Supreme Court of United Kingdom: While considering the instant appeal revolving around the application of European Union and UK trademark law to the cross-border marketing and sale of goods on the internet, wherein it was alleged that Amazon infringed Lifestyle’s EU/UK trademarks by advertising and offering the sale of US branded goods on its USA website, thereby “targeting” consumers in the UK/EU; the Bench of Lord Hodge (Deputy President), Lord Briggs*, Lord Hamblen, Lord Burrows, Lord Kitchin*, unanimously dismissed Amazon’s appeal and held that Amazon targeted consumers in the UK by displaying the USA branded goods on its USA website and marking them available for shipment to the UK, which in turn infringed the UK/EU Marks.
Background: The instant proceedings concern the alleged infringement of a group of trademarks registered in the UK and the EU and owned and licensed respectively by the two companies in the Lifestyle Equities group (hereinafter Lifestyle).
Lifestyle has never consented to the marketing of US branded goods in the UK or the EU because marketing or sale of the US branded goods in the UK or the EU would be an infringement of Lifestyle’s rights in the UK/EU Marks.
The instant dispute arose because Amazon marketed and sold US branded goods on its USA website, and Lifestyle contended that such goods were both targeted at and were sold to consumers in the UK and the EU. Some US branded goods were also marketed and sold on Amazon’s UK website thereby giving rise to the claim infringing Lifestyle’s UK/EU Marks. Thus, the dispute is confined to Amazon’s use of its USA website.
Lifestyle argued that Amazon’s advertisement and offer for sale of the US Branded Goods on the USA website “targeted” consumers in the UK/EU, in contravention of relevant UK and EU trademark laws. Lifestyle further claimed that, even if the marketing of the USA branded goods were not targeted at consumers in the UK/EU, Amazon nonetheless infringed Lifestyle’s rights in the UK/EU Marks by selling and delivering the goods through its USA website to consumers in the UK/EU.
The High Court dismissed Lifestyle’s claims, concluding that the listings of the USA Branded Goods on Amazon’s USA website were not targeted at consumers in the UK/EU. The Court of Appeal overturned this decision and granted an injunction against Amazon. Amazon now appeals to the UK Supreme Court.
Issues: The fundamental question before that Court was whether Amazon has used the signs in the course of trade in the relevant territory (UK) in relation to any relevant goods at all and whether the average consumer would consider the website to be directed at him or her.
Law Applicable
It is to be noted that the instant dispute relates entirely to events that occurred before the UK left the European Union (Brexit), and these proceedings began before 31-12-2020, the end of the implementation period provided for by Section 1 of the European Union (Withdrawal Agreement) Act 2020. Thus, UK trademark law was at that time substantially governed by EU legislation and case law.
The rights conferred by an EU trademark are set out in article 9 of the EUTM Regulation. Section 10(1) and sections 10(4)(b) and (d) of the Trade Marks Act 1994 apply to the claim for infringement of the UK trademarks, and are in materially the same terms as those of article 9 of the EUTM Regulation.
Court’s Assessment: Perusing the facts of the dispute, the Court made the following assessments which involved the analysis of respective EU and UK laws on Trademarks-
It was noted that in order to determine whether the marketing of goods on a foreign website is targeted at consumers within the relevant territory (the UK), the question to be answered by the court is whether the average consumer, being someone who is reasonably well informed and reasonably observant, would consider the website to be directed at him or her. The mere accessibility of an overseas website to a UK consumer is not enough on its own to establish targeting of that consumer. The court must carry out a multifactorial assessment of all the relevant circumstances to assess the reaction of the average consumer and answer the question whether there is targeting.
In order to ascertain such targeting as afore-stated, it was pointed out that it is necessary for the Court to conduct a close, contextual examination of the way in which Amazon’s USA website presents itself when accessed by a consumer situated in the UK.
After reviewing the successive pages of Amazon’s website which present or refer to the USA Branded Goods (or similar sample goods), the Court concluded that an average consumer in the UK/EU would consider the Amazon USA website to be directed at him or her due to the particularly significant factors which are as follows-
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a message on the landing page and almost all subsequent pages offering to deliver to the UK;
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specifying which of the goods displayed can be shipped to the UK;
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a “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 sterling.
The Court was of the view that balancing the relevant facts about Amazon’s marketing and offer for sale of the US branded goods on its USA website does show with reasonable clarity that it was targeting the UK as a territory, i.e. targeting consumers accessing its USA website from the UK. This is because the factors favouring that conclusion greatly outweigh the factors which might be said to point in the opposite direction. “In outline, viewed from the perspective of the average UK consumer, they are from start to finish in their encounter with the USA website being told that they will be shown goods (including the US branded goods) available for delivery to them in the UK, and that those goods will indeed be delivered there if they choose to make an online purchase of them from the USA website”.
[Lifestyle Equities CV v Amazon UK Services Ltd., [2024] UKSC 8, decided on 06-03-2024]
*Joint Judgment by Lord Briggs and Lord Kitchin
