Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors

Trade mark rights remain territorial in their effect. Mere accessibility in the United Kingdom of a foreign website, or of listings on it, does not establish use of a sign in the United Kingdom. The court must assess objectively all relevant circumstances, including the website’s content, the ability to purchase or obtain delivery, traffic data, the trader’s business and any relevant intention, to determine whether the listing is targeted at UK consumers.

A sale made outside the UK or EU to a private consumer in the UK or EU is not, without targeted offers or advertising, itself use of the sign in the relevant territory. An online marketplace operator does not use a sign merely because it enables third-party sellers to display offers or provides fulfilment and related services. Joint liability requires assistance pursuant to a common design to commit the relevant tort.

The claimants owned UK and EU trade marks for the Beverly Hills Polo Club brand. The defendants were companies within the Amazon group operating amazon.com, amazon.co.uk and amazon.de through four business models: Amazon retail exports, Fulfilled by Amazon, Merchant Fulfilled Network and Amazon Global Store.

The claimants alleged that listings and sales of goods lawfully manufactured and authorised for the United States infringed their UK and EU trade marks, and that the defendants were jointly liable. The defendants accepted that pre-2019 Amazon Global Store listings on amazon.co.uk and amazon.de infringed, but disputed liability for amazon.com listings, historic sales, importation and third-party transactions. The central issues were targeting, the place of sale and importation, use in the course of trade, and joint liability.

1. Disposition. Except for the defendants’ admission concerning pre-2019 Amazon Global Store listings, the claims were dismissed. No inquiry as to damages was ordered because the admitted infringements were trivial and the wider allegations failed.
2. Under article 9(2)(a) of the Regulation (EU) 2017/1001 and section 10(1) of the Trade Marks Act 1994, the relevant requirements included use of an identical sign in the course of trade, without consent, in the relevant territory, in relation to identical goods, affecting a trade mark function.
3. Targeting is a jurisdictional requirement arising from the territoriality of trade mark rights. The court must assess the particular advertisement or offer for sale, objectively and in all the circumstances. Mere accessibility is insufficient. Amazon.com and the BHPC listings on it were directed primarily at United States consumers, notwithstanding that UK consumers could access the site, alter currency and delivery settings, and sometimes obtain delivery.
4. Blomqvist v Rolex SA [2014] ETMR 25 did not establish that every sale from outside the UK or EU to a private consumer in the territory constituted use in the course of trade there. Where the sale occurred outside the territory, and there was no targeted offer or advertisement, the sale itself was not an infringement. The historic sales through Amazon Global Store and Amazon Exports-Retail therefore failed.
5. For FBA Export and MFN Export, Amazon did not itself use the signs merely by providing marketplace, fulfilment, payment, shipping or customer-support services. The claimants had not shown that any defendant offered, advertised or put the goods on the market in the UK or EU.
6. Importation required more than arranging delivery. It required an intention to put the goods into free circulation in the EU. The consumers were the importers of record and Amazon had no such intention.
7. Joint tortfeasance required assistance, pursuant to a common design, in the commission of the relevant tort. The corporate relationship, ultimate holding-company status and general control metaphors did not establish such a design. Nor could the defendants be joint tortfeasors with private purchasers or third-party sellers where no primary infringement had been shown.

First instance decision. The judgment itself does not state any prior appellate history.