Amazon loses UK Supreme Court appeal on cross-border internet sales

UK’s highest court dismisses e-commerce giant’s appeal to lift injunction over cross-border trademark dispute

UK Supreme Court said Amazon’s US website targeted UK consumers with trademark protected goods Eric Broder Van Dyke

Amazon has lost an appeal at the UK Supreme Court to lift an injunction preventing it from selling branded goods protected by EU and UK trademarks on its US website.

The judgment, Lifestyle Equities CV and Anon v Amazon UK and others, handed down by Supreme Court deputy president Lord Hodge, Lord Briggs, Lord Hamblen, Lord Burrows and Lord Kitchin on 6 March, concerned the application of EU and UK trademark law to the cross-border marketing and sale of goods on the internet. 

Lifestyle, the plaintiffs, own EU and UK trademarks comprising either of the words ‘BEVERLY HILLS POLO CLUB’ or the logo consisting of those words coupled with a device of a horse and rider.

The corresponding trademarks in the US are owned by a “commercially unrelated entity”, which produces identical branded goods in the US to those for which Lifestyle’s trademarks are registered in the UK and EU.

Lifestyle claimed that Amazon had infringed its UK and EU trademarks by marketing and selling the US-branded goods to UK and EU customers via Amazon’s US website.

Lifestyle argued that Amazon’s ads and offers for sale of the US-branded goods on the US website targeted consumers in the UK and EU, infringing its UK and EU trademarks.

Lifestyle also claimed that even if the marketing of the US branded goods was not targeted at consumers in the UK or EU, Amazon nonetheless infringed Lifestyle’s rights in the UK and EU marks by selling and delivering the goods through its US website to consumers in the UK and EU.

The High Court of England and Wales dismissed Lifestyle’s claims in 2021, concluding that the listings of the US branded goods on Amazon’s US website were not targeted at consumers in the UK and EU.

In May 2022, the Court of Appeal overturned this decision and granted an injunction against Amazon. Amazon then appealed to the Supreme Court and the Supreme Court has now unanimously dismissed the appeal.

The Supreme Court agreed with the Court of Appeal that there was targeting of UK consumers on the US Amazon website in relation to the branded goods in question.

Commenting on the judgment, Cassandra Hill, partner and head of IP enforcement at Mischon de Reya, said that, despite the website’s “.com domain and its apparent US focus, the court found that the offers were targeted at the UK market”.

She continued that the decision “provided clear direction on what amounts to targeting within the context of advertisements and offers for sale of goods on a retail website and when this will amount to trademark infringement in the UK in cross-border internet sales”.

It was “welcome news for brand owners and licensees who operate their business on a licensing basis to ensure that they can enforce against any encroachment on their operational territories”, she said.

She pointed out, however, that the Supreme Court refused to decide on whether products would infringe if they were sold and delivered into the UK where there had been no targeted advertising and offers for sale as “it did not arise in the circumstances of this case”.

She added that the case law on this point “did not provide a sufficiently detailed description of the underlying facts for the Supreme Court to form a reliable view (despite the Court of Appeal having found that products in this scenario would infringe)”.

This may be an issue to be resolved in a future case, she concluded. 

The judges said it was important to note that the dispute relates to events that occurred before the UK left the EU, and these proceedings began before 31 December 2020, the end of the implementation period. This meant that UK trademark law was at that time substantially governed by EU legislation and jurisprudence, the judges said.

However, the judges also noted that UK trademark law “remains rooted in EU legal principles” and the issues about the applicability of that law to internet marketing remained of “prime and probably ever-increasing importance”.

Amazon was represented by 8 New Square’s Daniel Alexander KC and Maxwell Keay (instructed by Hogan Lovells, London). Lifestyle was represented by Serle Court’s Michael Edenborough KC and Hogarth Chambers’ Thomas St Quintin (instructed by Brandsmiths London).

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