Targeting And The Long Arm Of The U.K. Courts

A decision of the U.K. High Court of Justice illustrates the long reach of the U.K. courts in a trademark context. Easy Group Limited v. Easyway SBH [2021] EWHC 2007.

The Facts

The plaintiff is the owner of the U.K. registered trademark EASYJET registered in respect of "transportation of......passengers and travellers by air; arranging of transportation of passengers and travellers by land; airline services; travel agency and tourist office services" and other related services. The plaintiff also owned registrations for EASYCAR, EASYBUS and EASYHOTEL. It was not disputed that the EASYJET word mark had an enhanced distinctive character because of extensive use of the mark in association with the "transportation of......passengers and travellers by air" and "airline services" since 1995.

The defendant was established in 2007 in St. Barthelemy ("St. Barts"), a small island in the French Caribbean having just under 10,000 residents. Its primary activity is providing an airport "meet and greet" service for visitors to St. Barts, but it also books flights and offers accompanying car or boat travel in St. Barts. It used 3 signs: the word "EASYWAY", the words "EASYWAY SBH", and a stylized logo as shown below:

Only small planes (from 9 to 19 seats,) can arrive at St. Barts" airport. The majority of passengers arrive on international flights to larger airports on neighbouring islands, such as Princess Juliana Airport on St Maarten, from where they need to take a connecting flight to St. Barts. The defendant does not provide the "meet and greet" services themselves but arranges for local agents to do so. The defendant also arranges for similar "meet and greet" services at airports on other islands, such as Puerto Rico, Guadeloupe, and Antigua.

The defendant also offers other services on its website. For instance, they arrange private flights, and hotel bookings and small numbers of boat charters and villa rentals. For a time, they also offered car rentals services.

The plaintiff advised the defendant of its position. The plaintiff subsequently sued for infringement of its U.K. registrations and for passing off in the U.K. High Court. The action was hard-fought and proceeded to trial.

The Decision

The Judge concluded there was a likelihood of confusion arising from each type of use made by the defendant. The key points were that:

• The plaintiff's marks are word marks not restricted to any colour or font.
• The marks were not restricted to low-cost services.
• The marks are not identical to the defendant's signs but there is at least a medium degree of similarity.
• Although the defendants' services were not all identical to those for which the marks were registered there was, on the whole, a high degree of similarity.
• The plaintiff's marks benefit from an enhanced reputation through extensive use.
• The "family of marks" argument helped the plaintiff given the nature of the family (travel-related marks) and the fact that the defendant's business was also travel-related. These outweigh factors pointing the other way such as the descriptive nature of the word "easy" and the lack of evidence of actual confusion.

These conclusions applied to both the use of the defendant's signs in direct acts and also to use thereof on the website.

Targeting

Leaving aside this conclusion the defendant argued that the U.K. court did not have jurisdiction to rule on matters which took place in St. Barts and that it was not offering services in the U.K.

Targeting is a principle derived from previous decisions of the CJEU, the Highest Court of the EU. The principle is applied to determine whether using a trademark on a website, ostensibly outside the UK, constitutes use of the mark in relation to goods or services in trade in the U.K. gives rise to liability within the UK. Essentially, mere accessibility of a website from a jurisdiction is not enough for liability but an offer for sale targeted at that jurisdiction will be.

Targeting is considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Evidence that a trader intends to target consumers in the UK may be relevant in assessing whether its advertisement has that effect.

The court must evaluate all the circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example with a website promoting trademarked products, including the UK in a list or map of the geographic areas to which the trader will dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence. The court may decide that an advertisement is directed at the UK, given a number of matters such as the appearance and content of the website including whether it is possible to buy goods or services from it. The circumstances may extend beyond the website itself and include, for example, the nature and size of the trader's business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.

The fact that services are actually offered abroad is not a defence to infringement provided that the offer for such services is made in the U.K. Otherwise, there would be no act of infringement even if the defendant opened a physical shop on every High Street in the UK so long as it only sold tickets for flights in St. Barts.

On this issue, the Judge concluded that the defendant's website was targeted at the UK, notwithstanding that it is also targeted at the US.

The Canadian Position

The rights associated with a registered trademark are territorial and a Canadian court does not have jurisdiction concerning infringement that takes place wholly abroad. There are three ways jurisdiction may be asserted against an out-of-province defendant: (1) presence jurisdiction; (2) consent-based jurisdiction; and (3) assumed jurisdiction.

To determine when jurisdiction should be assumed, Canadian courts apply the "real and substantial connection" test as adopted and developed by the Supreme Court of Canada. The test was designed to "prevent overreaching.and [to restrict] the exercise of jurisdiction over extraterritorial and transnational transactions." The "real and substantial connection" allows the court to assume jurisdiction).

The Supreme Court of Canada has identified the following presumptive connecting factors as grounding a court's assumption of jurisdiction:

• The defendant is domiciled or resident in the province;
• The defendant carries on business in the province;
• The tort was committed in the province; or
• A contract connected with the dispute was made in the province.

The plaintiff must demonstrate the existence of at least one of the four rebuttable presumptive connecting factors listed above before a court in Canada will assume jurisdiction over an action involving a foreign defendant. The factors have been applied differently depending on the underlying cause of action. The Supreme Court of Canada has yet to consider the application of this approach in a trademark case involving the Internet.

Besides showing jurisdiction a plaintiff must show that the service in issue is being performed or offered to be performed in Canada by the defendant. However, current case law supports the position that reservation services offered to Canadian consumers in Canada are sufficient to show use in Canada so long as Canadian consumers received a material benefit.

Comment

The concept of targeting seems to be a reasonable method for determining when jurisdiction should be assumed but its application has yet to be considered by a Canadian court.

A version of this article originally appeared in the Lawyer's Daily published by LexisNexis Canada Inc.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr John McKeown
Goldman Sloan Nash & Haber LLP
Suite 2100 181 University Avenue
Toronto
M5H 3M7
CANADA
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