9 May 2022TrademarksAlex Baldwin

Appeals court reverses Amazon TM ruling

The England and Wales Court of Appeals has overturned a lower court decision that Amazon did not infringe trademarks for the words “Beverly Hills Polo Club”.

Lifestyle, the rightsholders of the UK and EU trademarks, claimed that Amazon had infringed its marks related to the phrase by selling US branded clothing to UK consumers featuring infringing logos comprising the text together with a “device of a horse and rider”.

Prior to trial, Amazon made a “limited admission” of past infringement related to “one of their business models” but broadly denied infringement.

Initially, the High Court ruled that Amazon did not infringe the trademarks in a decision handed down in January 2021.

In that ruling, Justice Michael Green said that Lifestyle’s decision to focus on the listing of the US-branded infringing goods on was “overly broad” as the website is “targeted at the world”, rather than specifically the UK or EU.

Green said: "Really very simple: is only targeted at US consumers and … the UK and each EU country (and presumably many other countries as well) have their own targeted website."

As a result, he dismissed the trademark challenge from Lifestyle, ruling that there was “no targeting and therefore no infringement by virtue of the listings”. Lifestyle appealed the decision.

In a decision handed down on May 4, the court of appeal reversed the decision, finding Amazon liable for infringement by listing the goods on its .com domain.

Commenting on Green’s decision, the court of appeal said: “It seems to me that, first, he was diverted by the arguments as to the targeting of the website as a whole.”

Green accepted the argument that, because was directed at US consumers, the relevant web pages were not targeted at UK/EU consumers.

The appellate court countered: “The question is not whether as a whole is targeted at the UK/EU, but whether the relevant uses of the sign are… the fact that the generality of a website is not targeted at the UK/EU does not exclude the possibility that specific uses of the sign on that website are.”

The appeal decision also noted that the product pages for the infringing clothing states in “two different places” that the seller “delivers” and “ships” to the UK.

The appeals court said: “It is plainly telling the UK consumer that they can buy this item and Amazon will arrange for it to be shipped to them in the UK. Moreover, it is clear that from the fact that sales were in fact made to UK consumers that that is precisely how they perceived it.”

“It follows that all of the advertisements and offers for sale in issue amounted to use of the relevant signs in the UK and the EU, and hence infringing uses.”

The appellate court also ruled that the sale of the US-branded goods to UK and EU customers constituted “use of the signs in the relevant territory” and therefore the usage of the mark infringed.

The court unanimously agreed that Amazon was liable for infringement and appealed the lower court’s decision.

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