Trade mark infringement and passing off: use of Amazon listings

09 August 2017

Audrey Horton

Summary

The IP Enterprise Court (IPEC) has held that listings on www.amazon.co.uk amounted to infringement of a figurative mark and passing off.

Background

A trade mark owner has the right to prevent unauthorised third parties from using, in the course of trade, any sign:

  • Which is identical to the trade mark in respect of goods or services which are identical to those for which the mark is registered (double identity) (section 10 (1), Trade Marks Act 1994) (TMA) (section 10(1)).
  • Where, because of its similarity to the trade mark, and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion or association on the part of the public (section 10(2)(b), TMA) (section 10(2)(b)).

The elements of the tort of passing off are:

  • Goodwill or reputation attached to the relevant goods or services.
  • A misrepresentation by the defendant to the public, leading or likely to lead the public to believe that its goods or services are those of the claimant.
  • Resulting damage to the claimant (Reckitt & Coleman Products Ltd v Borden Inc [1990] RPC 341).

Facts

J's figurative UK trade mark (UKTM) "Design Elements" for flagpoles was in stylised font and incorporated a flag device. J's licensee, N, sold flagpoles listed as being "by DesignElements" on www.amazon.co.uk, via three different Amazon listings created by N.

C listed its flagpole products on N's listings, undercutting J's price so that C appeared as the default seller under its trading name and captured the majority of sales from the listings.

J and N sued C for trade mark infringement and passing off.

Decision

The IPEC granted J and N an injunction and ordered C to pay damages.

There was no infringement under section 10(1) because the differences between the device and "Design Elements", the distinctive font and the flag device and the space between the words, were not so insignificant to the average consumer that they would go unnoticed.

C had infringed section 10(2)(b). C had used the UKTM through offering its products on the listings, which included the words "by DesignElements". The "DesignElements" sign in the listing had a high degree of similarity with the UKTM; the use was in the course of trade and in relation to identical goods to those for which the UKTM was registered; and there was a likelihood of confusion on the part of the public. The listing of the flagpoles as "by DesignElements" was use of a sign which indicated the origin of the goods. The average consumer would think the flagpoles emanated from the specified manufacturer of the product, DesignElements, or a source economically linked to it, rather than the person who created the listing.

On passing off, J's business had goodwill or reputation in England and Wales associated with the "Design Elements" unregistered word mark. C had used the sign in a manner which constituted a misrepresentation, since the listing referred to flagpoles "by DesignElements". Consumers were likely to think they were buying DesignElements flagpoles when they were not, and this had caused J and N damage through lost sales.

Comment

This decision demonstrates that re-use of a third party's Amazon listing without consent to sell the same goods may, on appropriate facts, amount to trade mark infringement or passing off.

Case: Jadebay Ltd and others v Clarke-Coles Ltd (t/a Feel Good UK) [2017] EWHC 1400 (IPEC). 

First published in the August 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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