Lifestyle Equities CV & Anor. v Amazon UK Services Limited & Ors.

Use of a trade mark on a foreign website must be assessed objectively, act by act, from the perspective of the average consumer in the protected territory. Mere accessibility is insufficient, but a particular advertisement or offer may be directed to that territory even if the website generally is not. Subjective intention is evidential only and is not a separate requirement.

A cross-border online sale to a consumer in the protected territory is itself use there under Regulation 2017/1001/EU. It does not require an earlier targeted advertisement or offer. Where infringement is established, financial relief may be withheld only after considering both the claimant's real prospect of recovery and proportionate alternatives to a full inquiry or account.

Lifestyle owned and exclusively licensed UK and EU trade marks for BEVERLY HILLS POLO CLUB goods. A commercially unrelated US owner sold identically branded goods in the United States without Lifestyle's consent to their marketing in the UK or EU.

Lifestyle alleged that Amazon infringed by advertising, offering for sale and selling those goods through amazon.com and Amazon Global Store, and by importing them. Amazon operated four relevant sales models. The challenged online purchasing process identified UK delivery, and at later stages supplied UK shipping and billing details, sterling payment and arrangements for importation.

Michael Green J dismissed the claims apart from limited admitted past infringement: [2021] EWHC 118 (Ch). Lifestyle appealed. The central questions were whether the online acts were use in the UK and EU, whether resulting sales independently constituted such use, and the proper approach to financial relief.

1. Appeal allowed. Arnold LJ, with whom Snowden LJ and the Master of the Rolls agreed, held that the advertisements, offers for sale and sales in issue were infringing uses of the marks in the UK and EU.
2. Under Regulation 2017/1001/EU, territorial use is assessed objectively from the perspective of reasonably informed, observant and circumspect average consumers. The enquiry concerns each asserted act of use. A website's general orientation towards another country does not preclude a particular use of a sign on that website from being directed to UK consumers. The operator's subjective intention may be evidentially relevant, but is not required.
3. The judge had erred by concentrating on whether amazon.com as a whole targeted the UK and EU, by treating its US orientation as decisive, and by treating the practical facilities offered to UK purchasers as largely irrelevant. The order-review page was manifestly directed to the UK: the customer, delivery and billing addresses were in the UK, payment was in sterling, and Amazon arranged shipment, importation and delivery. The full product page and, on balance, the relevant search-results page were also directed to UK consumers because they stated that the particular goods could be shipped to the UK. The same conclusion applied to all four business models.
4. Further, applying Blomqvist v Rolex SA, [EU:C:2014:55], a sale by a foreign online seller to a customer in the UK or EU is itself use in that territory. It is unnecessary to establish a prior targeted advertisement or offer. The contractual allocation of title, risk and importer-of-record status did not affect that conclusion.
5. The court did not decide the separate importation issue or whether Amazon.com Inc was a joint tortfeasor. Neither was necessary to determine liability. The refusal of financial relief could not stand. The court must first decide whether the claimant has a real, rather than fanciful, prospect of financial recovery. If so, it must consider whether a full inquiry or account would be proportionate; where it would not, the court should summarily assess relief if possible or direct a proportionate streamlined process.

• Court of Appeal (Civil Division) — allowed Lifestyle's appeal and held that the advertisements, offers for sale and sales infringed the trade marks: [2022] EWCA Civ 552.
• High Court of Justice, Intellectual Property List (ChD) — Michael Green J dismissed the claims except for limited admitted past infringement: [2021] EWHC 118 (Ch).