judgment, the view which an average consumer would clearly form as the result of their experience of the USA website, right through from the landing page to the moment of contract by clicking the ‘Place your order in GBP’ button on the “Review your order” page. Nothing in the possible contra-indicators comes near to displacing that conclusion.”
The judges said the first instance judge “made material errors in the way he arrived at his evaluative conclusion and also got the answer wrong” and that an affirmative answer to the targeting issue was the only one available.
By contrast, the Court of Appeal got the answer right, though the judges criticised its approach in certain respects – including its analysis of a small number of specific pages, working backwards rather than forwards through the customer journey and applied too low a threshold for targeting.
Blomqvist issue
The Supreme Court declined to decide whether Amazon had infringed the marks even if the goods were not the subject of an offer for sale or advertisement targeted at the UK, doing so “with some relief”.
This argument was based on the CJEU judgment in Blomqvist, a case concerning the EU Customs Regulation, in which the Court had found that Rolex could object to a consumer buying a counterfeit watch from an overseas website even where there was no offer for sale or targeting of EU consumers.
The judges said, first, there was “an air of unreality” given that the Supreme Court had found that the sales in this case were targeted and, second, the ambit of the Blomqvist doctrine was unclear, given the lack of information available about the terms of the contract for the sale of the fake watch, when or where title passed, and who was the importer.
“A decision about a matter of pure EU law, based upon facts including a sale contract in uncertain terms would be unlikely to do much for the relevant jurisprudence,” wrote the judges.
What does this mean?
As more and more consumers shop online, including on overseas-based websites, these kinds of cases occur with greater frequency.
The Supreme Court has provided comprehensive guidance on “targeting”, which is likely to be helpful to both brand owners and operators of online marketplaces. The Court has made it clear that whether there is “targeting” will depend on a careful analysis of the website content and offer in each case.
The outcome is generally good news for brand owners. However, online marketplaces will be relieved that the Court has stepped back from some of the more rigorous language of the Court of Appeal.
If you would like to know more about how this judgment affects your business, please contact us to discuss.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com