Biswajit Sarkar Blog >Trademark> High Court employs ‘intention to target’ approach to determine online trademark infringement
High Court employs ‘intention to target’ approach to determine online trademark infringement

High Court employs ‘intention to target’ approach to determine online trademark infringement

In a judgment of Easygroup Ltd v Easy Fly Express Ltd & Anor , the High Court of England and Wales implemented the ‘intention to target’ test to determine infringement of an online trade mark.

The claimant ‘Easy Group’ is the proprietor of the word mark EASYJET for goods and services in class 39 (transport, packaging and storage of goods, travel arrangement) and a device mark including the word easyFlights registered in class 39 for “transportation of goods … by air …; … cargo handling and freight services”.

The defendant company, Easy Fly is based in Bangladesh and is the holder of the domain www.easyfly-express.com from which Easy Fly’s services (airline cargo) was marketed.

The plaintiffs claimed that the defendant’s use of the signs resulted in infringement as well as passing off.

The Court relied on the three criteria’s laid down in the case of AK Investment CJSC v Kyrgyz Mobile Tel Ltd [2011] UKPC 7:

  • 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.

The court mainly relied on the first criteria. It was held that 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.

To determine whether targeting is taking place in the current case or not, the court 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.

Although EasyGroup claimed that the defendants would likely target EU/UK consumers as their website and Facebook page is in English, the court negated the same by saying that English is widely spoken in Bangladesh and is the dominant language use on websites.

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.

Further, on typing “cargo flight Bangladesh” on Google, the defendant’s website is the second hit. However, nothing is there to show that the service is targeted to UK or EU since the Google search included the country “Bangladesh”.

Finally, there was nothing to suggest that a UK or EU consumer was targeted by the defendants’ services.

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