Birlea Furniture Ltd & Anr v Platinum Enterprise (UK) Ltd & Anr* (Judge Melissa Clarke;  EWHC 26 (IPEC); 11.01.18)
The Judge found the defendants jointly liable for infringement of Birlea's EUTM for BIRLEA by advertising, offering for sale and selling beds through two listings on Amazon.co.uk ("Amazon").
Birlea's BIRLEA mark was registered for, among other things, "furniture" and "beds" in Class 20. Birlea was an importer and wholesaler of furniture, including beds, selling to companies who then re-sold to the retail market. One of its customers was Amazon and it was a vendor seller on Amazon for that purpose. Platinum Enterprise was also a trading company that imported and sold furniture, including beds, on Amazon. Birlea previously supplied products to Platinum Enterprise for re-sale online, including a specific style of metal daybeds called 'Torino' daybeds. However, the trading relationship between them broke down. Birlea claimed that Platinum Enterprise had infringed its EUTM for BIRLEA pursuant to Article 9(1) (a)/Article 9(2)(a) by selling 'Torino' daybeds on Amazon via two specific listings which used the BIRLEA mark in their titles. Platinum Enterprise accepted that it had used the listings to advertise and sell beds and did not deny that the sign complained of, if used, infringed the BIRLEA mark. However, it disputed that it had used the sign complained of for the purposes of Article 9(1)(a)/Article 9(2)(a).
The Judge accepted Birlea's submission that as a matter of law it was the seller on an online marketplace who made use of the signs displayed on a product listing within it. She also accepted that there was no requirement for the seller to have knowledge of use of the sign for infringement to be made out, only that there was in fact actual use in such a way that a link was established between the sign complained of and the goods marketed by the seller. The evidence showed that the title of the two listings as shown in past sales orders printed from Platinum Enterprise's Amazon account bore the BIRLEA mark. The Judge rejected Platinum Enterprise's theory that Amazon's standard procedure was to execute a partial retrospective change to the title of sales orders which were accessed or printed later, i.e. by using the sales title of the listing at the time the relevant order was placed but inserting as a prefix the trade mark from the 'brand' field, in this case "Birlea", if that changed over time.
Platinum Enterprise accepted that a finding of infringement of the BIRLEA mark followed from the Judge's finding that the relevant listings contained the "Birlea" sign at the time it used the listings. The Judge went on to find that the second defendant (an employee, shareholder and director of Platinum Enterprise) was jointly liable with Platinum Enterprise as joint tortfeasor.