Court Of Appeal Finds That Advertisements On Amazon.com Targeted UK And EU Consumers

• Published date: 13 September 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Brown Rudnick LLP
• Author: Mr Steven James, Hattie Chessher and Menelaos Karampetsos

The Court of Appeal in Lifestyle Equities CV and another v Amazon UK Services Limited and others [2022] EWCA Civ 552 has ruled that various Amazon entities 'Amazon' or the 'Defendants') infringed the registered U.K. and EU trademarks of Lifestyle Equities CV and Lifestyle Equities BV ('Lifestyle' or 'the Claimants') by advertising, offering for sale and selling goods on its U.S. website to U.K. and EU customers. The decision is potentially significant for any company operating an online business and shipping internationally.

Facts

The Claimants are the owners of U.K. and EU trade marks consisting of the words 'Beverly Hills Polo Club' or a logo comprising those words together with a device of a horse and rider (the 'Trade Marks'). A commercially unrelated entity owns corresponding Trade Marks in the U.S. Lifestyle had not consented to U.S. goods bearing the Trade Marks being placed on the market in the U.K. or EU. It asserted therefore that the Defendants had infringed its Trade Marks by advertising, offering for sale and selling goods bearing the Trade Marks to consumers in the U.K. and the EU via various different sales models, including on its U.S. site www.amazon.com ('Amazon.com'). The key question was whether the Defendants' advertisements on that website had targeted U.K. and EU customers.

Amazon argued that its U.S. website was only targeted at U.S. consumers. It said, amongst other things, that there was an extremely low volume of website traffic from the U.K. and EU (as compared with the U.S. traffic), and, whilst it did advertise shipping in the U.K., arrange for payment of import fees and offer the ability to shop in British pounds, it actively encouraged users to shop on their local Amazon website instead (e.g. www.amazon.co.uk if a user is based in the U.K.). If a U.K. or EU user therefore chose to stay on Amazon.com, and purchase goods from that site notwithstanding the higher shipping costs and import duties that would apply, they would make a conscious decision to do so. Such users knew they were buying U.S. products from a U.S. site, and that the products were not targeted at them. Amazon also provided in its terms and conditions that risk of loss and title for such purchases passed to the customer upon delivery to the carrier (in an attempt to avoid being the importer of the goods), and it cited the fact that not all items for sale on Amazon.com were available to ship to the U.K. It claimed this demonstrated the U.S. Amazon site was not...