The claimants were the proprietor and exclusive licensee of trade marks registered in the UK and EU protecting the BEVERLY HILLS POLO CLUB brand in those territories. A commercially unrelated entity owned corresponding trade marks registered in the US, covering the same goods (“the US-branded goods”) as those covered by the UK and EU marks. The claimants never consented to the marketing of the US-branded goods in the UK or EU. The defendants were members of a group of companies that operated e-commerce websites internationally. The US-branded goods were, with the US right holder’s consent, listed, advertised and sold in the US through the group’s US website. The defendants’ business models allowed advertisements and offers for sale of the US-branded goods to be visible to consumers in the UK and EU, and those goods could be purchased by them from the US website. Before the end of the period for withdrawal of the UK from the EU, the claimants brought infringement proceedings against the defendants, contending that they had used, in the course of trade, signs which were identical to the claimants’ marks, by advertising, offering for sale, selling and importing US-branded goods to consumers in the EU and UK, contrary to article 9(2)(a) of Parliament and Council Regulation (EU) No 2017/1001 and section 10(1) of the Trade Marks Act 1994, respectively. The judge, save to a limited extent that was admitted, dismissed the claim. The Court of Appeal allowed the claimants’ appeal on the ground, inter alia, that the advertisements and offers for sale on the US website of the US-branded goods were targeted at consumers in the UK and EU, which constituted deemed unauthorised use of the signs.
On the defendants’ appeal—
Held, appeal dismissed. The question whether an advertisement or offer for sale of branded goods on a foreign website was targeted at consumers in a territory in which the trade mark was protected had to be considered from the perspective of the average consumer. In order to answer that question the court had to balance, or carry out a multifactorial assessment of, all the relevant circumstances in the context of the whole of the consumer’s experience of the website, including, inter alia, the appearance of the website, how it responded to the presence of the consumer, whether it was possible actually to buy goods and have them delivered, and how that was done. The mere accessibility of the website was insufficient and it had to be shown that the average consumer would think that the advertisements and offers for sale were targeted at them. It was not necessary to establish that the foreign trader had the subjective intention of targeting consumers in the protected territory, although such a finding could be taken into account in the assessment. In the present case, the balancing exercise, conducted afresh, revealed that the defendants were targeting the UK as a destination for the US-branded goods by displaying them on their US website. That was the view that the average UK consumer would form as the result of their experience of the US website, from the “Deliver to the United Kingdom” message on the landing page, repeated on most subsequent pages, to the moment of contract by clicking the “Place your order” button on the “Review your order” page. Accordingly, the advertisements and offers for sale in issue amounted to the unauthorised use of the protected signs in the course of trade in the UK, thereby constituting an infringement of the claimants’ trade mark rights (paras 14, 17–20, 24, 26–30, 46, 60–67, 70–73, 80, 83, 84, 87, 90).
Daniel Alexander KC and Maxwell Keay (instructed by Hogan Lovells International LLP) for the defendants.
Michael Edenborough KC and Thomas St Quintin (instructed by Brandsmiths) for the claimants.