A recent UK decision has considered whether the defendant’s use of a trademark on the Internet would allow an action in the UK to proceed.
The Facts
The plaintiff, the budget airline that carries on business under the name easyJet and owns a large number of “easy-” prefixed registered trademarks. This plaintiff and its trademark are well known.
The defendant is a company based in Dhaka, Bangladesh and the registrant of the domain name www.easyfly-express.com from which EasyFly’s services are marketed (“the Defendants’ Website”). The defendant provides airline cargo services under the signs EasyFly and the logo shown below:
As soon as the defendant was served with statement of claim, a motion was brought asserting the court did not have jurisdiction.
The Test for Jurisdiction
The court summarized four principles that apply in the UK. First, in determining whether an advertisement of goods bearing a trademark on the website of a foreign trader constitutes use of the trademark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in trade in the UK.
Second, that a website is accessible from the UK is not a sufficient basis for concluding that an advertisement displayed there is targeted at consumers in the UK.
Third, targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Evidence that a trader does intend to target consumers in the UK may be relevant in assessing whether its advertisement has that effect.
Fourth, the court must carry out an evaluation of all the circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, through a website promoting trademarked products including the UK in a list or map of the geographic areas to which the trader will dispatch its products. The appearance and content of the website will be of particular significance, including whether it is possible to buy goods or services from it. However, the circumstances may extend beyond the website itself and include, for example, the nature and size of the trader’s business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.
When carrying out an evaluation of the following matters, the list of which is not exhaustive, can constitute evidence from which it may be concluded that the trader’s activity is directed at consumers in the UK; the international nature of the activity; mention of itineraries from other states for going to the place where the trader is established; use of a language or a currency other than the language or currency generally used in the country in which the trader is established with the possibility of making and confirming the reservation in that other language; mention of telephone numbers with an international code; outlay of expenditure on an Internet referencing service to facilitate access to the trader’s site or that of its intermediary by consumers domiciled in other countries; use of a top-level domain name other than that of the country in which the trader is established; and mention of an international clientele composed of customers domiciled in various countries.
Finally, this targeting approach is not an independent doctrine of trademark law. It is a jurisdictional requirement. Because trademarks are territorial, those doing business exclusively outside the UK should not have their dealings subjected to the trademark law of the UK. Failure to recognise this principle is a failure to give effect to the territoriality of the underlying rights. The fact that a website is accessible from anywhere in the world, and therefore may attract occasional interest from consumers when this is not intended, should not cause any form of liability.
The Decision
Although defendant’s trademark and trade dress were confusing with the plaintiff’s registered trademarks and some broad statements were made on its website, the defendant’s business activities were not targeted at the UK or the EU. The bulk of that business was transporting live shrimp fry within Bangladesh, and its customers were predominantly Bangladeshi companies. It has never had a customer from anywhere in Europe. Its business came primarily from direct marketing activities or through freight forwarders in Bangladesh, although it has engaged in some advertising in local newspapers and trade press. It had never signed a contract through its website or with a customer who had reached it via the Website.
As a result, it was determined that the defendant had not targeted the UK or the EU.
Comment
While it is still an open question, it seems likely that Canadian courts will consider the concepts of interactivity and targeting in assessing whether they have jurisdiction in similar situations.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer