(UKSC 2022/0108) - [2024] UKSC 8
The Lifestyle entities are the owner and exclusive licencee of a number of UK and EU trade marks relating to the "BEVERLY HILLS POLO CLUB". The equivalent trade marks in the US are owned by another commercially unrelated entity, which produces goods identical to those for which Lifestyle's trade marks are registered in the UK/EU.
Lifestyle claim that the Amazon entities have infringed their trade marks by advertising, offering for sale and ultimately selling the US manufactured goods to UK/EU customers on www.amazon.co.uk, www.amazon.de and www.amazon.com (as viewable in the UK/EU).
Amazon admitted that the listings on www.amazon.co.uk and www.amazon.de were an infringement of Lifestyle's trade marks. However, they denied that the listing on www.amazon.com was an infringement as it was not targeted at UK/EU consumers and so not to be treated as use of the trade marks in the UK/EU. Amazon also denied that sale (through any of the websites) was an infringement of Lifestyle's trade marks in the UK/EU as the sales took place in the USA.
The High Court dismissed Lifestyle's claims (except to the extent they were admitted by Amazon). The Court of Appeal overturned this decision and granted an injunction against Amazon. It did so on the basis that the High Court judge (i) was wrong in concluding that the listings on www.amazon.com were not targeted at UK/EU consumers; and (ii) misinterpreted EU case law which meant that the sales to customers in the UK/EU were themselves use of the trade marks in the UK/EU. Therefore, both the listing and the sales infringed Lifestyle's UK/EU trade marks.
Amazon now seeks permission to appeal to the UK Supreme Court, on the basis that the Court of Appeal: (i) should not have overturned the High Court's analysis of whether the listings were targeted at UK/EU consumers; and (ii) misinterpreted the EU case law regarding whether sales on foreign websites could constitute infringement of the trade marks in the UK/EU.
The issue is:
When does the sale or advertising of trade-marked goods on a foreign website infringe the relevant trade marks in the UK or EU?
More information is available on our website:
