‘A lot of companies might have been afraid to sue Amazon’: Q&A with Andy Lee, Brandsmiths
The UK Supreme Court’s Lifestyle v Amazon saw a small brand take on a global online marketplace—and win. Andy Lee explained to Marisa Woutersen how his IP team secured the result.
Last week the issue of ‘targeting’ was addressed for the first time by the UK Supreme Court.
The court unanimously dismissed Amazon's appeal in its case against Lifestyle Equities, concerning the cross-border marketing and sale of goods on the internet.
The decision is the “highest level as to what the principal should be,” said Andy Lee, partner, head of IP at Brandsmiths, which represented Lifestyle.
Amazon was accused of having sold identical products on its US website of Lifestyle UK trademarked ‘Beverly Hills Polo Club’ brand.
The court ruled that Amazon had targeted UK consumers by featuring these US-branded products on its US website and offering them for shipment to the UK, finding the online retailer to have infringed upon the UK/EU trademarks, on March 6, 2024.
Lee described the ruling as “a good decision for brand owners, as it allows them to protect their trademarks more extensively.”
However, it is not good for big online businesses, which trade in more than just the territory in which they're established.
“They may have to have more stringent procedures and be more careful about how they present their websites,” added Lee.
WIPR spoke with Lee to delve deeper into the arguments that won the day.
WIPR: What were the key considerations in forming your strategy, especially with the involvement of a large retailer such as Amazon?
Andy Lee: In terms of strategy, firstly, it wasn't a lookalike case, where you're concerned about a similar looking brand on the market which isn't yours. It was a about an identical mark.
Then there was the issue of it being Amazon, one of the biggest companies in the world, and a lot of companies might have been afraid to sue Amazon and follow through with it.
The client is very protective of its brand and it is not adverse or unfamiliar with litigation, so they felt they needed to see this case through.
The strategy was really following what you would do in all cases: you write to Amazon, if you didn't get a satisfactory use policy and sue them.
The issue about to what extent the Amazon goods were visible in the UK, or could be accessed in theory by someone from the UK wasn't enough—we needed to build the case around why the goods would be seen as being offered for sale and that there was a use of the trademarks in the UK.
The fact that the case went to the Supreme Court means that it did have a lot of complexity.
I think the key there is to keep focused and calm and keep the belief and if the client believes in you, and you believe in the strategy, then it's much easier.
What contributed to the success of the strategy?
I think the facts were really strong and really favourable to us. You land on the website, and it detects you're from the UK, and then moulds itself to a UK consumer with prices in pounds and UK delivery.
I think also the fact that as a matter of law, it would have been unattractive for the Supreme Court to say we're going to make trademark rights purely territorial.
So unless it's actually taking place within the borders of the UK, you can't invoke the trademark rights because that would really diminish the value of trademark rights, particularly as we live in a world dominated by borderless trading because things are increasingly online.
If the Supreme Court had decided there should be a much more restricted concept here, it would damage the value of a trademark owner’s rights that they could monetise and enforce.
From a policy perspective, we had the better arguments.
While we were aware that the counter view is the trademark shouldn't have extra-territorial protection, and so UK trademarks shouldn't be trapping activities outside of the territory, there has to be a balance for when traders are objectively seen as trying to solicit business.
From a factual perspective, it was clear to me that if you're going to have an example of a website that's trying to solicit customers from the UK, Amazon was it.
Why did the Supreme Court not address the Blomqvist v Rolex decision, concerning a counterfeit watch?
It was accepted that Amazon did sell goods from the US to customers in the UK and EU, but Amazon said those goods weren't subject to prior targeting.
Amazon's position was there wasn't targeting. The fact that a consumer had made their way through the website and paid and had their goods delivered, to someone in the UK or the EU was not trademark infringement.
We argued it was, based on Blomqvist v Rolex.
The whole concept of invoking the territoriality of a UK trademark is that there’s been use in the UK.
The way Amazon said targeting was used, was that an average consumer in the UK would see the website was for them but they would not be targeted if there's no offer of an advertisement.
We argued that it is use in the UK, because it's a sale of goods that arrive in the UK and Blomqvist v Rolex supported that.
[But] the Supreme Court effectively dodged the Blomqvist point.
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