Here’s one case which involves an online
retailing businesses that is having a link with Trade mark Law – Jadebay Ltd and others v Clarke-Coles Ltd
(t/a Feel Good UK) 2017 EWHC 1400 (IPEC).
However, overlooking the customary
practice of online retailing methods, the Intellectual Property Enterprise Court
followed the theoretical root of the Trade mark laws and over-turned such
practices by upholding 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.’
The factual matrix of this case lies
In this matter there were two
claimant, the first one was the statutory and common law owner of the Trade
mark ‘Design Elements’ for the purpose of
“flagpoles plastic storage box garden furniture”, while the second
Claimant was the sole licensee since 2011 to sell the products of the first
claimant. These products were also sold
through online shopping portal namely – www.amazon.co.uk, via three listings created by the
Usually, the common practice while
listing products for sale on Amazon or any such kind of online portals are that
each new listing is given a Unique Amazon Identification Number (ASIN). It is
pertinent to note that an Amazon listing created by one party can be used by
multiple sellers selling common product. Amazon then tends to promote the
cheapest of the offerings by selecting them as the default seller, allowing
consumers to review each listing in more detail.
Thus, in this case, the issue arose when
the defendant listed its product under the listing created by the claimants,
with a low price due to which they appeared as the default seller, attracting
majority of sales from the said listing.
Interesting fact about this case is,
that the claimants sued the defendants for trade mark infringement and passing
off and did not even involve Amazon, who encourages sellers to use pre-existing
generic ASINs where possible.
The claimant focussed on the basic concept of rights of trademark.
Firstly, the owner of the trademark has the right to prevent the third party
from commercially using any sign (without the permission of the TM owner) that
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))’ or ‘ by such use of
trademark that causes a likelihood of confusion or association on the part of
the public (section 10(2)(b), TMA) (section 10(2)(b)).”
Secondly, the law of passing off a
trade mark, which is considered as an element of Tort, the essential feature
that is considered to attract this tort is the goodwill attached to the trade
mark, such misrepresentation leads to likelihood of confusion among consumers due
to which the claimant suffer damage as mention in the case of Reckitt & Coleman
Products Ltd v Borden Inc 1990 RPC 341.
However, the defendant relied on the
generality of the Amazon listing number. They claimed that since the listing was
generic and did not refer to a specific brand, it could list its product under
the same listing and that the brands of the competing products were
significantly different as the defendant’s brand was “Feel Good UK”.
However, the claimant argued that
due to the use of the same listing number namely “20ft aluminium flagpole “by
Design Elements”, any consumer can link the defendant’s product as that of the
claimant’s product. The defendants should have sold their products through
another Unique Identity ASIN number.
The question was not whether the Defendant attached the sign
or trade mark to the product or packaging itself, but whether the use of the
listing in this way infringed (and/or passed off) the Claimants’ rights.
The Intellectual Property Enterprise
Court accepted the claimant’s argument
and further observed that by having the
same listing number and linking one’s goods to a competitor’s branded product
listing would undoubtedly cause a misrepresentation and confusion among the
consumers leading to Trademark infringement and passing off.
The present case has shown the online businesses a reality
that the presence of Trade mark law is every where. It is another reminder that
these businesses should consider their online marketing very carefully. Attaching
products to an existing Amazon listing when the products are clearly not the
same could potentially be an infringing act. Moreover, as per the
Objective of Trade Mark law, that is to avoid confusion in the market place,
the decision of the court was not strange and perhaps was very apt. Perhaps has strongly reminded the business
entities the kind of practices that are not allowed by the Trade Mark Laws.