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Linking a branded product on Amazon to that of a competitor is now trade mark infringement

Written by Samuel O'Toole on 13 August 2017

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Intellectual Property Enterprise Court has ruled that linking a brand product on Amazon to the same product of a competitor equates to trade mark infringement and passing off.

The case of Jadebay and others v Clarke –Coles Ltd (t/a Feel Good UK) 2017 revolved around the fact that Jadebay Limited (Jadebay) is the proprietor of a stylised device trade mark, registered for use in class 20 to include ‘flagpoles plastic storage box garden furniture’.

Jadebay granted a licence that allowed the licensees to sell the Jadebay flagpoles on Amazon.  The issue arose because on Amazon multiple sellers are able to sell the same product. Sellers can find the item they wish to sell, and Amazon will then select a default seller. The default seller is usually the seller that is selling the product for the cheapest price.

The defendant used Jadebay’s licensees Amazon listing and the listing included ‘by Design Elements’ but the defendant sold its own branded flag poles. Because the defendant listed its products under Jadebay’s licensees listing and it was the cheapest product the defendant became the default seller of on Amazon.

Naturally, Jadebay was not happy about this. Jadebay’s case provided that the licensees listing should only be used to sell identical products, or Jadebay branded products and therefore, the defendant’s products should have been sold with a new Amazon listing. Jadebay took the defendant to the Intellectual Property Enterprise Court and claimed that the defendant was infringing its trade mark and that the defendant was passing its products off as that of Jadebay’s.

The Judge held that the Defendant was in breach of section 10(2) of the Trade Mark Act 1994 and therefore its actions amounted to trade mark infringement. This was because the defendant had used a sign that was aurally and conceptually similar to Jadebay’s trade mark to sell its own products. This meant that there was a likelihood of confusion for the average consumers.

The Judge held further that the defendant had been passing its goods off as those of Jadebay’s. Goodwill and reputation were found to be easily identified by a number of positive feedbacks on Jadebay’s Amazon listing. Misrepresentation was easily established as the defendant’s listing included ‘by Design Elements’ and the pictures in the listing showed Jadebay’s products rather than the defendant’s product.

Jadebay was awarded damages that were calculated by way of the sales that had gone to the defendant that would have otherwise gone to Jadebay. Jadebay was also granted an injunction to stop further infringement and passing off.

So there we go, be careful when linking a brand product on Amazon to the same product of a competitor as this would now equate to trade mark infringement and passing off.

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