Online retailers beware - Amazon US website found to target UK consumers and infringe UK trade marks
The Supreme Court has upheld a Court of Appeal decision that Amazon’s US website targets UK consumers in a landmark judgment on the issue of whether UK consumers are being marketed to (targeted) by a foreign trader. Following the judgment, non-UK websites should consider whether they wish to directly entice UK sales on the basis that they may, depending on the set up of their website, breach UK trade mark law.
The dispute in Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8 revolved around whether Amazon had infringed Lifestyle’s UK and EU trade marks for the Beverley Hills Polo Club brand, by allowing identical goods to be listed on their US website (the “US branded goods”), in a way that made them visible to, and clearly purchasable by, consumers in the UK. Identical trade marks were lawfully registered in the US in the name of an unrelated company, but Lifestyle never consented to US branded goods being marketed in the UK or EU. All parties agreed that targeting UK and EU consumers with these goods would constitute use of the trade marks, and therefore infringement under trade mark law, in these two territories.
Targeting
Whether a non-UK website targets UK sales will depend on the presentation of the website and an assessment of all relevant factors. Ultimately, the Supreme Court decided that Amazon was targeting UK consumers because of the specific set up of the US website. The factors below were particularly relevant.
- A “Deliver to United Kingdom” message on the landing page and its repetition on all subsequent pages, including those which first display the US branded goods .
- The deliberate insertion by Amazon’s software of a “Deliver to United Kingdom” message when the website is visited by a consumer with a UK IP address, unless the UK consumer changes their delivery address.
- A precise indication of which products displayed are available in the UK.
- UK specific delivery times and prices and the option to pay in sterling, coupled with an exchange rate on the “Review your order” page. The court decided this page constituted an offer for sale of the relevant goods to a consumer at a UK address.
A multifactorial analysis should take place when deciding whether a website targets sales. Factors that Amazon argued pointing away from targeting were:
- The inclusion on the landing page of a message informing consumers with a UK IP address about the Amazon UK website. However, the court gave less weight to this factor as use of the UK website was only expressed as an option and it wasn’t clear from the message that goods displayed on the Amazon US website were also available for purchase on the UK site.
- Default prices being displayed in US dollars. This factor was considered weak by the court due to the prominently displayed option on the landing page to change currency and sterling being expressly included as an option.
- Delivery times and charges generally being lower for UK consumers on the Amazon UK website than the US site. However, the court noted that the average consumer would not make these comparisons and the point had no force in relation to products that were only available on the US website. This argument was weak because there weren’t delivery times and charges for all products. There was also no reason for the average consumer to think that Amazon didn’t wish to achieve sales of any product available in the UK from the US website, even if it offered more expensive delivery charges than if the same product was ordered through Amazon UK.
- Amazon’s UK sales of the US branded goods were a very small fraction of the US sales of the same goods. The court placed very little weight on this fact as it would be entirely invisible to the average consumer and the degree of relative sales success is not a reliable pointer to targeting.
In summary, the Supreme Court’s judgment indicates that active assistance provided by online retailers based abroad to help UK consumers buy goods from their website, may count as a factor towards the website targeting UK consumers. Foreign online retailers may therefore wish to limit such active assistance. This could worsen the customer experience for UK consumers who choose to buy from non-UK websites, although the extent to which this will be commercially damaging will depend on the proportion of sales made from the relevant website to UK consumers.
It’s important to stress this judgment indicates that passively responding to an order made by a UK consumer by fulfilling the order and arranging shipping would not point to targeting. Risk averse online retailers who are based outside the UK may therefore consider limiting services to UK consumers to these basic functions.
The Blomqvist Issue
Lifestyle also alleged that Amazon infringed its trade marks by selling the US branded goods to consumers in the UK, irrespective of whether Amazon targeted UK consumers. They argued that:
- The mere sale and supply of branded goods through a foreign website to a UK consumer, constitutes use of the brand in the course of trade in the UK
- This would infringe any identical UK (and at the time EU) trade marks if the registered trade mark owner hadn’t consented to such use.
This question is known as the Blomqvist Issue after the EU case in which it was first raised Martin Blomqvist v Rolex SA and another (Case C‑98/13) EU:C:2014:55.
The sales in the Lifestyle Equities v Amazon case were all targeted sales, so the Supreme Court said it wasn’t necessary to consider the Blomqvist issue. Therefore the most recent authority on this remains the Court of Appeal decision in the Lifestyle Equities case (Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2022] EWCA Civ 552).
The Court of Appeal said Blomqvist was clear authority for the proposition that the sale of goods under a trade mark by a foreign website to UK or EU consumers, constitutes use of the trade mark in the course of trade in the UK or EU, even if there was no preceding offer for sale or advertisement targeting consumers in those territories.
The Court of Appeal’s decision means that foreign online traders will be at risk of litigation by UK trade mark holders concerning any products sold to UK consumers that are branded with identical trade marks registered in another jurisdiction.
Takeaways
It will be interesting to see the extent to which Amazon USA and other non-UK based websites amend their web pages to take account of this judgment as it has a far-reaching effect.
Martin Blomqvist v Rolex SA C-98/13 CURIA - Documents (europa.eu)