UK: What constitutes online trade mark infringement in the UK?

December 12, 2018

In the global market made accessible by the internet, a recurring question for trade mark proprietors is how to assess online trade mark infringement given the worldwide accessibility of any website. This was considered recently by Arnold J at the High Court of England and Wales in Easygroup Ltd v Easy Fly Express Ltd & Anor ([2018] EWHC 3155 (Ch) (21 November 2018)).

EasyGroup is the proprietor of a large portfolio of trade marks including, but not limited to, the word mark EASYJET and a device mark prominently containing the word EasyFlights, both in relation to Class 39. Bangladesh-based Mr Chowdhury and his company Easy Fly Express, are proprietors of the domain www.easyfly-express.com from which their airline cargo services are available. EasyGroup claimed this use constituted infringement and passing off of their registered rights.

For infringement to result from an online platform, the use of that mark must target the UK consumer (or EU for an EU registration). A number of cases have been heard in the UK since 2014 in relation to online use, giving Arnold J a clear, but non-exhaustive test to apply. The test includes, but is not limited to whether the consumer's domicile is targeted by the defendant; the language and currency used beyond the defendant's domestic language and currency; the telephone numbers and any international codes given beyond the defendant's domestic international codes; a top-level domain name beyond the defendant's domestic domain names; and reference or testimonials of international consumers. Arnold J noted that Easy Fly Express transported foods within Bangladesh and customers were predominantly Bangladeshi and primarily resulted from direct marketing or freight forwarders in Bangladesh. EasyGroup's claim of targeting the UK and EU markets because of use of English on their website and Facebook page was broadly dismissed by Arnold J as this is the dominant language of websites and is widely spoken in Bangladesh. In addition, there were no UK or EU contact details provided whatsoever, and an internet search only produced the Easy Fly Express's website on inclusion of "Bangladesh" in the search. Therefore, Arnold J concluded that the UK or EU consumer had not been targeted and any similarities between the marks were not sufficient to find any infringement or passing off.

While not an alarming or unexpected decision, this case serves as a reminder of the test and requirements for UK courts to find infringement resulting from online use of a mark.