UK Supreme Court Clarifies Trade Mark Law in Online Sales Targeting UK Consumers

Citation: [2024] UKSC 8
Judgment on

Introduction

In the case of Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8, the United Kingdom Supreme Court addressed intricate questions pertaining to the application of EU and UK trade mark law, specifically in the context of internet marketing and sales across territorial boundaries. This article will distil the key legal principles and decisions handed down by the UKSC, linking them to relevant aspects of the case summary provided.

Key Facts

The case involved allegations of trade mark infringement by Amazon UK Services Ltd (referred to as ‘Amazon’) for marketing and selling US branded goods on its USA-based website to consumers in the UK and the EU. The goods were advertised on Amazon’s USA website but were available for delivery to the UK, raising the issue of whether the advertising and sale were targeting UK consumers and thereby infringing upon UK/EU registered trade marks.

Amazon positioned the sales as taking place in the US, with goods only entering the UK as a result of purchases made by UK consumers, who were not acting in the course of trade. Conversely, Lifestyle Equities contended that the goods were both targeted at and sold to consumers within the UK and the EU. This led to two main legal issues: whether Amazon’s activities constituted “targeting” UK consumers, and separately, whether sales to consumers in the UK amounted to infringement under the Blomqvist doctrine regardless of targeting.

Targeting in Online Commerce

The Supreme Court scrutinized the principle of “targeting” consumers within a particular territory. Drawing from the CJEU jurisprudence, the Court made clear that:

  • Merely accessing a website within the UK was insufficient to establish targeting; instead, there must be an apparent intent to establish commercial relations with UK consumers.
  • Determining targeting involves an objective assessment from the perspective of the average consumer, which includes all relevant website interactions and details indicative of an intention to cater to such consumers.
  • It is not necessary for a trader to have a subjective intention of targeting UK consumers; however, if such an intention exists, it might influence the objective assessment.
  • The average consumer does not represent a statistical mean, but the assessment must reflect the perception of typical consumers.

The Court meticulously analyzed Amazon’s website transactions from arrival on the landing page to the placement of orders—determining that, based on the totality of consumers’ online experiences, Amazon did indeed target the UK market.

Non-Targeted Sales and the Blomqvist Doctrine

The Blomqvist doctrine was acknowledged as it addresses situations of non-targeted sales. Under this doctrine, a sale completed outside the EU, to an EU-based consumer, could constitute an infringement of the trade mark rights within the EU, even if there has been no targeting. However, due to the finding of targeting, the Court refrained from fully adjudicating on this issue.

Infringing Sales

Consistent with Amazon’s concession, the Court recognized that sales induced by targeting that infringe upon trade marks would also constitute infringing sales.

Outcomes

The UKSC determined that Amazon’s presentation of goods on its USA website did amount to an act of targeting UK consumers. This conclusion relied significantly on the fact that the website tailored the viewing experience to UK consumers, shipping logistics, and currency options—all factors indicating deliberate marketing to the UK audience. The ruling also highlighted errors in the lower courts’ reasoning, including an overemphasis on subjective intent and misunderstanding the relevacy of certain website features.

Consequently, the Supreme Court dismissed the appeal, upholding the injunction and order relating to an inquiry granted by the Court of Appeal.

Conclusion

In conclusion, the Lifestyle Equities CV v Amazon UK Services Ltd case adds significant clarity to how the use of trade marks in cross-border internet sales is adjudicated within the UK’s legal framework. Specifically, the UKSC elucidated the distinction between mere accessibility and active targeting, emphasizing that the latter requires a comprehensive, objective analysis from the perspective of an “average consumer.” The decision reinforces that online merchants must consider the territoriality of trade mark rights in the course of international internet sales. The Supreme Court, therefore, set a precedent that maintains the balance between protecting trade mark holders’ rights and recognizing the global nature of e-commerce.