It’s a jungle out there – trade mark infringement and passing off on Amazon.co.uk
A very recent decision of the Intellectual Property Enterprise Court reflects a novel application of the law to find trade mark infringement and passing off when a third party Amazon listing is used by another seller in relation to the same goods.
Amazon listings
Whilst an Amazon listing is created by one party, that same listing can be used by multiple sellers to sell the same product. The additional seller can search for a specific item they wish to sell and see the description of the item which includes details of its brand and manufacturer. The additional seller may then confirm the item they wish to list is the same and submit to join its own products to that listing.
When there are multiple sellers on a listing, one is selected by Amazon as the default seller which is promoted in the listing itself and in the "Buy Box". If a buyer clicks on the 'Add to basket' or '1-Click' buttons, it will purchase from the default seller. In order to review the other sellers on that same listing, a buyer would have to click through to see their individual details and prices. The default seller is usually, but not always, the seller that charges the lowest total price (i.e. including delivery cost).
Background
The first claimant owned a device trade mark for "Design Elements" in class 20 for "flagpoles" and also had used the words "Design Elements" as an unregistered trade mark. The second claimant was exclusively licenced to use these marks. The claimants sold their goods on eBay and Amazon sites, via listings they created themselves. The Amazon listing clearly stated that the products were made by "byDesignElements" and the products sold by the claimants were branded with their trade marks.
The defendant added products to this listing, sourced from a different manufacturer. Since the defendant's price was less than the claimants' price, the defendant became the default seller on the listing. It therefore won the majority of sales from the listing.
Whilst the defendant did not use the trade marks on its products, the claimants argued that by choosing to use a listing that stated the products were "byDesignElements" this constituted trade mark infringement and passing off.
The defendant ran a number of arguments, including that the listing was for generic products as the title of the listing did not refer to any brand and further that the mention of "byDesignElements" was not use of the trade marks by the defendant, but use by Amazon when simply stating the name of the seller who created the listing.
Decision
HHJ Melissa Clarke found both trade mark infringement and passing off. The judge granted an injunction and ordered the defendant to pay £25,359.75 in damages.
HHJ Clarke rejected the defendant's notion that it had not used the device trade mark, commenting that it did not matter that "byDesignElements" did not appear in the title of the listing but only underneath it – as this was customarily where the manufacturer's name appeared. By joining this listing, the defendant had used the device trade mark and, due to the sales completed by the defendant, this use was clearly in the course of trade.
Having considered that the average consumer in this case would be observant, the court discussed the likelihood of confusion. Given the high degree of similarity of "byDesignElements" to the device mark, the identity of the goods, the distinctiveness of the mark to repeat customers, the attentiveness of the average consumer, the possibility of unreported actual confusion, and the likelihood that the average consumer might consider that the defendant's product emanated from the claimants, HHJ Clarke found a likelihood of confusion and infringement under section 10(2) of the Trade Marks Act 1994.
Whilst there was not sufficient evidence to establish a reputation for the purposes of trade mark infringement (under section 10(3)), the court did hold that the unregistered trade mark had goodwill for the purposes of passing off. Together with the evidence which clearly demonstrated damage to the claimants by the defendant's hijacked sales, the court found that on the balance of probabilities it was likely that a substantial number of members of the public would be misled into purchasing the defendant's product in the belief that it was the claimants'.
Comment
Owners of Amazon listings will welcome this decision which clarifies legitimate parameters for when a third party may join a listing to sell the same goods. It is also another example of the court taking a logical approach in applying the law to modern selling sites.