The English High Court has applied a directing and targeting test developed in trade mark law to patent infringement, holding that a .com website was not sufficiently aimed at the UK to amount to an offer to supply goods in the UK.
In Boegli-Gravures v Darsail-Asp, the claimants alleged infringement of a UK patent for embossing rollers used to make patterned metallic foils such as those found in cigarette packets. The main defendant was a Russian company. One of Boegli’s contentions was that Darsail’s website at www.darsail.com constituted an offer to supply rollers to the United Kingdom. The judge, Arnold J., having found that the contents of the website amounted to an offer to supply, went on to consider whether it was an offer to supply in the United Kingdom.
The parties agreed that the correct approach was to consider whether the website was aimed at the UK, following the test well established for trade mark use and articulated by Kitchin J in Dearlove v Coombs  EWHC 375 (Ch):
“The fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser's intention.”
The judge considered the contents of Darsail’s website, which among other things:
- was in English;
- mentioned multinational companies such as Imperial, Gallaher, JTI and BAT as being among its customers;
- stated that ‘in 2004 we started to export our products to the countries of CAS and also to countries of Western Europe and Southwest Asia.’.
Boegli submitted that this was enough for the site to be targeted at the UK. However, the judge agreed with Darsail that the website was an offer to supply the world at large and was not sufficiently targeted at the UK. At the most it was an offer to supply customers who include customers in the UK. The judge also pointed out that the parts of the website relied upon did not state Darsail’s delivery terms, which could be delivery at Darsail’s premises in Moscow – in which case there would be no supply or offer to supply in the UK.
The judge did find infringement on the basis of test purchases and supplied samples.
This case is interesting for two reasons. First, it is another example of what may or may not amount to directing or targeting to the UK on a particular set of facts. From that perspective it can usefully be contrasted with cases such as Dearlove v Coombs (referred to above and discussed here), in which the website contained more specific UK material.
Second, it demonstrates the importance of considering directing and targeting in the light of the particular unlawful act asserted against the defendant. In trade mark cases the relevant act is ‘use’ of the trade mark. While that connotes more than mere availability, the terms on which goods might be supplied would not be relevant. Where, as in this case, the unlawful act is ‘offer to supply in the UK’, then even if the offer is targeted to UK customers that is not enough if the supply would be completed outside the UK – hence the significance of Darsail’s terms of supply. Where the unlawful act is ‘publication’, the English courts have so far rejected any consideration of directing and targeting, preferring to hold that mere availability of the foreign website is sufficient to amount to publication in the UK. This has so far been the consistent view of the English courts even though publication has different meanings for the purposes of, for instance, obscenity, defamation and stirring up racial hatred (as to the latter, see our report of R v Sheppard and Whittle).
Case reference: Boegli-Gravures SA v Darsail-Asp Ltd  EWHC 2690 (Pat)