Factual and Procedural Background
This is the trial of a trade mark dispute between the owners of the Beverly Hills Polo Club (BHPC) brand in the UK and EU (the Claimants) and companies within the Amazon Group (the Defendants). The Claimants allege that the Defendants infringed their trade mark rights by allowing BHPC branded goods to be listed on Amazon's websites, particularly amazon.com, making them visible to consumers in the UK/EU. The dispute arises due to a split in ownership of the BHPC trade mark rights between the US and UK/EU, where goods lawfully manufactured and sold in the US with the consent of the US rights holder are being marketed and sold to UK/EU consumers via Amazon’s platforms.
The Defendants acknowledge the split ownership issues but contend that the Claimants exaggerate the problem, asserting that restrictions implemented by Amazon have effectively prevented sales of BHPC goods from amazon.com to the UK/EU. They argue that historical sales have been minimal and that the Claimants' true concern is the visibility of BHPC products to UK/EU consumers rather than sales. The Claimants describe the case as one of counterfeiting, a characterization the court finds unhelpful since the goods are not counterfeit in the usual sense as they are produced with the US rights holder's consent.
The case focuses on the impact of e-commerce and the internet's global nature on the protection of territorially limited trade mark rights. The court must consider whether amazon.com and the listings of BHPC products are targeted at UK/EU consumers, which is central to establishing jurisdiction and infringement.
The trial concerns liability only; any issues regarding damages will be addressed in a subsequent trial if liability is established.
Legal Issues Presented
- Whether the Defendants’ listings of BHPC products on amazon.com are targeted at UK/EU consumers, constituting use of the trade mark within the relevant territory.
- Whether sales of BHPC products to UK/EU consumers via the four Amazon business models constitute trade mark infringement.
- Whether any of the Defendants are responsible for the importation of BHPC products into the UK/EU and thus liable for infringement.
- Whether the Defendants have used the BHPC signs in the course of trade, particularly in relation to the FBA Export and MFN Export business models.
- Whether the Defendants are jointly liable for any infringement committed by one or more of them or by third party sellers.
- The applicability and interpretation of the CJEU decision in Blomqvist v Rolex SA regarding sales from outside the EU to consumers within the EU.
- The relevance of the concept of counterfeit goods to the case.
- The alternative claim of passing off.
Arguments of the Parties
Claimants' Arguments
- The Defendants have infringed the Claimants’ UK/EU trade mark rights by listing BHPC branded goods on amazon.com accessible to UK/EU consumers.
- The listings and sales constitute use of the trade mark in the relevant territory, even if the goods are lawfully manufactured and sold in the US under US rights.
- The visibility of BHPC products to UK/EU consumers damages the Claimants’ brand value and is the primary concern, not just sales.
- The case should be considered one of counterfeiting, as the goods are unauthorized in the UK/EU market.
- Amazon’s restrictions have been ineffective in preventing visibility and sales, particularly in relation to the MFN Export business model.
- Amazon’s involvement in certain business models (FBA Export, MFN Export) goes beyond mere facilitation, making them liable for trade mark use.
- The Blomqvist decision supports treating sales to UK/EU consumers from outside the territory as infringing use.
- Joint liability applies to the Defendants collectively and potentially with third party sellers and purchasers.
Defendants' Arguments
- The Claimants exaggerate the extent of infringement; Amazon has implemented effective restrictions preventing sales of BHPC goods from amazon.com to the UK/EU since 2019.
- Amazon.com is targeted at US consumers, not UK/EU consumers; UK/EU consumers who access amazon.com do so deliberately despite disadvantages such as high shipping costs.
- The mere accessibility of amazon.com in the UK/EU does not constitute targeting or use within the territory.
- Sales of BHPC goods from the US to UK/EU consumers are private purchases and do not constitute use in the course of trade within the UK/EU.
- Amazon’s role in FBA Export and MFN Export is limited to facilitating transactions and does not amount to use of the trade mark in the course of trade within the UK/EU.
- The Claimants have not identified the correct Amazon entity responsible for the alleged infringements; the ultimate holding company cannot be held liable without evidence of common design.
- The Claimants’ framing of the case as counterfeiting is misleading since the goods are lawfully manufactured and sold under US rights.
- Joint liability with third party sellers or purchasers is unsupported and unpleaded.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Interflora Inc v Marks and Spencer plc [2014] EWCA Civ 1403 |
Conditions for establishing trade mark infringement under Article 9(2)(a) EUTMR |
Used to outline the six conditions for infringement, focusing on use within the relevant territory and in the course of trade. |
| Google France v Louis Vuitton [2010] ETMR 30 |
Use of trade marks by internet referencing service providers |
Confirmed that operators allowing third parties to use trade marks do not themselves use the marks within the meaning of the legislation. |
| L’Oréal SA v eBay International AG [2011] ETMR 52 |
Use of trade marks on online marketplaces |
Distinguished between use by third party sellers and the marketplace operator; operators do not use trade marks merely by hosting listings. |
| Coty Germany GmbH v Amazon Services Europe Sarl [2020] ETMR 37 |
Use of trade marks and liability of online marketplace operators |
Held that storage of infringing goods by Amazon does not constitute use; distinguished from sales by Amazon itself. |
| Class International BV v Colgate-Palmolive Co [2006] Ch 154 |
Definition of importation in trade mark infringement |
Clarified that importation requires customs clearance and release for free circulation in the EU. |
| A v B [2020] ETMR 39 |
Use in the course of trade and importation |
Confirmed that use in the course of trade applies to economic operators and importation requires intention to put goods on the market. |
| Arsenal Football Club plc v Reed [2003] Ch 454 |
Use in the course of trade |
Confirmed that use in the course of trade involves commercial activity with a view to economic advantage. |
| Pammer v Reederei Karl Schluter GmbH & Co KG and Hotel Alpenhof GesmbH v Heller [2012] Bus LR 972 |
Concept of targeting in jurisdictional context |
Provided criteria for determining whether a website’s activity is directed at consumers in a Member State. |
| Argos Ltd v Argos Systems Inc [2018] EWCA Civ 2211 |
Relevance of subjective intention and average consumer perspective in targeting |
Held that subjective intention is relevant but cannot create targeting where objectively absent; emphasized evaluation of all relevant circumstances. |
| Stichting BDO v BDO Unibank, Inc [2013] EWHC 418 (Ch) |
Targeting in advertising |
Confirmed that circulation figures and nature of advertising are relevant to determining targeting. |
| Lifestyle Equities C.V. and anor v Sportsdirect.Com Retail Ltd and ors [2018] EWHC 728 (Ch) |
Use of term “counterfeit” and litigation conduct |
Criticized Claimant’s use of “counterfeit” to imply wrongdoing without evidence; relevant to assessing credibility of Claimants’ characterisation. |
| Sea Shepherd UK v Fish & Fish Limited [2015] UKSC 10; [2015] AC 1229 |
Joint tortfeasance and common design |
Outlined conditions for joint liability by common design in tort; emphasized fact-sensitive nature of such liability. |
| CBS Songs Limited v Amstrad Consumer Electronics plc [1988] AC 1013 |
Joint infringement and common design |
Clarified that manufacturers or retailers are not joint infringers simply because purchasers use products unlawfully. |
| Rotocrop International Ltd v Genbourne Ltd [1982] FSR 241 |
Joint tortfeasance with customers |
Discussed joint tortfeasor liability where defendants act in concert with customers pursuant to common design. |
Court's Reasoning and Analysis
The court undertook a detailed analysis of the legal principles governing trade mark infringement, focusing on the territorial nature of trade mark rights and the concept of targeting as a jurisdictional requirement. It emphasized that trade mark protection is territorial and that mere accessibility of a website from a territory does not constitute use of the trade mark within that territory.
Applying the law to the facts, the court found that amazon.co.uk is targeted at UK consumers, and the Defendants admitted that listings on Amazon Global Store on amazon.co.uk before 2019 infringed the Claimants’ trade mark rights. However, the key issue was whether amazon.com and the BHPC product listings thereon targeted UK/EU consumers.
The court held that amazon.com is primarily targeted at US consumers, not UK/EU consumers. UK/EU consumers who access amazon.com do so deliberately, despite higher shipping costs and import fees, and are aware that the site is US-focused. The features of amazon.com that facilitate international shopping were found to be downstream effects of consumer choice rather than evidence of targeting. The volume of UK/EU traffic and sales of BHPC products via amazon.com was minimal compared to US traffic.
Regarding sales, the court concluded that sales made from the US to UK/EU consumers by private individuals for personal use do not constitute use in the course of trade within the UK/EU and are not infringing acts. The contractual terms confirm that sales occur in the US, with the customer as importer of record.
The court rejected the Claimants’ reliance on the CJEU decision in Blomqvist as extending trade mark infringement jurisdiction to sales made outside the EU without targeted offers or advertisements, concluding that Blomqvist does not radically alter the territorial limits of trade mark law.
In relation to the FBA Export and MFN Export business models, the court found that Amazon’s role is limited to facilitating third party sales and does not amount to use of the trade mark in the course of trade within the UK/EU. The Claimants failed to identify which Defendant should be liable for these models, and the court found no evidence of use by the ultimate holding company or joint liability based on common design.
The court criticized the Claimants’ framing of the case as counterfeiting, noting that BHPC products are lawfully manufactured and sold with the consent of the US rights holder, and that the term was used pejoratively to cast Amazon in a negative light without legal basis.
Finally, the court found no basis for joint liability with third party sellers or purchasers, who act in a private capacity and are not liable for infringement.
Holding and Implications
The court dismissed the Claimants’ claims for trade mark infringement and passing off against the Defendants, except for the admission by the Second and Fourth Defendants that pre-2019 listings on Amazon Global Store infringed the Claimants’ trade mark rights.
The court held that the restrictions implemented by Amazon in 2018 and 2019 have been effective in preventing sales of BHPC goods from the US to the UK/EU and that the remaining visibility of listings on amazon.com does not constitute targeted use within the UK/EU. Sales made from the US to UK/EU consumers by private individuals for personal use do not amount to infringing use in the course of trade. No joint liability was established.
The implication is that territorial trade mark rights cannot be extended to cover listings or sales on a globally accessible website that is not targeted at the relevant territory, preserving the territorial limits of trade mark protection in the context of global e-commerce. The court recognized the challenges posed by split ownership of trade marks and the global nature of the internet, but declined to extend trade mark infringement beyond established legal principles.
No new precedent was set beyond reaffirming existing principles on targeting, use in the course of trade, and territoriality of trade mark rights. The court encouraged continued cooperation between rights holders and online marketplaces to address infringement concerns within these legal boundaries.