In a recent case against Amazon, the High Court found that certain companies within the Amazon Group had not infringed the trade mark rights of two Netherland based companies, which own the brand Beverly Hills Polo Club (BHPC).
The case of Lifestyle Equities C.V v Amazon UK Services Ltd (and others) considered the tensions between the global nature of e-commerce and the territoriality of trade marks. It looked at whether the sale of goods on a website that targeted a specific region (where the seller owned the necessary trade mark), could infringe another party’s trade mark rights applicable to a different region, because a website is accessible by consumers in that region.
In this case, a US business owned the trade mark rights to sell BHPC goods in the US and listed those goods for sale on Amazon’s various websites (US BHPC). The Claimant was Lifestyle Equities (Lifestyle), which owned exclusive rights to sell BHPC goods in the UK and EU (UK/EU BHPC). Lifestyle argued that because consumers in the UK/EU could view and purchase the US BHPC products on Amazon’s websites, Amazon was infringing its (UK/EU) trade mark rights.
Prior to the trial, Amazon had admitted that the sale of US BHPC goods on Amazon’s UK website had infringed Lifestyle’s UK/EU trade mark. However, Amazon denied Lifestyle’s claim in relation to its US website (and others). Amazon argued that its US website was aimed at US consumers only, which was evident by the fact the UK/EU had designated websites and the delivery and importation charges would discourage UK/EU purchasers. Amazon also argued that sales from its US website are completed in the US (in accordance with Amazon’s terms and conditions and evidenced by the requirement that consumers pay for importation). Amazon had also since put in place restrictions to prevent UK/EU consumers from purchasing US BHPC goods from its websites (consumers could still view the goods, which Lifestyle was particularly unhappy about).
The judge dismissed the claim, finding in favour of Amazon. He found that Amazon’s US website did not specifically target UK/EU consumers and the sales in question were completed in the US, for the reasons argued by Amazon. Importantly, the judge decided that it was clearly not acceptable to prevent consumers from viewing US BHPC goods on Amazon’s US website, as this would amount to censorship.
The decision was pragmatic and sensible, and serves as a useful reminder to businesses that sell goods using websites accessible by consumers based in jurisdictions where they do not own the necessary trade mark rights. The Court considered various factors when deciding if Amazon had infringed the Claimant’s trade mark, which business could use as a useful guide. These included whether the website’s design was aimed at the prohibited region/consumers, if consumers were required to pay for delivery and importation, and the location of sales. Ultimately, the best way to avoid a dispute is to block sales to prohibited territories/consumers (but businesses are not required to censor the viewing of products).
