Cross border sales and the risk of trade mark infringement
The Supreme Court has held that Amazon US infringed a UK trade mark due to the way they advertised and sold in the UK and EU.
Background
Lifestyle is the owners of various UK and EU trade marks for “Beverly Hills Polo Club” and they became aware that Amazon were selling identical products under an identical mark in the US. Although Amazon could lawfully sell the products in the US, Lifestyle bought a claim in the UK for infringement of their UK and EU trade marks. The basis of the claim was that they believed Amazon had been targeting customers in the UK from their US website.
Lifestyle was unsuccessful with their claim in the High Court, but this was later overturned by the Court of Appeal who found that Amazon’s advertisements were targeting customers outside of the US. Amazon went on to appeal this decision, but the Supreme Court agreed with the Court of Appeal.
The Supreme Court’s decision
The Supreme Court needed to evaluate whether the average UK customer, who had an understanding that a foreign website might capture their attention unintentionally, would know that they were being specifically targeted. The court made specific note of the following points:
- The consistent display of “deliver to United Kingdom” on landing pages on its website and on other pages.
- The specific display of products stated that they were available for shipping to the UK.
- On the closing “review your order” page, the offers for sale of relevant products destined for UK addresses – this included tailored delivery times and prices.
- The option to pay in GB Pounds with an associated exchange rate.
Amazon argued that the low number of sales to UK customers indicated they were not targeting UK customers. They also pointed out that customers were given the option to switch to the UK website. However, the Supreme Court rejected these arguments because switching to the UK website was only optional and the customer could easily change the currency on the US website to British Pounds. The Supreme Court also considered that the average customer would not carry out a comparison of whether the UK website or the US website was more efficient for them to use.
The Supreme Court’s decision in this case sets a precedent that will be used for future cases of infringement abroad. Businesses should take extra care if they allow customers to purchase goods and services from them outside of their usual territory to ensure that what they are doing does not constitute targeting overseas customers. It would also be prudent to undertake a search of existing registered marks in other jurisdictions to minimise the risk of infringing upon an existing mark.
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