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Amazon online marketplace trade mark case comes before UK Supreme Court

The extent to which holders of UK and EU trade mark rights can object to others using their marks to promote products listed for sale on online global marketplaces is to be considered by the UK Supreme Court in an upcoming case involving e-commerce giant Amazon.

Amazon is seeking to overturn an earlier ruling by the Court of Appeal in London, which found that Amazon was liable for infringing UK trade marks belonging to Lifestyle Equities, a company that owns and licences rights to UK and EU trade marks for clothing brands.

At the heart of the case is the question of whether online global marketplaces can be said to be ‘using’ UK or EU trade marks if they display marks identical to those owned by rights holders alongside products they list for sale via their platforms.

In this case, Lifestyle has insisted that the products in question are US-branded goods and that it has never consented to them being placed on the market in the UK or the EU. It has taken issue with the display of marks identical to those it owns alongside goods Amazon lists for sale via amazon.com. Amazon, however, has insisted that the activity is legitimate and not an infringement of Lifestyle’s trade marks because the goods listed for sale are not targeted at UK consumers.

Dennis Gill_November 2019

Gill Dennis

Senior Practice Development Lawyer

The Court of Appeal ruling shifted the balance of power in favour of rights holders

Initially, Amazon had some success with its arguments. The High Court ruled that while Amazon had infringed Lifestyle’s UK, and EU, trade marks in respect of goods being sold under the signs in question that were advertised and offered for sale on its country-designated Amazon site i.e. amazon.co.uk, it did not consider that the goods advertised and offered for sale in the same way on Amazon’s global site, amazon.com, were targeted at consumers in the UK. Amazon had therefore not ‘used’ Lifestyle’s trade marks in the latter context, the High Court considered.

However, the Court of Appeal overturned the High Court’s decision.

In his leading judgment for the Court of Appeal, Lord Justice Arnold analysed a UK customer’s journey when making a purchase on amazon.com. He noted that the purchaser was located in the UK, the shipping address was in the UK, the billing address was in the UK, and the currency of payment was British pound sterling. Moreover, Amazon would make all the necessary arrangements for the goods to be shipped to and imported into the UK and delivered to the consumer in the UK. Taking those factors into account, Lord Justice Arnold considered that it could not be “seriously” argued that the offer for sale on Amazon’s global marketplace was not targeted at the UK.

Facing a possible injunction to prohibit future trade mark infringement, Amazon has lodged an appeal against the Court of Appeal’s ruling. Hearings before the UK Supreme Court are due to take place on Wednesday 15 and Thursday 16 November.

According to the Supreme Court, Amazon believes the Court of Appeal wrongly overturned the High Court's analysis of whether the listings were targeted at UK or EU consumers and that the Court of Appeal further “misinterpreted the EU case law regarding whether sales on foreign websites could constitute infringement of the trade marks in the UK/EU”.

“The Court of Appeal ruling shifted the balance of power in favour of rights holders,” said Gill Dennis, brand protection expert at Pinsent Masons. “As a result, website operators must ensure they are able to respond to notice and takedown requests quickly where trade mark rights are being infringed.”

“The Supreme Court’s judgment will confirm whether that onus remains on global marketplaces. It will also clarify the extent to which the more granular elements of the customer online purchasing journey remain relevant to the assessment of whether the marketplace is targeted at the UK,” she added.

A judgment from the Supreme Court in the case is not expected until well into 2024.

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