Amazon found liable for trade mark infringement

In the case of Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC, the Supreme Court upheld the judgment of the Court of Appeal’s ruling that Amazon was liable for trade mark infringement due to the way it advertised and sold goods to EU and UK consumers through its US website.

This case provides information on what amounts to “targeting” in relation to cross-border e-commerce and the extent to which holders of UK and EU trade mark rights can object to others using their intellectual property to promote products listed for sale on online global marketplaces.

Background

This case deals with the infringement by Amazon of the Beverly Hills Polo Club (BHPC) trade marks. Lifestyle Equities is authorised to use the trade marks in the UK and EU whilst the US party is authorised to use the trade marks in the US. The US party sold its goods through Amazon, which in turn allowed UK and EU consumers to access and purchase from.

The key issue in this case was whether Amazon had targeted UK and EU consumers by advertising and offering for sale US branded goods on their US website. The High Court ruled in Amazon’s favour as the judge considered that consumers would know if they purchased goods on Amazon.com, which is primarily a US website, they would be buying from the US. The Court of Appeal overturned the High Court decision and found in favour of the brand owner. It ruled that Amazon had infringed Lifestyle Equities’ rights. It was considered that when going through the purchasing process on Amazon, the consumers are made aware of UK-specific delivery, shipping and billing options and are shown costs in GBP, therefore their sales targeted the UK. The Supreme Court granted Amazon leave to appeal the decision.

Judgment

The Supreme Court upheld the Court of Appeals ruling that Amazon was liable for infringement and that its US website had targeted consumers in the UK. The court assessed whether a significant portion of relevant consumers would consider the website to be directed toward them. The court noted that from start to finish of their purchase, the consumer was told from the start whether the goods were available for delivery to the UK or not. A message on the landing page would pop up that said ‘Deliver to the United Kingdom’ which the software inserted when it detected that the consumer’s IP address was in the UK. Ultimately, the Supreme Court found that this amounted to ‘targeting’. The Court noted further, that the fact that Amazon’s UK sales of the US-branded goods were few in comparison with its US sales was not relevant as the degree of relative success was not a reliable indicator of targeting.

The Supreme Court’s judgment contains useful guidance on website content that points towards targeting of UK consumers. It shows that the tailoring of a website experience to consumers located in the UK would point towards targeting and would increase any risk of infringement liability.

Our Commercial team can help with any questions you may have about trade mark infringements and commercial contracts