The website owner: a pusher, a puller or a pulled-pusher? Quarter 2 2022

By HANS MUHLBERG, Published in Intellectual Property

The Issue

For almost as long as we've had the internet, we've been arguing about the trade mark implications of having a website. The issue flows from the fact that a website can be accessed anywhere in the world. But does it follow that a company with a website is automatically using its trade mark throughout the world – thereby potentially infringing trade mark registrations in other countries? There've been a quite a few judgments on this issue over the years. But let's concentrate on the recent case of...

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Lifestyle Equities CV and another v Amazon UK Services Limited and others 2002 EWCA Civ 552, 4 May 2022

It's a judgment of the UK Court of Appeal, and it was handed down on 4 May 2022. The judgment was given by Lord Justice Arnold and it is, I think, an important one.

The facts

Lifestyle Equities is the owner or licensee of various UK registrations for trade marks comprising the words Beverley Hills Polo Club together with a logo (the trade mark) – the registrations cover a range of goods including clothing. The defendants are all Amazon companies. Lifestyle Equities claimed that Amazon had infringed their UK trade mark registrations by selling or offering for sale in the UK goods bearing the trade mark, goods that been branded in the USA.

The issue

Had Amazon used the trade mark in the UK? Judge Arnold made the point that, although 'the internet is global…intellectual property rights…are territorial.' Case law says that mere access to a website is not enough in order for there to be use of a trade mark in a particular country there must be actual targeting. So the issue was this had the ads been targeted at the UK?

Case law on targeting

There's quite a bit of it in the UK and the EU. The cases tells us that we need to consider a number of things, for example:
Is there an intention to solicit custom? Clear expressions of an intention to solicit custom in the UK might include a 'list or map of the geographical areas to which the trader is willing to dispatch its products' (Merck KGA v Merck Sharp 7 Dohme Corp (2017) EWCA Civ 1834). You might also need to consider the international nature of the activity, the language and currency used, telephone numbers with an international code, and the use of top-level domain names (C-144/09 Pammer v Reederei Karl Schluter GmbH & Co (2010) ECR I -12527).

Mere access doesn't cut it. A UK court has said that 'those who are doing business exclusively outside the UK should not have their dealings subjected to the trade mark law of the UK…the fact that a website is accessible from anywhere in the world, and therefore may attract occasional interest from consumers there when this is not intended, should not give rise to any form of liability.' (Argos Ltd v Argos Systems Inc (2018) EWCA Civ 2211)

Is there pushing, pulling or something in between? Some refreshingly quotidian language from an earlier judgment: 'Put colloquially, a proprietor should be treated as having used a mark in the UK if it has itself ''pushed'' its business and mark into the UK, not if it has been ''pulled'' into the UK by (for example) its customers abroad, even though they may be based in the UK…. It is not always easy to determine, especially in cases where a proprietor may be, in effect, a ''pulled-pusher'' in that, without having taken any active steps to develop the market in the UK, it none the less takes business from consumers in the UK.' (Abanka DD v Abanca Corporacion Bancaria SA [2017] EWHC 2428 (Ch) (06 October 2017)

Back to the case at hand

The Court of Appeal was critical of the judge in the first court, who had said that the case was 'really very simple: amazon.com is only targeted at US consumers.' Not quite so simple said Judge Arnold:

  • The purchaser was located in the UK.
  • The shipping address was in the UK.
  • The currency was GBP.
  • Amazon made all the arrangements for shipping, importation and delivery.

A judicial variation of the old If it looks like a duck... thing.

Concluding

Judge Arnold said that it was 'plain that the offer for sale … was targeted at UK consumers.'Therefore, the sales of the US-branded goods constituted use of the trade mark in the UK.

Muhlberg, is a SA, UK and EU qualified IP lawyer. He presently finds himself in the UK, offering consulting and content writing services to various law firms: muhlbergip@gmail.com.