This case involving registered trade mark infringement and passing off claims has highlighted that, when using auction websites, attaching one’s own listing to an existing listing should be approached with caution.

The first Claimant in the case, Jadebay Limited, owns a UK registered trade mark for the DESIGN ELEMENTS mark above left covering flagpoles, which were being sold on Amazon by the second Claimant, Noa and Nana Limited. Between July 2012 and February 2013, the Defendant, Clarke-Coles Limited Trading, chose to use the Claimant’s listing on Amazon to sell its own flagpoles, which was possible because the website enables one seller to join another’s listing, provided that the products are identical. Amazon promotes the cheaper of the products, although consumers can choose to pursue more expensive alternatives if they wish.

The Defendant, having purchased flagpoles from a manufacturer in China, attached its products to the Claimant’s existing listing. Although the Defendant’s flagpoles were similar to those of the Claimant in quality and appearance, they were not identical, and could be sold more cheaply than the Claimant’s flagpoles, so were promoted by Amazon. The question here is whether the attaching of the listing in this way amounts to an unauthorised trade mark act.

According to the Defendant, this action was permissible because the original listing made reference to neither a brand nor a registered trade mark, and its flagpoles matched the generic description of the product on Amazon. However, the Claimant’s listing did mention that the products were designed “by DesignElements”, and the Defendant’s poles were made by “Feel Good UK”.

When reviewing this case, the IPEC firstly had to consider whether the Defendant had used a sign that was identical or similar to the Claimant’s trade mark, and subsequently whether this would have led to confusion for consumers. Secondly, it needed to decide whether the Claimant’s product had a reputation, and if the Defendant’s use of the mark would have damaged this reputation, and finally whether passing off had been committed (requiring consumer goodwill, misrepresentation of the product, and damage to the claimant).

Ultimately, the Court decided that the Amazon listing implied that the flagpoles being sold were “by DesignElements”, and therefore the Defendant had used this trade mark which, the Court concluded, would be highly likely to cause confusion to the average purchaser of flagpoles. Furthermore, the Court found that the Claimant’s evidence of sales, positive reviews and repeat purchases was enough to show goodwill, and it was consequently easy to show that there had been misrepresentation and damages. The Defendant had therefore passed off its goods.

Having found trade mark infringement and passing off, the Court awarded the Claimant damages of £25,000 alongside, significantly, an injunction to restrain the Defendant from committing any further infringing acts.

Takeaway Messages

There are a number of aspects to take away from this case. One is the importance of carefully reviewing marketing strategies, particularly concerning online auction sites. This case demonstrates that linking a product to an Amazon listing in situations where the products are not identical could potentially constitute infringement. The case is also a timely reminder of the kinds of marketing practices not permitted under current trade mark laws. It also further reinforces the effectiveness of the IPEC in awarding not only damages, but also injunctions.

It is worth highlighting that Amazon was not a party to these proceedings. The infringing act simply took place on its site.

Case [2017] EWCA 1400 (IPEC)