Trade mark infringement: Lifestyle Equities v Amazon

The case

In 2019 the claimant, Lifestyle Equities (LE), exclusive (UK/EU) licensee of various trade marks relating to the Beverly Hills Polo Club (BHPC) brought a claim for trade mark infringement against various companies in the Amazon group. The allegations were that by listing products bearing the BHPC marks (but not sourced from LE) on the websites amazon.com-usa and amazon.co.uk, Amazon were using the BHPC marks in the UK (and EU) and that this infringed the rights of LE.

The situation was complicated by the fact that the products were available via Amazon’s Global Store (i.e. listed in the US) but could be purchased through the .co.uk website. There was no dispute that the products bore the BHPC marks and key question was whether listings in the US, which could be purchased by consumers in the UK, amounted to use of the trade marks in the UK and, in particular, whether the listings were directly, or indirectly, targeting UK consumers.

The High Court ruled that there was no targeting because UK consumers were aware that they were buying through the Global Store (from outside of the UK) and thus there was no infringement.

Appeal stage

LE appealed the High Court’s decision, contending that the marks were used in the UK and thus there was an infringement. Ultimately the COA agreed with LE and overturned the High Court’s ruling.

In reaching its decision the COA found that:

• The High Court took an unnecessarily narrow view of what constituted use of a mark in the UK, considering only the concept of targeting;
• Amazon was clearly using the BHPC marks on its website which was available to consumers in the UK;
• The use would consist of an advertisement aimed at the relevant class of consumer and/or a specific offer for sale to a particular consumer, as in this case; and
• The Review Order page on the Global Store is run entirely by Amazon and, for a UK consumer, would involve shopping to the UK with payment in GBP. This alone was sufficient to demonstrate targeting of UK consumer.

Therefore the COA concluded that Amazon sales on the Global Store did constitute use in the course of trade and that targeting does not necessarily require the sales to be aimed at any one particular jurisdiction. Accordingly, Amazon was found to have infringed the BHPC trade marks when selling products through the Global Store.

This judgment is important for many businesses that sell on, or see their products sold on, Amazon and other such marketplaces. Whilst we expect it to be appealed again, it is nonetheless a warning sign to Amazon (and its competitors) that it may need to rethink its global business model and revert to a strictly territorial approach.

If you need legal advice on trade mark infringement, contact our specialist Intellectual Property team.