Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd & Anor

For trade mark infringement on an online marketplace, the seller uses signs displayed on a product listing where the marketplace enables the seller’s commercial communication. The seller need not know that the sign appears on the listing. It is sufficient that the sign is actually used in a way that establishes a link with the goods marketed.

A person may be a joint tortfeasor without being a director or the company’s controlling mind. The question is whether the person actively co-operated in the infringing acts, intended that the co-operation would assist them, and made more than a de minimis contribution.

The claimant owned the EU trade mark BIRLEA for, among other goods, furniture and beds. The first defendant sold beds through Amazon listings bearing the BIRLEA sign. The second defendant, an employee, shareholder and director, arranged the purchases and placed the beds on Amazon.

The defendants argued that the listings were initially generic and that they were not liable until they knew that the BIRLEA sign appeared. The court also had to determine whether the second defendant was jointly liable for the first defendant’s infringements. The trial was split, and this judgment determined liability only.

1. Trade mark use. The court applied the principles in Arsenal Football Club plc v Matthew Reed, C206/01, and Céline SARL v Céline SA, C-17/06. Commercial use with a view to economic advantage satisfies use in the course of trade. Use in relation to goods exists where the sign is affixed to goods or is used so as to establish a link between the sign and the goods marketed.
2. In the online-marketplace context, applying L’Oréal v eBay, C-324/09, EU:C:2011:474, the seller, rather than the marketplace operator, uses the sign displayed on the listing. There is no requirement that the seller knew of the sign’s presence. Actual use establishing the necessary link is sufficient.
3. The evidence showed that BIRLEA appeared in the listing titles from the defendants’ first sales. The defendants’ theory that Amazon retrospectively inserted the brand into historical sales records was rejected. The first defendant therefore infringed the Mark by advertising, offering for sale and selling beds through the listings from 23 April 2013, the filing date of the Mark.
4. Joint tortfeasance. Applying Fish & Fish Ltd v Sea Shepherd UK, [2015] UKSC 10, and Vertical Leisure v Poleplus Ltd, [2015] EWHC 841 (IPEC), joint liability required active co-operation which furthered the tort, an intention that the co-operation would assist the tortious act, and more than a de minimis contribution. Directorship or control of the company was not required.
5. The second defendant had personally negotiated the purchase of the beds, overseen online sales and attached the beds to the Amazon listings. His conduct satisfied the joint-tortfeasance test. Judgment was accordingly given that both defendants were liable, with consequential orders reserved for the hand-down hearing.