• Defendant sold beds on Amazon using listings that contained the claimant's registered trade mark
  • Defendant claims that it did not know that the trade mark was used in the listing
  • Was the defendant's director also liable for the infringement?

What's it about?

Birlea Furniture Limited ("Birlea") is the registered proprietor of the BIRLEA trade mark ("Trade Mark") and imports and wholesales beds to companies, including Amazon, for resale to the retail market. Birlea had set up listings on Amazon which related to Torino daybeds in cream and black and these listings used the Trade Mark in a number of places including: (a) the title; (b) the subtitle; and c) the 'from the manufacturer' section of the listing page.

The first defendant, Platinum Enterprise UK Limited ("Platinum") was a former distributor for Birlea and sold identical beds on Amazon using the brand 'bedzonline'. Platinum had assigned Birlea's listings to the beds it was advertising and offering for sale on Amazon. The second defendant was an employee, shareholder and director of Platinum.

Birlea claimed that by using its Amazon listings containing the Trade Mark to advertise and sell beds on Amazon, Platinum had infringed its Trade Mark pursuant to Article 9(1) (a) of the EU Trade Mark Regulation 207/209 and Article 9(2)(a) of the EU Trade Mark Regulation 2017 / 1001.

Platinum accepted that it had used Birlea's listings to advertise and sell beds. However, Platinum disputed the fact that it had 'used' the Trade Mark, stating that it had not known the Trade Mark was used in the listings until it had received Birlea's letter before action. Platinum argued that it "should only become liable for infringement after the date on which they became aware of the presence of the sign Birlea on the listings, as until they are aware of it, they have not 'used' it."

What does it matter?

Platinum's arguments were dismissed by the IPEC and both Platinum and Mr Baig were found jointly liable for infringement. The court assessed the defendants' 'novel argument' and concluded that there was no requirement for knowledge of the use of the Trade Mark in order for infringement to be found. The key was whether or not the Trade Mark had been used based on a factual assessment. It explored the relationship between individual sellers and online market places in the context of infringement. It looked at who would actually be 'using' the Trade Mark and concluded that individual sellers rather than the operators of an online market place would be responsible (in this case it was Platinum that had 'used' the Trade Mark not Amazon).

The court also found the first defendant's director, the second defendant, liable as a 'joint tortfeaser' on the basis of his active and personal involvement in using the Birlea's listings when offering and advertising beds for sale on Amazon.

Now what?

This acts as a stark reminder to businesses and individuals to carefully consider what tools and identifiers are appropriate when marketing and selling goods through an online market place.

It is also a reminder to those who use trade marks in their listings to proactively police how these are being used online and by whom.

Birlea Furniture Ltd v Platinum Enterprises (UK) Ltd and another [2018] EWHC 26 (IPEC)