The goods subject to the dispute

The Claimants were two Dutch companies (Lifestyle), owned and controlled by their managing director, Mr Eli Haddad. The Dutch companies sold clothing and similar goods under the BEVERLEY HILLS POLO CLUB (BHPC) brand, or licensed others to do so.

In 2008, there was a split between Mr Haddad and his two brothers. The two brothers incorporated their own company called BHPC Associates LLC, which owned the BHPC brand and corresponding trade mark rights in the US. The court held that it was clear that Mr Haddad and his brothers had gone their own separate ways in respect of the brand and were pursuing very different methods of promoting and selling the branded goods. That situation had given rise to the dispute, with goods lawfully listed on Amazon.com with the authorisation of Mr Haddad’s brothers, whilst Mr Haddad wanted to stop his market in the UK and the EU from seeing the prices at which the BHPC branded goods were being sold in the US.

Amazon’s case

Amazon said that from the time where possible trade mark infringement was first raised by Lifestyle it had sought to resolve the issue by implementing certain technical restrictions in relation to the sale and advertising of BHPC goods to UK/EU consumers. Although Lifestyle considered that it was relatively easy for Amazon to put in place some sort of complete geo-block for the BHPC products in the UK/EU, the court concluded that it was not so simple. It accepted Amazon's evidence that it is a complex process which requires effort across multiple systems.

It had become clear, however, that Lifestyle was not interested in restrictions that blocked only sales of the BHPC goods from amazon.com to UK/EU consumers, but that it was also seeking restrictions being put in place that blocked any visibility of such goods to UK/EU consumers. The restrictions implemented by Amazon prevented BHPC branded items from being shipped outside the USA via Amazon exports retail or FBA, and generally prevented such products from appearing in search results by consumers whose default or expressly selected delivery location was outside the US. Amazon also excluded the BHPC products from Amazon global store. Other restrictions were put in place which meant that although BHPC products were still listed on amazon.com if they were sold by third parties through MFN export, UK/EU consumers were only informed at the check-out page that the item was not available for shipping to their destination.

Use of trade marks within the relevant territory

The key issue for the court to decide was whether there had been use by Amazon of the BHPC trade marks within the relevant territory (here the UK/EU). The question arose from the inherently territorial limits of trade mark protection and ensuring that such protection does not extend beyond those territorial boundaries. Because trade marks are territorial in effect, those who do business exclusively outside the UK should not have their dealings subjected to the trade mark law of the UK. Failure to recognise this principle is a failure to give effect to the territoriality of the trade mark rights.

However, the internet does not respect individual territories and is global. Websites can be accessed from anywhere in the world. While trade mark owners are entitled to protect their rights within the territories where the trade marks are registered, there arguably needs to be some way in which a measure of protection can be provided where alleged infringing use takes place on the internet from outside of the territory.

It was held that the court must carry out an evaluation of all the relevant circumstances. These could include any clear expressions of an intention by the website owner promoting trade marked products to solicit custom in the UK by, for example, including the UK in a list or map of the geographic areas to which the trader is willing to despatch its products. The relevant circumstances may include the number of visits made to the website by consumers in the UK.