Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8

Lifestyle Equities, owner of UK and EU trade marks for BEVERLY HILLS POLO CLUB, sued Amazon for trade mark infringement through marketing and selling goods bearing identical marks on Amazon's USA website to UK consumers. The Supreme Court held Amazon had targeted UK consumers, constituting infringement.

Facts

The respondents, Lifestyle Equities CV and Lifestyle Licensing BV, owned and licensed trade marks registered in the UK and EU comprising the words BEVERLY HILLS POLO CLUB or a logo featuring those words with a horse and rider device. Unrelated parties owned corresponding US trade marks and legitimately sold goods bearing these marks in the USA. Amazon marketed and sold these US branded goods on its USA website (Amazon.com). Lifestyle contended that Amazon’s USA website targeted UK consumers, thereby infringing their UK and EU trade marks when these goods were sold and delivered to UK consumers.

Amazon’s USA Website Features

When accessed from a UK IP address, the USA website displayed ‘Deliver to United Kingdom’ messages, showed products available for UK shipping, offered currency conversion to sterling, and provided UK-specific delivery dates and import charges. A pop-up box stated: ‘We’re showing you items that ship to United Kingdom.’ The website also suggested consumers could use Amazon.co.uk for faster local delivery, though this was presented as an option rather than a requirement.

Issues

The central issues were: (1) whether Amazon’s USA website targeted consumers in the UK, thereby constituting use of the trade marks in the UK; and (2) whether sales to UK consumers from the USA website, even if not preceded by targeted advertisements, constituted infringement under the Blomqvist doctrine.

Judgment

The Law on Targeting

The Court affirmed the principles from prior case law, including Merck KGaA v Merck Sharp & Dohme and Argos Ltd v Argos Systems Inc. The question of targeting must be assessed objectively from the perspective of the average consumer, considering whether they would consider the website directed at them.

First, in determining whether an advertisement of goods bearing a trade mark on the website of a foreign trader constitutes use of the trade mark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in the course of trade in the UK.

Application to the Facts

Lord Briggs and Lord Kitchin, delivering the joint judgment with which the other Justices agreed, concluded that Amazon’s USA website clearly targeted UK consumers. Key factors included:

• The ‘Deliver to United Kingdom’ message appearing on landing and product pages
• The pop-up stating items shown were available for UK shipping
• Product pages labelling goods available for UK delivery
• The ‘Review your order’ page containing UK-specific delivery dates, prices, and sterling conversion

In our view, balancing the relevant facts about Amazon’s marketing and offer for sale of the US branded goods on its USA website does show with reasonable clarity that it was targeting the UK as a territory, ie targeting consumers accessing its USA website from the UK.

Errors by the Trial Judge

The Supreme Court identified several errors in the trial judge’s analysis, including: focusing too much on the website as primarily directed at US consumers; wrongly treating Lifestyle’s subjective motive as relevant; and overemphasising higher delivery costs compared to the UK website without proper analysis.

The Blomqvist Issue

Having found targeting established, the Court declined to decide whether non-targeted sales would constitute infringement under the Blomqvist doctrine, noting uncertainties about the underlying facts in that case.

Implications

This judgment provides important guidance on how trade mark law applies to cross-border internet sales. It confirms that automated website features designed to recognise and respond to a consumer’s geographic location can establish targeting, even where the website is primarily directed at another territory. The decision emphasises that targeting must be assessed from the average consumer’s perspective, viewing the website experience as a whole from landing page to purchase confirmation. The case is significant for international e-commerce operators who must consider whether their websites’ functionality constitutes targeting of territories where they do not hold relevant trade mark rights.

Verdict: Appeal dismissed. Amazon’s USA website did target UK consumers, and the marketing and sale of goods bearing the BEVERLY HILLS POLO CLUB marks to UK consumers through that website constituted trade mark infringement. The injunction and order relating to an enquiry granted by the Court of Appeal remained in place.

Source: Lifestyle Equities CV and another v Amazon UK Services Ltd and others [2024] UKSC 8