Lifestyle Equities CV & Anor v Amazon UK Services Ld & Ors [2021] EWHC 118 (Ch)

“[55] Although it is clear from those factors that the referencing service provider operates ‘in the course of trade’ when it permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis thereof, it does not follow, however, from those factors that that service provider itself ‘uses’ those signs within the terms of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94. [56] In that regard, suffice it to note that the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.”

“[99] …it is first necessary to point out that, where sales are made through online marketplaces, the service provided by the operator of the marketplace includes the display, for its customer-sellers, of offers for sale originating from the latter. [100] Next, when such offers relate to trade-marked goods, signs identical with or similar to trade marks will inevitably be displayed on the website of the operator of the online marketplace. [101] Although it is true that, in those circumstances, those signs are ‘used’ on that site, it is none the less not evident that it is the operator of the online marketplace that is ‘using’ them, within the meaning of Directive 89/104 and Regulation No 40/94. [102] If a sign identical with, or similar to, the proprietor’s trade mark is to be ‘used’, within the meaning of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94, by a third party, that implies, at the very least, that that third party uses the sign in its own commercial communication. In so far as that third party provides a service consisting in enabling its customers to display on its website, in the course of their commercial activities such as their offers for sale, signs corresponding to trade marks, it does not itself use those signs within the meaning of that EU legislation (see, to that effect, Google France [2010] ETMR 30 at [56] and [57]). [103] As was stated, inter alia by the United Kingdom Government and the Commission at the hearing and by the Advocate General at points 119 and 120 of his Opinion, it follows that the use of signs identical with or similar to trade marks in offers for sale displayed on an online marketplace is made by the sellers who are customers of the operator of that marketplace and not by that operator itself.”

“Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?”

“[40] Thus, the court has held, as regards the operation of an e-commerce platform, that the use of signs identical or similar to trade marks in offers for sale displayed in an online marketplace is made by the sellers who are customers of the operator of that marketplace and not by that operator itself…”

“[48] That conclusion is, however, without prejudice to the possibility of considering that those parties themselves use the sign in connection with bottles of perfume which they stock not on behalf of third-party sellers but on their own behalf or which, if they were unable to identify the third-party seller, would be offered or put on the market by those parties themselves.”

“[58] If, in the present case, it were confirmed that the Amazon undertakings provided those services (or at least the most important ones) under the ‘Fulfilment by Amazon’ program, they might be regarded, whether in their capacity as electronic marketplace operator or warehouse keeper, as performing functions in the marketing of the product that go beyond merely creating the technical conditions necessary to enable the sign to be used. Consequently, if that product infringes the trade mark proprietor’s rights, the proprietor’s reaction might legitimately be to prohibit those undertakings from using the sign. [59] The major role played by the Amazon undertakings in the marketing process cannot be diluted by taking separate account of the activity performed by each of them individually. It would be contrary to economic reality and the principle of equality for storage, order management and the other services provided by those undertakings to be treated in the same way as the services supplied by a mere independent carrier or warehouse keeper under a business model disconnected from any operation in the distribution chain.”

“…use such signs in its own commercial communications if: 63.1 the activities of the online marketplace provider led to the creation of a link in the mind of the average consumer between the commercial activities of the online marketplace, and the goods in respect of which the sign is used;” (underlining added).”

“[22] First, it must be observed that the question whether the conditions laid down in Article 5(1) of Directive 2008/95 are satisfied must be determined solely on the basis of objective factors. [23] In that regard, the expression ‘use in the course of trade’, to be found in that provision, entails that the exclusive rights conferred by a trade mark may, as a rule, be relied on by the proprietor of that trade mark only as against economic operators and, consequently, only in the context of a trading business (see, to that effect, judgment of 12 July 2011, L’Oréal SA v eBay International AG (C-324/09), EU:C:2011:474 at [54]). Further, if the transactions carried out, by reason of their volume, their frequency or other characteristics, go beyond the scope of a private activity, whoever carries out those transactions will be acting in the course of trade (judgment of 12 July 2011, L’Oréal SA v eBay International AG (C-324/09) EU:C:2011:474 at [55]). [24] In this case, it is clear from the information available to the court that the goods at issue in the main proceedings are ball bearings weighing, in total, 710kg, generally used in heavy industry. [25] Accordingly, since those goods, having regard to their nature and their volume, are manifestly not intended for private use, the relevant transactions must be considered to fall within the scope of a trading business, though that is a matter to be determined by the referring court.”

“Targeting is not an independent doctrine of trade mark law. It is, in essence, a jurisdictional requirement. Because trade marks are territorial in effect, those who are doing business exclusively outside the United Kingdom should not have their dealings subjected to the trade mark law of the United Kingdom. Failure to recognise this principle is a failure to give effect to the territoriality of the underlying rights. Moreover the fact that a website is accessible from anywhere in the world, and therefore may attract occasional interest from consumers there when this is not intended, should not give rise to any form of liability.”

“[93] The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader’s activity is directed to the Member State of the consumer’s domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists. [94] On the other hand, the mere accessibility of the trader's or the intermediary's website in the Member State in which the consumer is domiciled is insufficient. The same is true of mention of an email address and of other contact details, or of use of a language or a currency which are the language and/or currency generally used in the Member State in which the trader is established.”

“[51] These passages make it clear that evidence of subjective intention is a relevant, and possibly (where the objective position is unclear or finely balanced) a determinative consideration in deciding whether the trader’s activities, viewed objectively from the perspective of the average consumer, are targeted at the UK. Subjective intention cannot, however, make a website or page (or part of a page) which is plainly, when objectively considered, not intended for the UK, into a page which is so intended. [52] It is important to note that the summary of principles in Merck [2018] E.T.M.R. 10 relates to the example of an advertisement for goods, where the role of the average consumer will be to determine whether the advertisement is targeted at him or her. In each case it will be necessary to look at the acts which are asserted to be use of the trade mark, and to focus on whether those acts are targeted at the United Kingdom. The scope of the enquiry will vary from case to case, as will the factors which are relevant to its determination. To that extent, I am prepared to accept that the role of the average consumer on the issue of targeting may differ from case to case.”

“customs action against goods suspected of infringing certain intellectual property rights and for measures to be taken against goods found to have infringed such rights.”

“Such an infringement can, therefore be relied on to justify action by the customs authorities under that regulation only if the sale of the goods concerned is liable to affect the rights conferred under the conditions laid down by the copyright directive, the trade mark directive and the Community trade mark regulation.”

“In those circumstances the questions referred must be understood as meaning that the referring court seeks to know whether it follows from the customs regulation that, in order for the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country to enjoy the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State, that sale must be considered, in that Member State, as a form of distribution to the public or as constituting use in the course of trade. The referring court also raises the question whether, prior to the sale, the goods must have been the subject of an offer for sale or advertising targeting consumers in the same State.”

“[57] On the other hand, those rights may be infringed where, during their placement under a suspensive procedure in the customs territory of the European Union, or even before their arrival in that territory, goods coming from non-member States are the subject of a commercial act directed at European Union consumers, such as a sale, offer for sale or advertising (see Class International, paragraph 61, and Case C-324/09 L’Oréal and Others [2011] ECR I-0000, paragraph 67). [58] Having regard to the risk, previously pointed out by the Court in Case C-383/98 Polo/Lauren [2000] ECR I-2519, paragraph 34, of fraudulent diversion to European Union consumers of goods warehoused in the customs territory of the European Union or transiting that territory, it must be stated that, in addition to the existence of a commercial act already directed to those consumers, other circumstances can also lead to temporary detention by the customs authorities of the Member States of imitations or copies which are declared under a suspensive procedure. [59] As the French, Italian and Polish Governments have pointed out, the placing of goods from a non-member State under a suspensive procedure is often requested in circumstances where the destination of the goods is either unknown or declared in a manner which is unreliable. Having regard, in addition, to the secretive nature of the activities of traffickers of goods which are imitations or copies, the detention by customs authorities of goods which they have identified as being imitations or copies cannot, without reducing the effectiveness of Regulations No 3295/94 and No 1383/2003, be made subject to a requirement for proof that those goods have already been sold, offered for sale or advertised to European Union consumers. [60] On the contrary, a customs authority which has established the presence in warehousing or in transit of goods which are an imitation or a copy of a product protected in the European Union by an intellectual property right can legitimately act when there are indications before it that one or more of the operators involved in the manufacture, consignment or distribution of the goods, while not having yet begun to direct the goods towards European Union consumers, are about to do so or are disguising their commercial intentions.”

“those goods may, on the other hand, infringe the right in question and therefore be classified as ‘counterfeit goods’ or ‘pirated goods’ where it is proven that they are intended to be put on sale in the European Union, such proof being provided, inter alia, where it turns out that the goods have been sold to a customer in the European Union or offered for sale or advertised to consumers in the European Union, or where it is apparent from documents or correspondence concerning the goods that their diversion to European Union consumers is envisaged”

“[32] However, the Court has held that the rights thus protected may be infringed where, even before their arrival in the territory covered by that protection, goods coming from non-Member States are the subject of a commercial act directed at consumers in that territory, such as a sale, offer for sale or advertising (see to that effect, Philips [57] and the case law cited). [33] Thus, goods coming from a non-Member State which are imitations of goods protected in the European Union by a trade mark right or copies of goods protected in the European Union by copyright, a related right or a design can be classified as “counterfeit goods” or “pirated goods” where it is proven that they are intended to be put on sale in the European Union, such proof being provided, inter alia, where it turns out that the goods have been sold to a customer in the European Union or offered for sale or advertised to consumers in the European Union (see, to that effect, Philips at [78]). [34] It is common ground that, in the case in the main proceedings, the goods at issue were the subject of a sale to a customer in the European Union, such a situation not being therefore in any event comparable to that of goods on offer in an “online marketplace”, nor that of goods brought into the customs territory of the European Union under a suspensive procedure. Consequently, the mere fact that the sale was made from an online sales website in a non-member country cannot have the effect of depriving the holder of an intellectual property right over the goods which were the subject of the sale of the protection afforded by the customs regulation, without it being necessary to verify whether such goods were, in addition, prior to that sale, the subject of an offer for sale or advertising targeting European Union consumers. [35] In the light of the foregoing, the answer to the questions referred is that the customs regulation must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.”

“Where goods bearing a sign are sold from a website situated outside the territory of the EU but are delivered to a customer within a Member State, the sign is used within the Member State even if the goods have not been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that state (see Blomqvist v Rolex SA). Although such use has been held to constitute infringement, where there has been no offer for sale or advertising targeting consumers within the jurisdiction, the scope of injunctive relief is presumably limited to an order preventing the fulfilment of orders from customers within the jurisdiction.”

“whether the sale of the product took place in the UK/EU and/or whether the product was put on the market in the UK/EU”

“ … three conditions must be satisfied. First, the defendant must have assisted the commission of an act by the primary tortfeasor; secondly, the assistance must have been pursuant to a common design on the part of the defendant and the primary tortfeasor that the act be committed; and, thirdly, the act must constitute a tort as against the claimant.”

“My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement. In the present case there was no common design. Amstrad sold a machine and the purchaser or operator of the machine decided the purpose for which the machine should from time to time be used. The machine was capable of being used for lawful or unlawful purposes. All recording machines and many other machines are capable of being used for unlawful purposes but manufacturers and retailers are not joint infringers if purchasers choose to break the law. Since Amstrad did not make or authorise other persons to make a record embodying a recording in which copyright subsisted, Amstrad did not entrench upon the exclusive rights granted by the Act of 1956 to copyright owners and Amstrad were not in breach of the duties imposed by the Act.”

“whether the listing of the product is targeted at the UK/EU and whether the listing is an offer for sale or advertisement in the UK/EU.”

“[65] It therefore falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory.”

“Again you seem to keep going back to the issue of number of transactions which is not what has damaged my brand. What has damaged my brand is the visibility of this ridiculously discounted goods that every one of my institutional customers, okay, we are – or we were at one point a licensing company, okay? And any time any potential institutional buyer, whether it be a large retail buyer such as – I don’t want to say Debenhams, they are out of business. They were one of our main customers at one point. Or – it’s hard to mention UK customers, they have all disappeared. But a major licensee wants to check on the brand, the first thing they do is check the internet and see how clean we are because that is what their customers do. If you look at any of the studies on how consumers search for brands or how they get a profiler or feeling of what to buy in a brand they first go online.”

“You agree you will be the final consumer of the product or that you will be giving the product to another individual as a gift, and in any case that the product is being purchased for personal use only and not for resale or for any commercial use.”

“Ordering from the U.S.; Applicable Law and Venue When purchasing Amazon Global Store Products, you acknowledge that (1) you are ordering from Amazon US, equivalent to making a purchase from the Amazon.com website, (2) these products have not yet been imported into the UK at the time of purchase, and (3) that the sale takes place in the U.S.; therefore, subject to the laws and regulations of the U.S. ... Responsibility for Importation When ordering Amazon Global Store Products on Amazon.co.uk, you are responsible for lawfully importing the product into the UK and act as the declarant for customs purposes into the UK. The risk of loss and title for Amazon Global Store Products that you purchase pass to you upon our delivery to the carrier. You may be subject to taxes and fees levied by UK customs and tax authorities ("Import Tax and Fees"), which are triggered when a shipment is imported into the UK. Please see below for more details regarding Import Tax and Fees. You agree that you will be the final consumer of the product or that you will be giving the product to another individual as a gift, and in any case that the product is being purchased for personal use only and not for resale or for any commercial use.”

“Welcome to Amazon.com. Amazon Services LLC and/or its affiliates (“Amazon”) provide website features and other products and services to you when you visit or shop at Amazon.com, use Amazon products or services, use Amazon applications for mobile, or use software provided by Amazon in connection with any of the foregoing (collectively “Amazon Services”).”

“the conductor of the orchestra”; “the queen bee that controls the work of all the drones in the hive”; the “chief company”