UK Supreme Court Holds that Amazon’s USA Website Targeted UK Consumers

Introduction

Beverly Hills Polo Club branded goods are sold in the USA and the UK. Trade marks in the USA are owned by X. Corresponding trade marks in the UK are owned by Y. Trade mark law is territorial. Does Amazon infringe UK trade mark law by advertising the USA branded goods on its USA website (amazon.com) and making them available for shipment to the UK if transactions are structured in such a way that the sale takes place in the USA, the title to the goods and the risk of loss passes in the USA, the UK purchaser imports the goods in a personal capacity as owner and the goods are transported by an Amazon-chosen carrier?

This is the question that the UK Supreme Court addressed in Lifestyle Equities CV v Amazon UK Services Ltd [2024] UKSC 8. A key feature of the case is that it was brought before the Brexit transition period, so the question fell to be decided by reference to Parliament and Council Regulation 2017/1001 of 14 June 2017 on the European Union trade mark.

Judgment

On 6 March 2024, the court unanimously (Lord Briggs and Lord Kitchin, with whom Lord Hodge, Lord Hamblen and Lord Burrows agreed) held that Amazon targeted the marketing and sale of USA branded goods on its USA website at consumers in the UK and, therefore, infringed the claimant’s UK trade mark.

The concept of targeting of a commercial activity carried on through a website is, of course, a well-known feature of EU private international law, appearing, for instance, in Article 17(1)(c) of the Brussels I bis Regulation and Article 6(1)(b) of the Rome I Regulation. The CJEU clarified the concept in judgments concerning the Brussels I Regulation (Joined Cases C-585/08 and C-144/09 Pammer v Reederei Karl Schlüter GmbH & Co KG; Hotel Alpenhof GesmbH v Heller) and EU trade mark (Case C-324/09 L’Oréal SA v eBay International AG), copyright (Case C-5/11 Criminal proceedings against Donner) and database protection (Case C-173/11 Football Dataco Ltd v Sportradar GmbH) law.

The Supreme Court specifically elaborated on four points of law:

(1) The appropriate perspective: The question whether an advertisement or offer for sale is targeted at consumers in the UK is to be considered from the perspective of the average consumer. The average consumer is reasonably well informed and reasonably observant but does not call for the application of a statistical test; nor does this person represent a statistical average.

(2) The question to be answered: The question is, in substance, whether the average consumer would consider the website to be directed at him or her. The court must evaluate all the relevant circumstances, including the appearance of the website, how it responds to the presence of the consumer, whether it is possible actually to buy goods and have them delivered, and how that is done. The court should conduct a journey through the website in question from landing to a decision to buy, before answering the question.

(3) The role of subjective intention: The task of the court is to decide whether the foreign trader’s activities, viewed objectively, from the perspective of the average consumer, are targeted at such consumers in the UK. The establishment of a subjective intention can ease the path to a finding of objective targeting.

(4) No single meaning: It is enough that a significant proportion of the relevant consumers (that is, those who are reasonably well informed and circumspect) would consider the website to be directed and targeted at them.

The court indicated that the following features of Amazon’s USA website in particular indicated the targeting of consumers in the UK:

– the landing page showed the message: “Deliver to United Kingdom”. Clicking on or hovering over that revealed a pop-up box saying “We ship internationally. We’re showing you items that ship to United Kingdom.”

– the landing page contained a slideshow. One of its slides was a coloured section showing an aeroplane, a map of the world and a message saying “Welcome to Amazon.com. We ship over 45 million products around the world”. Another slide contained the message “Click here to shop in your local currency” and displaying the sign for sterling.

– a UK consumer who had not changed his or her delivery address would see the “Deliver to United Kingdom” message and would be told under each displayed product whether it was available for delivery in the UK, by the presence or absence of the message “Ships to United Kingdom”.

– the virtual cart, once filled with a product, would continue to display “Deliver to United Kingdom”.

– the Amazon software would fill in the “Review your order” page by adding, among other things, UK shipping address and billing address, UK specific delivery times and prices and the option to pay in sterling.

Comment

The judgment is important because it facilitates the enforcement of trade marks by brand owners and licensees. Although the case did not concern counterfeit goods, surely the outcome would be the same if such goods are marketed and sold on an online marketplace that targets UK consumers

More generally, the judgment is important because it clarifies aspects of the concept of targeting, which is used in several areas of EU private international law and to delineate the territorial scope of EU law. After Brexit, the concept is used in assimilated EU law. But it is also of relevance in other areas of UK law. This is shown, for example, in the Call for Evidence of the Law Commission of England and Wales on Digital Assets and Electronic Trade Documents in Private International Law, which discusses the concept of targeting (that is, “directing” activities) in the context of not only the assimilated Article 6(1)(b) of the Rome I Regulation but also section 15B of the Civil Jurisdiction and Judgments Act 1982, which sets out protective rules of jurisdiction over consumer disputes.