What does trade mark ‘targeting” mean?
The question of whether an advertisement or offer for sale “targets” consumers in a particular jurisdiction is critical in trade mark infringement cases involving foreign traders selling online. The Court of Appeal recently clarified the term, overturning a decision in a dispute over the sale of goods bearing the BEVERLY HILLS POLO CLUB mark (Lifestyle Equities CV & Anor v Amazon UK Services Ltd & Ors).
As we reported on this blog in 2021, Lifestyle, the owner of the relevant UK and EU trade marks, brought a case for trade mark infringement as it had never consented to the US goods being placed on the market in the UK or EU. The judge at first instance found there was no infringement as Amazon.com was targeting US consumers, and not those in the EU or UK.
Court of Appeal overturns
The Court of Appeal comprehensively reversed that finding. Writing a judgment with which the other two judges agreed, Lord Justice Arnold said that, looking at the ‘Review your order’ page on the amazon.com website, the offer for sale of goods was clearly targeted at the UK:
“The purchaser is located in the UK, the shipping address is in the UK, the billing address is in the UK, the currency of payment is GBP and Amazon will make all the necessary arrangements for the goods to be shipped to and imported into the UK and delivered to the consumer in the UK. I do not understand how it can seriously be argued that this offer for sale was not targeted at the UK, notwithstanding the valiant attempt of counsel for Amazon to do just that.”
Arnold LJ identified six errors that had led the first instance judge to the opposite conclusion. The Court of Appeal’s finding meant that all the advertisements and offers for sale amounted to use of the relevant signs in the UK and EU, and hence infringing uses.
Contrary to the first instance judge’s finding, the sales of US-branded goods to UK and EU consumers were also infringing (even if the adverts and offers for sale were not). Arnold LJ said this followed from the judgment in the CJEU Case C-98/13, Blomqvist v Rolex SA, which held that in the case of a sale to a person in the EU it is not necessary to consider whether there has been prior targeting of EU consumers.
The Court did not determine whether Amazon was jointly liable with its carriers for importation of the US branded goods into the EU/UK, as it was not necessary given its other findings.
In a subsequent judgment (Lifestyle Equities CV & Anor v Amazon UK Services Ltd & Ors (Consequential Issues)  EWCA Civ 634), the Court declined to grant two declarations sought by Lifestyle regarding infringement of its marks. However, it said an injunction to restrain infringement was appropriate and allowed an inquiry into damages. It refused permission to appeal to the Supreme Court.
A welcome clarification
The very clear reversal by the Court of Appeal is a welcome clarification of the position. Arnold LJ helpfully analysed the relevant EU and UK cases on “targeting” in his analysis, including this passage from a 2017 judgment by Deputy High Court Judge Daniel Alexander QC (who coincidentally represented the defendants in this case):
“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 …Quite what constitutes enough push of goods, services or advertising for them to the UK 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 based in the UK.” (emphasis added)