AMAZON Decision of the UK Supreme Court: The Limits of the Principle of Territoriality of the Trademark
In today's world, Amazon operates as an e-commerce platform with a wide range of products, and offers sales and marketing services to almost anywhere in the world without geographical boundaries. However, this limitless operation also brings along certain problems, one of which is trademark infringement.
Recently, the UK Supreme Court has made a decision (Lifestyle Equities CV vs. Amazon UK Services Ltd) that will prevent trademark infringement in internet sales. The dispute in question concerns the marketing to consumers both in the UK and EU through Amazon USA of a trade mark registered in the USA which is identical and similar to another trade mark "BEVERLY HILLS POLO CLUB" registered in the UK and which covers the same or similar class of goods.
In order to determine whether goods marketed on a foreign website were targeted at consumers in the territory concerned (here, the United Kingdom), the Supreme Court considered whether a reasonably informed average consumer would consider that the website in question was directed at him. It concluded that an average consumer in the United Kingdom would consider that the Amazon US website was directed at him or her because of factors such as (i) the presence on the landing page and on almost all subsequent pages of the website of a message offering delivery to the United Kingdom; (ii) the indication of which of the goods displayed could be shipped to the United Kingdom; and (iii) the UK-specific delivery times for the relevant goods and the option to pay in Sterling, and rejected all of Amazon's appeals to the contrary.
It is possible to say that with this decision, the UK Supreme Court has tried to draw a safe way in terms of showing how the principle of territoriality can be reconstructed in internet sales where trade mark protection has become an illusion.
Author:
YAGMUR AKTAN
Trademark Counsel
yagmur.aktan@invokat.com