High Court employs ‘intention to target’ approach to determine application of EU/UK law in online trade mark infringement case

A few days ago the High Court of England and Wales (Arnold J) issued an interesting judgment concerning determination of the law applicable to an online trade mark infringement. It is Easygroup Ltd v Easy Fly Express Ltd & Anor [2018] EWHC 3155 (Ch) (21 November 2018 ). 

The claimant, easyGroup is the owner of a large number of marks. In particular, it is the proprietor of the word mark EASYJET for goods and services in Class 39 (transport, packaging and storage of goods, travel arrangement) of the Nice Classification, and a device mark including device mark the word easyFlights registered in respect of (inter alia) “transportation of goods … by air …; … cargo handling and freight services”, also in Class 39. 

The two defendants’, Mr Chowdhury and his company Easy Fly, both based in Bangladesh, are the holders of the domain www.easyfly-express.com from which Easy Fly’s services (airline cargo) were marketed.

                                               

easyGroup claimed that the defendants’ use of the signs amounted to infringement its registered trade marks, as well as passing off. 

However, since the defendants’ company is established in Bangladesh, the High Court of Justice of England had to apply certain criteria when granting its permission to “serve out of the jurisdiction of the UK”. According to settled case law, in particular, AK Investment CJSC v Kyrgyz Mobile Tel Ltd [2011] UKPC 7, the three basic criteria require the claimant to:

• Satisfy that there is a real prospect of success on the claim, 
• Show that there is a good arguable case that the claim against the foreign defendant falls within the classes of case for which leave to serve out of the jurisdiction may be given (the gateways), and 
• Satisfy the court that in all the circumstances England is clearly or distinctly the appropriate forum.

For the purpose of this post, the primary focus will be on whether the first condition is met, i.e. the aspect of “real prospect of success”. 

What is the prospect of success?

In order to qualify as use that infringes a UK or EU trade mark, the use of the defendant’s sign must essentially be targeted at an UK audience for the former, or at somewhere in the EU for the latter. 

Arnold J noted that the issue of targeting has been considered in two recent decisions of the Court of Appeal. In particular, Kitchin LJ in Merck KGaA v Merck Sharp & Dohme Corp [2017] EWCA Civ 1834 considered a number of rulings of the Court of Justice of the European Union (CJEU) in the context of ‘targeting’ towards specific Member States. These include Football Dataco v Sportradar GmbH & Sportradar AG, C-173/11, and Peter Pammer v Reederei Karl Sclüter GmbH & Co.KG, C-585/08. Readers might also recall the case of Omnibill v EGPSXXX & Mr Robert Ashley Carter [2014] EWHC 3762 (IPEC) [see here], where those cases were considered in relation to targeting and online copyright infringement. 

In those decisions the CJEU suggested a number of non-exhaustive criteria to determine when targeting occurs. This criteria include factors such as: 

• whether the trader’s activity is directed to the Member State of the consumer’s domicile; 
• use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established; 
• mention of telephone numbers with an international code; use of a top-level domain name other than that of the Member State in which the trader is established; 
• mention of an international clientele composed of customers domiciled in various Member States.

Arnold J observed that: 

• the type of business of Easy Fly is transporting various foods within Bangladesh; 
• its customers are predominantly Bangladeshi companies; and 
• the business of Easy Fly comes primarily from direct marketing activities or through freight forwarders in Bangladesh. 

easyGroup supported its claim that the Defendant’s would target the UK and the EU by noting that their website and Facebook page are in English. The judge was not impressed, as English is widely spoken in Bangladesh. It is also the dominant language used on websites globally. 

Regarding the contact details, it was established on the basis of the evidence submitted by the parties that there were no UK or EU contact details on the defendants’ website or social media platforms.

Finally, by typing in the words “cargo flight Bangladesh” on Google Search, the Defendants’ website showed up as the second hit. However, there was nothing to suggest that the service targeted the UK or Europe since the Google search included the country “Bangladesh”. 

Against this background, there was nothing to suggest that a UK or EU consumer was targeted by the defendants’ services. The only other factor relied upon by easyGroup as supporting a conclusion to the contrary was the resemblance between the defendant’s signs and easyGroup’s trade marks.