In a decision issued this week, the Supreme Court has for the first time addressed the issue of when the use of a trade mark on a foreign website infringes UK trade marks. In doing so, the Court reviewed the law on ‘targeting’, and considered the Court of Appeal summaries of the law in the earlier Merck and Argos cases were correct. Brand owners will find useful guidance in the decision on how to evaluate the ‘targeting’ question in certain situations.

In an ever-more online focussed world, the targeting question is important for assessing where a mark is used not just for the purposes of infringement (as in this case) but also when considering if a brand owner has put a mark to genuine use in the UK in the context of revocation.

This was an appeal from a May 2022 Court of Appeal decision that several “BEVERLY HILLS POLO CLUB” UK and EU marks had been infringed by listings and offers made on, and sales made through, the defendants’ amazon.com platform (US Website). The Court of Appeal considered the manner in which those listings and offers were presented on the US Website constituted “use” in the UK and so infringed the claimant’s UK trade marks.

The Supreme Court considered the factors favouring a conclusion that the marketing and offer for sale of the US branded goods on the US Website did target UK consumers “greatly outweighed” those pointing in the opposite direction.

In favour of UK targeting: the message ‘Deliver to the United Kingdom’ was prominently displayed on nearly all relevant pages and in a pop-up, and product listings were marked if available for UK delivery. At check-out there was UK-specific delivery information and an option to pay in sterling.

Against UK targeting: the option to switch to amazon.co.uk, and the likelihood of lower delivery times and charges were weak factors going the other way, especially as the US branded goods were not in fact available on amazon.co.uk. Default USD currency was a weak factor given the option to see prices and pay in sterling. It was also not relevant that most sales of those goods from the US Website were to US customers.

Brand owners can find guidance in the following points made by the Supreme Court:

• For websites selling goods, it will be relevant to review the consumer’s journey on the site from the home page to a buying decision, and this should usually be done forwards rather than backwards.
• For websites whose content varies according to the visitor’s IP address, it will be relevant to assess how it responds to the presence of visitors from the location said to be targeted.
• The assessment should consider the combined effects of a marketing website on the average consumer in the aggregate and also focus in sufficient detail on the specific elements of the particular pages relied on.

The question of targeting relates to adverts/offers for sale on the foreign website. There was also the separate question of whether sales of trade marked goods delivered into the UK from a foreign website amounts to use of a mark in the UK even where not preceded by ads/offers targeted at the UK. The Supreme Court did not need to decide this second question because in its view all the ads/offers were UK-targeted.

Brand owners interested in the potential impact of Brexit on trade mark law in the UK will be interested to note that, although Brexit issues were not in play in this case, the Supreme Court did state that “UK trade mark law remains rooted in EU legal principles” post-Brexit.