HomeInsightsOnline trade mark infringement: UK Supreme Court rules for the first time on the meaning of “targeting”

Lifestyle Equities CV and another (Lifestyle) v Amazon UK Services Ltd and others (Amazon) [2024] UKSC 8

In a recent case involving the application of EU and UK trade mark law to the cross-border marketing and sale of goods on the internet, the Supreme Court has unanimously dismissed Amazon’s appeal.

The case concerned the alleged infringement of a group of trade marks under the BEVERLY HILLS POLO CLUB brand, which were registered in the UK and the EU and owned and licensed by the Lifestyle Equities group. Unusually, a separate series of marks were registered in the USA in relation to identical goods, owned by a commercially unrelated third party (the US Branded Goods). The result of this arrangement was that the US Branded Goods could be marketed and sold in the USA, but not in the UK or EU since that would constitute use of Lifestyle’s trade marks in those territories.

Given that trade marks are territorial in nature (protecting against unauthorised use within the territory in which the trade mark is registered), sales and marketing on the internet – which knows no territorial boundaries – has unsurprisingly presented challenges for the law. The response has been twofold: first, the law treats the advertisement and offering for sale of branded goods in a way which is targeted at a protected territory as a use of the mark in that targeted territory; second, it treats the sale of branded goods as a use of the mark within the territory if the sale is made “to” a consumer in that territory pursuant to a contract of sale made outside it. Whilst the lower courts considered the latter, the Supreme Court confined its judgment to the former question of targeting.

The question for the court was whether Amazon, in marketing and selling the US Branded Goods on the US version of its website, had in fact “targeted” consumers in the UK, thereby using Lifestyle’s trade marks.

At the High Court, Green J held that there had been no such targeting: average consumers would conclude that Amazon’s US website was targeted at consumers in the USA, not the UK. He pointed to a number of factors that led him to that conclusion, including that the US website advised customers visiting from the UK about the availability of the UK website (which would result in faster delivery times and lower prices than the US website) and that there were very few sales of the US Branded Goods to the UK.

The Court of Appeal disagreed (see Wiggin’s commentary here). Delivering what the Supreme court described as an “excoriating critique”, Arnold LJ concluded “if one asks whether that offer was targeted at the UK, in my view it is manifest that the answer is yes. The purchaser is located in the UK, the shipping address is in the UK, the billing address is in the UK, the currency of payment is GBP and Amazon will 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. I do not understand how it can seriously be argued that this offer for sale was not targeted at the UK, notwithstanding the valiant attempt of counsel for Amazon to do just that.”

 The Supreme Court unanimously upheld the judgment of the Court of Appeal. In its view, the relevant question to be answered by the court in determining whether the marketing of goods on a foreign website is targeted at consumers in the UK is whether “the average consumer, being someone who is reasonably observant, would consider the website to be directed at him or her”. In order to answer this question, a “multifactorial assessment of all the relevant circumstances” should be conducted, which includes considering “the appearance of the website, how it responds to the presence of the consumer, whether it is possible actually to buy goods and have them delivered, and how that is done”.

Conducting that assessment afresh, the Supreme Court found that the factors favouring the conclusion that the US website was targeting consumers accessing it from the UK “greatly outweigh[ed]” the factors pointing in the opposite direction. Particularly significant factors included (i) a recurring message on pages of the US website offering delivery to the UK; (ii) specifying which of the goods displayed can be shipped to the UK; and (iii) the “Review your order” page offering to sell the relevant goods to a consumer at a UK address, with UK-specific delivery times and the option to pay in pounds sterling. The court also agreed with the Court of Appeal that Green J in the High Court erred in thinking that because the US website was primarily directed at US consumers, it followed that it was not also targeted at UK consumers.

In summary, carefully analysing the “journey of the average consumer from landing to decision to buy”, the Supreme Court concluded that “if free or compelled to conduct our own analysis, we would conclude that Amazon did target the UK as a destination for the US branded goods by its display of them on its USA website, provided of course that each product thus displayed 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”.

Whilst the dispute related to events before the UK left the EU (when UK trade mark law was substantially governed by EU legislation and jurisprudence), the Supreme Court was quick to point out that this did not render the appeal “of merely historical interest or importance”. Indeed, it was common ground that the issues involved were unaffected by Brexit, and the court was clear that “UK trade mark law remains rooted in EU legal principles and the issues about the applicability of that law to internet marketing remain of prime and probably ever-increasing importance”.

Read the judgment in full here