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21 October 2024
At the AIPPI World Congress in Hangzhou, a panel highlighted the Lifestyle Equities v. Amazon case, a landmark moment in intellectual property enforcement within the digital economy. UK-based Lifestyle Equities sued Amazon for enabling U.S.-sourced Beverly Hills Polo Club products to reach UK consumers, thereby infringing on their UK trademark rights. Initially, a lower court ruled in favor of Amazon, citing consumer transparency. However, the UK Court of Appeal reversed this decision, emphasizing Amazon’s active targeting of UK consumers.
The discussion was led by expert Maria Pia Guerra, a partner at Kasznar Leonardos Intellectual Property in Rio de Janeiro; the panel discussed how Amazon functions as more than just a passive marketplace. The court’s ruling underscored that Amazon’s use of localized features – such as UK shipping addresses and currency conversion – amounted to active facilitation of sales in the UK. This decision was later upheld by the UK Supreme Court, which confirmed that Amazon’s tailored targeting of UK consumers constituted trademark infringement.
Historically, international trademark protection efforts began with the Paris Convention of 1883, followed by frameworks like the Madrid system and the TRIPS Agreement of 1994. However, as this case illustrates, trademarks remain territorial, and the rise of digital commerce complicates traditional jurisdictional boundaries. Amazon’s reliance on IP addresses and data-driven consumer experiences further complicates enforcement, raising broader questions about cross-border commerce and the influence digital platforms wield in shaping global trade. This case underscores the pressing need for evolving legal frameworks in an increasingly globalized digital economy.
Another notable case, mentioned by Adriana Barrera, managing partner at BARLAW – Barrera & Associados in Lima, does not directly involve Amazon. The German Federal Supreme Court has referred a matter to the Court of Justice of the European Union (ECJ) for a preliminary ruling, raising critical questions about the possession of trademark-infringing goods across borders. This case involves a German company, known for its diving accessories branded as “Extreme Durable,” and a Spanish online trader allegedly marketing these goods on Amazon’s German platform, amazon.de, without proper authorization.
The legal conflict arose when the German trademark owner discovered that the Spanish trader was using its registered trademark to advertise diving gear. Despite the absence of trademark registration in Spain, the Spanish company operated in multiple European countries, raising concerns about the extent of the German company’s rights. A test purchase conducted by the German firm revealed that the received goods lacked the advertised trademark, prompting further investigation into their nature.
Initially, a German court ruled in favour of the plaintiff, ordering the Spanish trader to cease marketing and distributing the diving accessories. However, this ruling was challenged, leading to a second-instance court decision that not only reinforced the initial ruling but also expanded the orders to prohibit possession of the goods in Spain. This aspect of the ruling prompted the German Supreme Court to seek guidance from the ECJ, raising critical legal questions about the interpretation of possession in trademark infringement cases.
The preliminary questions posed to the ECJ are twofold: first, can a trademark owner in Germany prohibit a foreign entity from possessing goods that infringe on its trademark? Second, what constitutes possession in this context – does it imply direct control over the goods, or could it also encompass the ability to influence third parties with access to those goods? The potential answers to these questions could significantly impact trademark law across Europe.
This case not only emphasizes the complexities of trademark rights in the context of online sales but also highlights the need for harmonization in trademark law across the European Union. With differing interpretations of possession and infringement among member states, the ECJ’s ruling will be crucial in clarifying the scope of national trademark protections and their extraterritorial application.
– Cathy Li, reporting from Hangzhou
