The High Court has previously found that Amazon only infringed a UK and European trade mark when goods sold under the sign were advertised and offered for sale on its country-designated Amazon site, i.e. amazon .co.uk. Everything sold on its global website amazon.com was considered to be for US consumers, even though those products could be viewed and purchased in the UK.
The consequence of this decision was that it was more difficult for trademark owners to oppose infringements on global marketplaces or on global websites. The Court of Appeal has just reversed this decision.
In his landmark judgment for the Court of Appeal, Lord Justice Arnold analyzed the journey of a British customer when making a purchase on Amazon.com. He noted that the buyer was located in the UK, the delivery address was in the UK, the billing address was in the UK, and the payment currency was British pounds. Additionally, Amazon would arrange for the goods to be dispatched and imported into the UK and delivered to the consumer in the UK.
Taking these factors into account, Lord Justice Arnold said it could not be “seriously” argued that Amazon’s global marketplace offer was not aimed at the UK. The offers for sale in this global market therefore constituted an infringement of Lifestyle’s British and European trade marks, the court determined.
The Court of Appeals said Lifestyle may therefore be entitled to seek an injunction to restrain future trademark infringement by Amazon if the marketplace does not itself provide an appropriate undertaking to address the risk of infringement. Lifestyle will also have the opportunity to argue for financial compensation for the violation found by the court.
“The Lord Justice Arnold judgment constitutes a significant change in the assessment of whether advertisements and offers for sale in a global market constitute trademark infringement in a particular territory,” said expert Tom Nener. in trademark protection at Pinsent Masons. “The context of the sales offer and the customer journey are always critical, but factors such as the offer of shipping to a geographic location, local currency payment details, and the actual delivery of products to that location could all be decisive.”
According to the ruling, Amazon had taken certain steps to block the sale of Lifestyle’s American-branded products in the UK. However, Gill Dennis, trademark protection expert at Pinsent Masons, said these measures would no longer be sufficient to combat unauthorized use of trademarks resulting from targeted product listings in light of the Court of Appeal ruling. .
“The fact that Lord Justice Arnold relies on the standard information given to consumers during the purchase process to show that the website was aimed at UK consumers means that the targeting threshold is relatively low,” Dennis said. “The judgment will therefore have implications for all global online marketplaces as it is likely to spur an increase in ‘notice and take down’ applications in relation to the use of trade marks in the UK.”