ASIN Numbers and Trade Marks - Birlea Furniture v Platinum
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Intellectual Property Enterprise Court (Judge Melissa Clarke) Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd and another  EWHC 26 (IPEC) (11 Jan 2018)
Sites like Amazon offer unparalleled opportunities to both suppliers and consumers. To suppliers they offer a massive worldwide market that they could never access in any other way. Conversely, they offer consumers a wider choice of suppliers than would otherwise be available thereby enabling them to source products at the optimum price.
Sellers are allocated a unique identifier which Amazon calls an ASIN ("Amazon Standard Identification Number"). Such identifier allows consumers to specify the goods they need and identify the businesses that supply them. That's fine so long as the ASIN is used by the same supplier, the goods are from the same source or are fungible. However, difficulty can arise when a supplier seeks to brand goods to be supplied under someone else's identifier.
In Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd and another  EWHC 26 (IPEC) (11 Jan 2018) Birlea Furniture Ltd. ("Birlea") sued its former distributor, Platinum Enterprise UK Ltd which trades as "Bodyease", and that company's executive director Mohammed Raheel Baig ("Mr Baig") for trade mark infringement because Bodyease had used the same ASINs as Birlea's to market products that competed with Birlea's. Birlea alleged that ASIN B00BFS3D4G referred to "Birlea Torino Daybed - Metal, Cream, Single" and ASIN B00BFS3D64 to "Birlea Torino 3ft Single Metal Daybed, Black" both of which incorporate the word BIRLEA for beds that Birlea had registered as a European Union trade mark for beds and other furniture in class 20 from 23 April 2013 under registration number EU011644416.
Bodyease and Mr Baig replied that the ASINs did not refer to that trade mark when Bodyease started to list goods under them, They reasoned that the ASINs could cover any day bed. They alleged that on or around the 20 March 2015 the Birlea changed its ASINs to incorporate its trade mark, Bodyease learned of that change only from a letter before action from Birlea's solicitors on 6 May 2015 and ceased to use the identifiers immediately. They contended that they had done nothing wrong until the change and should not be liable for marketing their goods under the ASINs between the change and their becoming aware of it.
The issues that Her Honour Judge Melissa Clarke had to decide were when Birlea started to refer to its EU trade mark in its ASINs and whether Mr Baig should be liable as a joint tortfeasor. Her Honour found that the Defendants started to list their goods under ASIN B00BFS3D4G from 27 Feb 2013 and ASIN B00BFS3D64 from early March of the same year. Preferring the claimant's evidence to the defendants,' the learned judge found the ASINs referred to the BIRLEA mark from the very first listing and that the defendants would have known that to have been the case from automatically generated emails containing references to the BIRLEA mark from their very first sale. It followed that Bodyease had infringed Birlea's EU trade mark from February 2013 and that Mr Baig was also liable as a joint tortfeasor in accordance with the Supreme Court's judgment in Sea Shepherd UK v Fish & Fish Ltd  AC 1229,  UKSC 10,  2 All ER (Comm) 867,  1 Lloyd's Rep 593,  2 WLR 694,  4 All ER 247,  1 AC 1229,  WLR(D) 102 as explained by Judge Hacon in Vertical Leisure v Poleplus Limited  EWHC 841 (IPEC).
The judge concluded that the use of the ASINs fell within the prohibition in art 9 (2) (a) of the EU trade mark regulation (Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark OJ L 154, 16.6.2017, p. 1–99) because of a concession that such use would infringe by the defendants. That concession was premised on an assumption that a reference to an ASIN fell automatically within the prohibitions of art 9 (3) (b) and (e). With the benefit of hindsight, that raises the question of whether it was a necessary or even sensible concession to make?
The judgment did not explore an issue that I have encountered more than once but which has yet to be determined. What happens if a competitor buys goods that are identical to those that are sold under a trade mark from the trade mark owner's supplier and offers them for sale under the mark? There is no misrepresentation to consumers as to the origin, nature or quality of the goods but the trade mark owner loses a sale.
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