IPEC considers bed online sale trade mark issue

Birlea Furniture Ltd v Platinum Enterprise (UK) Ltd and another [2018] EWHC 26 (IPEC), [2018] All ER (D) 50

Facts:

The Claimant company was the registered proprietor of the EU trade mark no. 11644416 'Birlea' for, among other things, furniture and beds in Class 20, furniture for which it also imported.

 One of its customers was Amazon and, for that purpose, it was a vendor seller on Amazon.

The first defendant company, Platinum, imported and sold furniture, including beds. The second defendant, B, was an employee, shareholder and director of Platinum.

From April 2010 to June 2013, the Claimant supplied its products to Platinum for sale online, including a metal bed, 'Torino'.

The Claimant alleged that Platinum had infringed the mark by advertising and selling metal daybeds through Amazon via two specific listings which used the mark. It contended that B was liable for the same infringing acts as a joint Defendant with Platinum.

Issues:

The issues in the case were as follows

1. Whether infringement had taken place

2. If so, whether B was jointly liable.

Decision:

On the evidence, Platinum had first advertised Torino beds on Amazon shortly before the first sales, which were in February and early March 2013.

Platinum had listed the beds under the Birlea name when it had first listed them on Amazon.

Every sale of a bed by Platinum had generated a sales record to its seller account and an email notifying Platinum of the sale, sent to B's email account. Both had contained the title of the relevant listing at the time of the sale.

At all times, those titles had contained the name 'Birlea'.

The defendants had been notified that they had been advertising beds under the name 'Birlea' from February 2013. They had continued to advertise and sell beds under the Birlea name until May 2016.

 In the circumstances, they had infringed the claimant's trade mark.

Regarding B's liability, the factual circumstances fulfilled the requirements that B had: (i) acted in a way that had furthered the commission of the tort by the principal tortfeasor; and (ii) done so in pursuance of a common design to do, or to secure the doing of, the acts which had constituted the tort. He was jointly liable as a tortfeasor.