Good News for Online Sellers - Amazon liable for trade mark infringement

In a decision that could have far reaching consequences for online commerce and businesses that sell on Amazon, the Court of Appeal in London has overturned an earlier decision of the High Court that Amazon had not infringed the trade marks for ‘Beverly Hills Polo Club’.

In the original action, Lifestyle Equities, the owner of the Beverly Hills Polo Club trade marks had brought an action against Amazon for trade mark infringement. Lifestyle owned the UK version of these trade marks and there were also US versions which were owned by an unrelated company. The action against Amazon was pursued on the basis that through its American website it was advertising, offering for sale and selling goods from the American company in the UK and the EU and so were jointly liable for the importation of those goods, which infringed the UK and EU trade marks of Lifestyle.

Lifestyle was largely unsuccessful in the High Court on the basis that Amazon’s American website was not aimed at customers in the UK or the EU and that if those customers landed on the American website they were redirected to the version for their country. The High Court held that this meant Amazon was not targeting those customers even though they remained able to complete transactions on the American website and so there was no infringement.

That decision has now been overturned by the Court of Appeal who decided that certain advertisements and offers for sale on the Amazon American website did constitute use of the Beverly Hills trade marks in the UK. The Court also decided that sales from the Amazon American website to customers in the UK constituted use by Amazon of the Beverly Hills trade marks.

This decision has potentially far reaching consequences and it will be interesting to see how Amazon reacts and if it brings in new restrictions to its services and where they can be accessed in light of the ruling. It is also a useful ruling for business owners as it provides a very useful avenue for stopping the importation of infringing goods without having to pursue a foreign company in a different jurisdiction.

If you have any issues around Amazon or dealing with online commerce in general please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or by email to legal@mcdanielslaw.com