BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
COMMUNITY TRADE MARK COURT
New Fetter Lane
B e f o r e :
| BIRLEA FURNITURE LIMITED
- and -
|(1) PLATINUM ENTERPRISE (UK) LIMITED
(2) MR MOHAMMED RAHEEL BAIG
Ms Charlotte Blythe (née Scott) (instructed by Chadwick Lawrence LLP) for the Defendants
Hearing date: 27 November 2017
Crown Copyright ©
Her Honour Judge Melissa Clarke:
THE PARTIES' POSITIONS AT TRIAL
i) the Listings were set up by the Claimant, and each use the Mark in a number of places, namely: in the title (e.g. 'Birlea Torino Single Metal Daybed, Black'); in the identification of the brand in the sub-title 'by Birlea'; and in the 'from the manufacturer' section of the listing page;
ii) the First Defendant has used the Listings to advertise and sell Torino daybeds identical to the beds of the Claimant, and also to sell some units of a different style of bed called 'Essina' by fulfilling 'Torino' orders with 'Essina' beds (for example, it is not disputed that the Claimant's test purchase of a Torino daybed from the First Defendant using the D64 Listing was fulfilled by the supply of an Essina bed);
iii) the name Birlea has been used on the Listings from before the time that the First Defendant began to use the Listings to advertise and sell beds, and at all times afterwards. Accordingly, all of the First Defendant's use of the Listings to advertise and sell beds is use in the course of trade of the sign BIRLEA, which is identical to the Mark, in respect of beds which are identical to the goods covered by the registration of the Mark and so are infringing;
iv) alternatively, if the sign Birlea was added to the Listings only at some later date (which the Claimant denies), the First Defendant has infringed the Mark by use of the Listings to sell its beds from that later date;
v) the Second Defendant is jointly and severally liable for any trade mark infringement of the First Defendant as joint tortfeasor.
i) when the First Defendant first listed beds for sale under the Listings, the Listings did not include the name Birlea, rather they were 'generic' listings for a Torino daybed in cream or black;
ii) accordingly when they added the First Defendant as a seller to the Listings, they did so correctly as they were selling the identical goods to those listed on the Listings, which did not contain the Birlea name, so they cannot have infringed the Mark;
iii) the Defendants aver that the name Birlea was added to the Listings on around 20 March 2015. After this date, the Defendants' case is that they did not become aware that the sign complained of had been added to the Listings until receipt of the Claimant's letter before action on 6 May 2015, at which point they promptly stopped advertising and selling beds from the Listings. It is common ground that the last sale of beds by the First Defendant from the Listings was on 5 May 2015;
iv) The Defendants seek to make a novel argument: they accept that there is no intentional element of trade mark infringement under the 2009 EUTMR/EUTMR, but submit that despite this, they should only be liable for any infringement after the date on which they became aware of the presence of the sign Birlea on the Listings, as until they are aware of it, they have not 'used' it;
v) the Second Defendant denies any liability as a joint tortfeasor.
i) the First Defendant had purchased beds directly from Profitlane Sdm Bhd in Malaysia, which stated that they were the same beds it supplied directly to the Claimant and were 'ex-stock'. The First Defendant now accepts that is incorrect, and Profitlane was not a supplier to the Claimant.
ii) It bought three container-loads of beds being 1075 units in total, but did not sell all of them, as some were damaged or otherwise unsaleable. It could not say how many it had sold. The First Defendant now accepts that it bought six container-loads of Torino beds between June 2012 and July 2014, and sold 1696 units.
iii) The First Defendant listed them on Amazon, but did not advertise them as Birlea beds, as it was Amazon who tagged their beds to the existing Listings. The Second Defendant admits, and the First Defendant now accepts, that the Second Defendant added the beds to the Listings.
iv) In any event the First Defendant did not believe that the listing originally contained the name Birlea, but only referred to 'Torino' day beds. The Defendants have maintained this position.
v) The First Defendant admits that it supplied an 'Essina' bed to the Claimant when the Claimant placed a test purchase for a Torino bed, but "believes that this was an isolated incident and resulted from a "picking error" in the [First] Defendant's warehouse." Counsel for the Defendants in closing accepted that the evidence shows that a number of Essira beds were supplied in fulfilment of Torino orders.
i) When did the Defendants first advertise Torino day beds ("the beds") on Amazon?
ii) When the Defendants first listed beds on Amazon, did they do so under the Birlea name?
iii) Were the Defendants notified of the fact that beds were listed under the name 'Birlea" as a consequence of
a) The order details that were provided by Amazon as a consequence of each sale of the beds complained of?
b) The receipt of and response to the email from Dan Ambalavanar of 4 September 2014?
c) The receipt of the letter?
iv) When were the Defendants notified that they were advertising beds under the name "Birlea"?
v) Did the Defendants continue to advertise beds under the name "Birlea" after they became aware of such use?
vi) Did the Defendants purchase beds from suppliers other than Profitlane Sdm Bhd?
vii) How many beds did the Defendants sell under the name "Birlea"?
viii) Did the First Defendant infringe the Claimant's EUTM?
ix) If so, is the Second Defendant also liable for any such infringements?
"Rights conferred by an EU trade mark
1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein.
2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;(b) …(c) …
3. The following, in particular, may be prohibited under paragraph 2:
(a) …(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign;(c)…(d)…(e) using the sign on business papers and in advertising;(f)…
Use of a sign in the course of trade
102 If a sign identical with, or similar to, the proprietor's trade mark is to be 'used" within the meaning of art.5 of Directive 89/104 and art.9 of Regulation 40/94, by a third party, that implies, at the very least, that that third party uses the sign in its own commercial communication. Insofar as that third party provides a service consisting in enabling its customers to display on its website, in the course of their commercial activities such as their offers for sale, signs corresponding to trade marks, it does not itself use those signs within the meaning of that EU legislation (see to that effect, Google France  ETMR 30 at  and ).
103 As was stated, inter alia by the UK Government and the Commission at the hearing and by the Advocate General at points AG119 and AG120 of his Opinion, it follows that the use of signs identical with or similar to trade marks in offers for sale displayed on an online marketplace is made by the sellers who are customers of the operator of that marketplace and not by that operator itself."
ANALYSIS OF ISSUES
Issue (i) - When did the Defendants first advertise Torino day beds ("the beds") on Amazon?
Issue (ii) - When the Defendants first listed beds on Amazon, did they do so under the Birlea name?
i) an email of 20 April 2016 from 'Rich' of Amazon Seller Support. He says "As we have discussed the below listings are created by Amazon on the same date which is 2013-02-14. The title provided are the first titles used when the listings were created. [D4G Listing] Torino Metal Single Day Bed Cream [D64 Listing] TORINO SINGLE BLACK METAL DAY BED";
ii) an email of 24 May 2016 in which 'Precy' of Amazon provided the same information and added "And this is the new update of this ASINs: for [the D4G Listing] the new title is "Birlea Torino Metal Single Day Bed Cream" and for [the D64 Listing] the new title is "Birlea Torino 3ft Single Metal Daybed, Black";
iii) an email of 7 February 2017 from Kris Linton of Amazon, in which he stated that "the title for [the Listings] were updated with the prefix "Birlea" on March 20 2015";
iv) an email of 20 June 2017 from an employee of Amazon called 'Loyiso'. She says, "The order information will pull through the information on the product detail page regardless of when the order was placed". Although this email makes no reference at all to the current brand field being used and pulled through as a prefix to the old title listing, as the Defendants' theory requires, the Second Defendant stated in cross-examination, for the first time, that he had had several telephone conversations with Amazon employees who had confirmed that was the case. These have never been mentioned before and in my judgment it is implausible that he would have failed to mention such telephone conversations, which go to the root of the Defendants' defence at trial, if they had happened. I have no doubt that his evidence on this point was untruthful.
i) I do not accept the Defendants' submission that Rich's and Mr Linton's emails are evidence that there was no Birlea prefix on the Listings at all before 20 March 2015:
a) Rich's email merely states that at the time the Listings were first created there was no reference to Birlea. The Claimant accepts that this may possibly have been the case at the point of creation of the Listings, which it puts in 2010 or earlier, but the issue I have to decide is whether the name Birlea was used at the time that the First Defendant began to use the Listings in February and March 2013;
b) Mr Linton's email refers to a change in prefix to Birlea. Mr Ambalavanar has explained the change that he made to the title of the Listings from referring to 'Birlea Furniture' to 'Birlea' on 20 March 2013. That could be described as a change in prefix to Birlea, and as such does not contradict the email from Kris Linton, in my judgment. Mr Ambalavanar's evidence is corroborated by the sales orders from that time, in relation to which all sales before that date refer to 'Birlea Furniture' and all sales after that date refer to 'Birlea'. In my judgment it is also corroborated to some extent by the spreadsheet produced by Mr Marafi showing the title of the Listings by month (attached to Mr Ambalavanar's witness statement), which shows a change in prefix from Birlea Furniture to Birlea from March to April 2013.
ii) If the Defendants' theory of partial retrospective insertion of the Birlea sign is correct, that would mean that the Listings before the prefix change in March 2013 began with the word 'Furniture', which would be nonsensical (e.g. 'Furniture 3ft Torino Bed in Black'). The Second Defendant accepted that difficulty in cross-examination.
iii) If the Defendants' theory of partial retrospective insertion is correct, it should also apply to the Defendants' own brand listings. It can be seen from the screen grab of the Defendants' seller page obtained by Mr Lester on 6 December 2016 that there are a number of products sold by the First Defendant with 'bedzonline' in the listing title and 'by bedzonline' in the brand field, but the relevant sales records refer only to the title with a single reference to bedzonline. If the brand was retrospectively inserted, one might expect to see it twice, i.e. 'bedzonline bedzonline metal daybed'. Similarly, the First Defendant sells generic mattresses. For example, one listing is for a 4ft Double Memory Foam Mattress 'by bedzonline'. The sales record might be expected to show 'bedzonline 4ft Double Memory Foam Mattress' but it does not. It merely shows the listing title with no reference to the brand. The Second Defendant in cross-examination accepted that these examples were anomalous to the Defendants' case.
iv) I do not accept the interpretation that the Defendants seek to give the email from Loyiso. As I have already stated, I do not consider that Loyiso's statement that: "The order information will pull through the information on the product detail page regardless of when the order was placed" can sensibly be interpreted to support the partial retrospective brand insertion theory. It doesn't refer to the brand, or any partial insertion. It is sufficiently vague and ambiguous that I consider that the meaning of her statement can only be accurately determined by asking her. Of course, she was not available at trial to be asked.
v) Mr Ambalavanar's evidence that he has never known a Birlea bed to be sold on Amazon without the use of 'Birlea' in the title, and Mr Sonley's evidence that he was "100% confident" that the sales order confirmation generated by Amazon took the title and description of the product sold from the Amazon page as seen by the customer at the time the order was placed, provide some additional support for my finding, in my judgment. I put it no higher than that.
vi) There is no other evidence to support the theory, save the Second Defendant's evidence that the Listings did not contain the name Birlea at the time the First Defendant began to use them. My concerns about the Second Defendant's credibility mean that I cannot accept his evidence in light of the weight of evidence against it.
vii) Finally, the theory of partial retrospective brand insertion is, in my judgment, inherently implausible. The Defendants have suggested no rational explanation for why Amazon should carry out such a retrospective change. Conversely, Mr Sonley for the Claimant provides suggestions as to why Amazon would not do such a thing, stating: "Firstly it would be detrimental for auditing purposes. However perhaps more importantly from Amazon's perspective is that it would require an enormous investment of time, cost and resources to rewrite historical data relating to potentially billions of records on a rolling basis. This would be near impossible for them to achieve." This is mere supposition on his part, albeit informed supposition, but I accept these as valid considerations, which go to the inherent implausibility of the theory.
Issue (iii) - Were the Defendants notified of the fact that beds were listed under the name 'Birlea" as a consequence of: (a) the order details that were provided by Amazon as a consequence of each sale of the beds complained of; (b) the receipt of and response to the email from Dan Ambalavanar of 4 September 2014; or (c) the receipt of the letter before action?
Issue (iv) - When were the Defendants notified that they were advertising beds under the name "Birlea"?
Issue (v) – Did the Defendants continue to advertise beds under the name "Birlea" after they became aware of such use?
Issue (viii) - Did the First Defendant infringe the Claimant's EUTM?
Issue (xi) - If so, is the Second Defendant also liable for any such infringements?
"In order to be liable with a principal tortfeasor a defendant had to be proved to have combined with the principal tortfeasor to do, or to secure the doing of, acts which constituted the tort; that that required proof that the defendant had acted in a way which furthered the commission of the tort by the principal tortfeasor and that he had done so in pursuance of a common design to do, or to secure the doing of, the acts which constituted the tort; and that whether the matters relied on by a claimant had any significance to the commission of the tort would depend on the circumstances in each case."
"I interpret this to mean that in order to fix an alleged joint tortfeasor with liability, it must 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 that act (the act found to be tortious). Liability will always be subject to the threshold requirement that the alleged joint tortfeasor's contribution to the act was more than de minimis."
i) at the time that the Second Defendant advertised the beds on Amazon using the Listings he was a mere employee of the First Defendant as he did not act as a director until 1 April 2014;
ii) as an employee he was authorised and instructed by the directors of the First Defendant to buy the beds and advertise them on the internet;
iii) even after he became a director he is only one of four directors and seven shareholders of the First Defendant; and
iv) as such he is not the controlling mind and spirit of the First Defendant.
i) The First Defendant is liable for infringement of the Mark under Article 9(1)(a)/Article 9(2)(a) of the 2009 EUTMR/EUTMR in relation to the advertisement, offer for sale and sales of beds using the Listings from 23 April 2013 onwards.
ii) The Second Defendant is jointly liable with the First Defendant as joint tortfeasor.