Here’s one case which involves an onlineretailing 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 customarypractice of online retailing methods, the Intellectual Property Enterprise Courtfollowed the theoretical root of the Trade mark laws and over-turned suchpractices by upholding that ‘re-use of a third party’s Amazon listing withoutconsent to sell the same goods may, on appropriate facts, amount to trade markinfringement or passing off.’The factual matrix of this case liesas below: In this matter there were twoclaimant, the first one was the statutory and common law owner of the Trademark ‘Design Elements’ for the purpose of “flagpoles plastic storage box garden furniture”, while the secondClaimant was the sole licensee since 2011 to sell the products of the firstclaimant.
These products were also soldthrough online shopping portal namely – www.amazon.co.uk, via three listings created by thesecond claimant.Usually, the common practice whilelisting products for sale on Amazon or any such kind of online portals are thateach new listing is given a Unique Amazon Identification Number (ASIN). It ispertinent to note that an Amazon listing created by one party can be used bymultiple sellers selling common product.
Amazon then tends to promote thecheapest of the offerings by selecting them as the default seller, allowingconsumers to review each listing in more detail. Thus, in this case, the issue arose whenthe defendant listed its product under the listing created by the claimants,with a low price due to which they appeared as the default seller, attractingmajority of sales from the said listing.Interesting fact about this case is,that the claimants sued the defendants for trade mark infringement and passingoff and did not even involve Amazon, who encourages sellers to use pre-existinggeneric ASINs where possible.
ArgumentsThe claimant focussed on the basic concept of rights of trademark.Firstly, the owner of the trademark has the right to prevent the third partyfrom commercially using any sign (without the permission of the TM owner) thatis ‘identical to the trade mark in respect of goods or services which areidentical to those for which the mark is registered (double identity) (section10 (1), Trade Marks Act 1994) (TMA) (section 10(1))’ or ‘ by such use oftrademark that causes a likelihood of confusion or association on the part ofthe public (section 10(2)(b), TMA) (section 10(2)(b)).” Secondly, the law of passing off atrade mark, which is considered as an element of Tort, the essential featurethat is considered to attract this tort is the goodwill attached to the trademark, such misrepresentation leads to likelihood of confusion among consumers dueto which the claimant suffer damage as mention in the case of Reckitt & ColemanProducts Ltd v Borden Inc 1990 RPC 341.
However, the defendant relied on thegenerality of the Amazon listing number. They claimed that since the listing wasgeneric and did not refer to a specific brand, it could list its product underthe same listing and that the brands of the competing products weresignificantly different as the defendant’s brand was “Feel Good UK”. However, the claimant argued thatdue to the use of the same listing number namely “20ft aluminium flagpole “byDesign Elements”, any consumer can link the defendant’s product as that of theclaimant’s product. The defendants should have sold their products throughanother Unique Identity ASIN number.The question was not whether the Defendant attached the signor trade mark to the product or packaging itself, but whether the use of thelisting in this way infringed (and/or passed off) the Claimants’ rights.JUDGEMENTThe Intellectual Property EnterpriseCourt accepted the claimant’s argumentand further observed that by having thesame listing number and linking one’s goods to a competitor’s branded productlisting would undoubtedly cause a misrepresentation and confusion among theconsumers leading to Trademark infringement and passing off.
CONCLUSIONThe present case has shown the online businesses a realitythat the presence of Trade mark law is every where. It is another reminder thatthese businesses should consider their online marketing very carefully. Attachingproducts to an existing Amazon listing when the products are clearly not thesame could potentially be an infringing act. Moreover, as per theObjective 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 businessentities the kind of practices that are not allowed by the Trade Mark Laws.