Targeting territorial trade marks in an online territory

Understanding Website ‘Targeting’ in Online Sales

‘Targeting’ occurs when a website hosted in one jurisdiction seeks to sell in another.

The Supreme Court (UKSC) in London recently considered whether selling a USA-made and trademarked product online from the USA has the potential to infringe trade marks elsewhere in the world.

Background

The Trademark Dispute

The respondents own several UK and EU trade marks for the Beverly Hills Polo Club brand. A different, unrelated company owns the USA trade mark. The appellants, various Amazon companies, sold USA-trademarked items on their USA sites. The respondents claimed this infringed their UK/EU trade marks.

From High Court to Supreme Court

The High Court held that listing USA-trademarked items on USA sites did not target UK/EU consumers. The Court of Appeal, however, granted an injunction and allowed the respondents to pursue damages. The appellants appealed to the Supreme Court.

Judgment

Key Takeaways from the Supreme Court Decision

Upholding the decision of the Court of Appeal, the UKSC noted that “Deliver to the United Kingdom” on the USA website “greatly outweighed” the option to switch to the UK website on checkout.

“The requirement to consider all relevant facts and circumstances, but predominantly from the perspective of the average consumer, calls for a close, contextual examination of the way in which Amazon’s USA website presents itself when accessed by a consumer situated in the EU, including the UK as a (then) member state within the EU.

…targeting is based not simply upon this page but upon the combined effect of all those aspects of the USA website that show how it is specifically designed to offer goods to a UK consumer, once its antennae pick up the fact that an incoming consumer enquiry is coming from a consumer with an IP address in the UK.”

Advice for Online Sellers

What You Should Review

If you sell products online, think about:

• the customer journey on your e-commerce website
• whether your content depends on their internet protocol (IP) address
• the impact on any intellectual property rights

Get Expert Legal Advice

For more information about this article or any other aspect of commercial law, contact your Napthens Solicitors in Preston, Blackburn, Southport, and across the North West today.