Case law: Court clarifies when alleged trade mark infringer is ‘targeting the public in the UK’

Businesses bringing claims under UK intellectual property law, such as for infringement of their trade marks, who are required to show that the infringer’s website was targeting the public in the UK, will welcome clarification from the court on the relevant factors to take into account.

Two groups of European and US companies which had the same distinctive word – Merck - in their names had signed an agreement covering their respective uses of the word worldwide.

The European companies were worried that the Americans were starting to use the trade mark in Europe - more widely than agreed - and started a legal action against them in the UK for trade mark infringement and breach of the agreement. Their main concern was that the Americans were using ‘Merck’ in the domain names of various websites allegedly targeting the UK, and on Facebook, Twitter, LinkedIn and other similar sites.

The UK courts had to decide if they had jurisdiction to hear the case. UK law says they have if the non-UK party – in this case the US companies - is ‘targeting’ UK consumers. A company is targeting UK consumers if has ‘manifested its intention to establish commercial relations with consumers in the UK’ in a way that amounts to use of the mark in relation to goods in the course of trade in the UK.

The issue of whether a website is targeting the public in the UK (or any other country) is a multi-factorial one which depends on all the circumstances. Those circumstances include things which can be inferred from looking at the content on the website itself and elements arising from the inherent nature of the services offered by the website. It is not enough that a website is accessible from the UK. The test is whether average consumers would consider that the website is targeted at them. Relevant factors include:

• Any statement or other aspect of the site showing it is aimed at UK customers - for example, a statement that the company serves customers in the UK, or in multiple countries that could include the UK, or a list of the areas, including the UK, where the owner of the site is prepared to send orders.
• The number of visitors to the site from the UK.
• Whether the company’s activities are multi-national.
• The language used on the site.
• If goods or services can be bought from the site, the currency in which prices are stated or goods or services can be bought.
• Use of international telephone contact numbers.
• The domain name.
• Where the owner of the site is established.
• Whether the owner has spent money on an internet referencing service to make it easier for consumers in the UK to access the site
• Use of a UK-specific top-level domain name.

Operative date

• Now

Recommendation

• Businesses bringing trade mark infringement and other intellectual property claims under UK law, and required to show that the infringer’s website was targeting the public in the UK, should ensure that they can show one or more of the factors amounting to targeting of the UK public referred to by the court in this decision.

Case ref: Merck KGaA v Merck Sharp & Dohme Corp & Ors [2017] EWCA Civ 1834