Amazon loses UK trade mark battle over US website sales

Gill Dennis, an expert in brand protection and trade mark law at Pinsent Masons, said the judgment (30-page / 307KB PDF) is “likely to spur an increase in notice and takedown requests in respect of use of trade marks in the UK”.

The Supreme Court considered that Amazon had infringed UK trade marks belonging to Lifestyle Equities, which owns and licences rights to UK and EU trade marks for clothing brands. Amazon marketed products under identical marks to Lifestyle’s trade marks on its amazon.com website, referred to by the Supreme Court as Amazon’s US website. Lifestyle claimed that the activity constituted ‘use’ of the identical marks in the UK and EU, which infringed their trade marks. Amazon had argued that it was not liable for UK trade mark infringement because the goods it listed on its US website were not targeted at UK consumers. However, the UK Supreme Court disagreed, upholding a Court of Appeal ruling in the case in 2022, which Amazon had lodged an appeal against.

Dennis said the Supreme Court’s judgment provides some guidance on when the UK courts might consider that online global marketplaces are ‘using’ UK, or EU, trade marks when they display marks identical to those owned by rights holders alongside products they list for sale via their platforms, and that it has widespread relevance for online retailers – many of which will now have to take action.

“Global website operators, including online marketplaces, not intending to target the UK will need to make that clear in the information provided to consumers during the buying process,” Dennis said. “For example, they will need to remove all statements that suggest goods are available to consumers in the UK, including that the goods can be shipped to the UK and delivered to UK addresses. They will also need to remove the option to pay for goods in pounds sterling. Alternatively, to put the position on targeting beyond doubt, website operators can implement appropriate geo-restrictions.”

“The judgment is likely to spur an increase in notice and takedown requests in respect of use of trade marks in the UK and website operators will need to ensure they are in a position to respond to these without delay,” she said.

The UK Supreme Court confirmed that the mere accessibility of a website in the UK is not sufficient to establish that consumers in the UK are the target of the content of that website, for the purposes of establishing ‘use’ of a UK trade mark by the website operator. Instead, the court said that relevant factors need to be considered on a case-by-case basis, from the perspective of the ‘average consumer’ for the products in question, to determine whether an offer for sale arising on those sites is targeted at UK consumers.

Those principles have been established in both UK and EU case law, but this case is the first time since Brexit that the UK Supreme Court has been tasked with developing the UK case law further in respect of the factors that can be relevant to such a determination.

First, the Supreme Court confirmed that it is “not necessary to establish that the foreign trader had the subjective intention of targeting consumers in the UK”, though it said that where there is such intent this “can ease the path to a finding that the foreign trader’s activities, viewed objectively from the perspective of the average consumer, were and are targeted at consumers in the UK”.

The Supreme Court evaluated how the US Amazon website presents to an average consumer in the UK. Its ruling described the journey that those consumers are taken on when engaging with the options available to browse product listings on the site and place and review an order.

The court considered that there were more factors weighing in favour of concluding that Amazon had targeted UK consumers than not.

Factors it highlighted in support of this view included information displayed to UK visitors to Amazon’s US website, including on the landing page, that promote the option for users to select delivery of orders to the UK. The court also referred to content displayed in a “pop-up box” that tells UK users of the website that they are viewing a list of specific goods that can be shipped to the UK.

Further “pointers to targeting consumers in the UK” appear when UK users visit the ‘Review your order’ page on Amazon’s US website, the court said. These include “an offer for sale of the relevant goods to a consumer at a UK address, with UK specific delivery times and prices, the ability to pay in sterling coupled with an exchange rate”.

“The delivery dates, prices and exchange rate were calculated by Amazon specifically to populate the details of an offer to supply and deliver the goods to the UK,” the Supreme Court said, dismissing the relevance of the fact the information is generated automatically.

The Supreme Court said there were other pointers that could be considered to favour Amazon’s claim that it was not targeting UK consumers.

For example, it cited the fact that UK visitors to the US website are presented with a message about using Amazon’s UK website instead, but it said the message, which appears only on the US website landing page and not on subsequent pages, is “expressed only as an option” and that “it clearly contemplates that the consumer may wish to continue on the USA website”.

The court further considered the fact that the price of goods displayed on the US website is set as US dollars by default. However, it said this is a “very weak” contrary indicator “because of the prominently displayed option to change currency on the landing page, with sterling expressly included as an option”. The court also said the fact that delivery times and charges for UK consumers were likely to be lower on the UK website than on the US website was not a factor that retained “real strength”.

“If free or compelled to conduct our own analysis, we would conclude that Amazon did target the UK as a destination for the US branded goods by its display of them on its USA website, provided of course that each product thus displayed was marked as available for shipment to the UK,” the Supreme Court said. “That is, in our judgment, the view which an average consumer would clearly form as the result of their experience of the USA website, right through from the landing page to the moment of contract by clicking the “Place your order in GBP” button on the “Review your order” page. Nothing in the possible contra-indicators comes near to displacing that conclusion.”