29 mars 2018

Beds for sale – an online infringement

The Claimant, Birlea Furniture Ltd, sold metal daybeds under the BIRLEA name on the Amazon website. It had registered BIRLEA as an EU trade mark in respect of beds in class 20 in April 2013. Its Amazon listing used the mark in the main title, the identification of the brand in the sub-title, and in the manufacturer section of the listing page.

The Claimant's listing had included the BIRLEA sign at all times. The First Defendant had advertised its beds for sale on the listing from February 2013. It had been notified that it was advertising beds under the BIRLEA name from the receipt of the first sales record and email notifying the first sale of a bed in February 2013.

The Claimant alleged that the First Defendant had infringed the BIRLEA mark by advertising and selling metal daybeds through Amazon via two specific listings which used the mark, and that the Second Defendant (D2) ( a Director of the First Defendant) was jointly liable for those infringing acts.

The Defendants denied that they had "used" BIRLEA. They contended that when the First Defendant had first listed beds for sale on Amazon the listings had not included the BIRLEA name and rather they were generic listings for a metal daybed. They asserted that the BIRLEA name had been added to the listings in March 2015, and that they had been unaware of that until receiving a letter before action from the Claimant in May 2015, at which point they had promptly stopped advertising and selling beds from the listings.

The Claimant submitted that as a matter of law there was no mental element, or requirement for knowledge of use of the sign complained of, for the purposes of trade mark infringement, so lack of knowledge afforded no defence. The Claimant contended that, in any event, the Defendants had already known about the use of the BIRLEA name on the listings by means of sales records and emails from Amazon.

Judgment was given for the Claimant.

In terms of joint liability, in order to fix an alleged joint tortfeasor with liability, it had to be shown both that he actively co-operated to bring about the act of the primary tortfeasor and also that he intended that his co-operation would help to bring about the tortious act. Whether the alleged joint tortfeasor had met the threshold of joint tortfeasance by his actions was fact-sensitive.

The leading role that D2 had played in the proceedings, including signing pleadings as the First Defendant's director even before he was joined as a defendant, and providing the majority of the evidence relied on by the First Defendant demonstrated the principal role that D2 had played in the commission of the infringement. He was jointly liable for the First Defendant's infringing acts.

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

Case Ref: IPEC (2018) EWHC 26

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