Lifestyle Equities CV and another v Amazon UK Services Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Lord Briggs,Lord Kitchin,Lord Hodge,Lord Hamblen,Lord Burrows |
| Judgment Date | 06 March 2024 |
| Neutral Citation | [2024] UKSC 8 |
| Year | 2024 |
| Court | Supreme Court |
Lord Hodge, Deputy President
Lord Briggs
Lord Hamblen
Lord Burrows
Lord Kitchin
Appellants
Daniel Alexander KC
Maxwell Keay
(Instructed by Hogan Lovells International LLP (London))
Respondents
Michael Edenborough KC
Thomas St Quintin
(Instructed by Brandsmiths (London))
Heard on 15 and 16 November 2023
Lord Briggs AND Lord Kitchin ( with whom Lord Hodge, Lord Hamblen and Lord Burrows agree):
This appeal concerns the application of EU and UK trade mark law to the cross-border marketing and sale of goods on the internet. An essential feature of trade mark law is that it provides only territorial protection to the proprietor of the mark, that is, against its unauthorised use in the course of trade in the territory or territories where the mark is registered. Thus, for example, there would be no infringement of the rights of the proprietor of a UK trade mark if goods bearing the mark were advertised and sold to a UK-resident buyer on a visit to a shop in New York, and then brought back to the UK in the buyer's personal luggage. The seller would not be using the mark in the UK, and the buyer would not be importing the goods in the course of trade.
But the marketing and sale of goods on the internet knows no such territorial boundaries. The website marketing the goods may be viewed by consumers anywhere in the world where there is an internet signal. These consumers need never leave their homes to view, choose and buy the goods online, and can obtain delivery to their own front doors, even if the website advertising the goods may be said to be located abroad, and the goods are manufactured abroad and only imported to the buying consumer's country of residence after the sale and purchase has taken place. Furthermore the seller and buying consumer on the internet are in principle free to choose and agree where the sale should take place, so that, for example, the sale may be completed at the overseas seller's warehouse and then imported by the consumer as owner, even if the consumer uses and pays for the services of the seller in having the goods shipped to the consumer's country of residence. As in the old-fashioned example given in the previous paragraph, the seller has apparently made no use of the trade mark in the consumer's country of residence, while the consumer has been the importer of the goods into the territory protected by the mark although never leaving home, and the importation by the consumer is not in the course of trade.
Led by the Court of Justice of the European Union (“the CJEU”), EU jurisprudence has sought to chart a safe course between the Scylla of watching trade mark protection become entirely illusory in the context of internet marketing and sale, and the Charybdis of creating an exorbitant and unprincipled extension into the international sphere of the territorial jurisdiction to protect trade marks. It has done so by reference to two separate concepts. The first is by treating the advertisement and offering for sale of branded goods in a way which is targeted at a protected territory as a use of the mark in the targeted territory. The second concept is by treating a sale of branded goods as a use of the mark within the territory if the sale is made “to” a consumer in that territory pursuant to a contract of sale made outside it. The ambit of both those concepts is in issue in the present proceedings.
The appellants are all members of the Amazon group of companies. We will for convenience describe them collectively as “Amazon”. Although centred in the USA, Amazon has in recent years acquired a formidable international reputation for the marketing and sale of consumer goods on the internet. It may fairly be said that a major feature of Amazon's attraction as a “place” at which to shop is that it enables consumers easily and quickly to shop for, choose and buy a wide range of goods for delivery to their front doors, on their computers or smart phones, without ever having to leave their homes. The coupling of purchase online with prompt home delivery is a key feature which has made Amazon sensationally successful in a market place which knows no territorial boundaries. Amazon operates a USA-based website called Amazon.com, together with websites in other territories such as Amazon.co.uk in the UK and Amazon.de in Germany. We will call the Amazon.com website “the USA website” and the Amazon.co.uk website “the UK website”.
The present proceedings concern alleged infringement of a group of trade marks (“the UK/EU Marks”) registered in the UK and the EU and owned and licensed respectively by the respondents, two companies in the Lifestyle Equities group, which we will for convenience call “Lifestyle”. The detail of the marks does not matter in relation to what we have to decide, but broadly they comprise either the words BEVERLY HILLS POLO CLUB or a logo consisting of those words coupled with a device of a horse and rider. They are registered in respect of various types of consumer goods including clothing. A relatively unusual but legally irrelevant feature of this case is that there exist corresponding trade marks registered in the USA which are owned by a commercially unrelated party, and used in the USA in connection with identical goods (“the US branded goods”). Lifestyle has never consented to the marketing of the US branded goods in the UK or the EU. It is common ground that such marketing or sale of the US branded goods in the UK or the EU would be an infringement of Lifestyle's rights in the UK/EU Marks, although of course they can be, and are, marketed and sold perfectly lawfully in the USA.
The present dispute has arisen because Amazon has marketed and sold the US branded goods on its USA website, and Lifestyle contends (but Amazon denies) that those goods were both targeted at, and sold to, consumers in the UK and the EU. Some US branded goods were also marketed and sold on Amazon's UK website and it became common ground during the proceedings that this gave rise to infringements of Lifestyle's UK/EU Marks. Thus, the dispute which has persisted, as far as this court is concerned, is confined to Amazon's use of its USA website.
It is also important to note that this dispute relates entirely to events that occurred before the UK left the EU, and these proceedings began before 31 December 2020, the end of the implementation period (“IP Completion Day”) provided for by section 1 of the European Union (Withdrawal Agreement) Act 2020. Thus, UK trade mark law was at that time substantially governed by EU legislation and jurisprudence. Further, the parties were agreed before the Court of Appeal that the issues arising on the appeal concerning the EU Marks might be decided by reference to Parliament and Council Regulation 2017/1001 of 14 June 2017 on the European Union trade mark (“the EUTM Regulation”). It was also common ground that these issues were unaffected by Brexit. The only relevance of Brexit was that, although there was (just about) time for the trial judge to have referred any question of EU law to the CJEU, he sensibly exercised his discretion not to do so, and time for a reference had long passed when these proceedings reached the Court of Appeal. That by no means renders this appeal of merely historical interest or importance. UK trade mark law remains rooted in EU legal principles and the issues about the applicability of that law to internet marketing remain of prime and probably ever-increasing importance.
All parties agree that we are concerned in this appeal with allegations that Amazon has used signs which are identical to Lifestyle's UK and EU registered trade marks—the UK/EU Marks—in relation to goods which are identical to at least some of the goods for which those marks are registered.
The rights conferred by an EU trade mark are set out in article 9 of the EUTM Regulation which provides, so far as relevant:
“Rights conferred by an EU trade mark
1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.
2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered; …
3. The following, in particular, may be prohibited under paragraph 2: …
(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; …
(e) using the sign on business papers and in advertising; …”
Section 10(1) and sections 10(4)(b) and (d) of the Trade Marks Act 1994 (“the 1994 Act”) apply to the claim for infringement of the UK trade marks, and are in materially the same terms as those of article 9 of the EUTM Regulation.
There were also allegations of infringement under articles 9(2)(b) and (c) of the EUTM Regulation and sections 10(2) and (3) of the 1994 Act, and of passing off. These deal with a broader range of circumstances, including the use of signs which are similar to the registered marks in relation to goods or services which are identical or similar to those for which the marks are registered, provided certain other conditions are also satisfied. They were, however, accepted by Lifestyle at trial to add nothing to the claims under article 9(2)(a) of the EUTM Regulation and section 10(1) of the 1994 Act. It is therefore not...
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