Case No. IP-2015-000152

60.Mr Small’s primary case advanced for the Defendant is that it has not used the sign complained of at all. It has merely listed a generic 20ft Aluminium flagpole on Amazon and no more. It did so using the individual ASIN and EAN for each Listing, in accordance with the honest practices of Amazon, which the Defendant had no control over. However, if the Listing had instead been for a ‘DesignElements 20ft Aluminium Flagpole’, Mr Small accepts (as did Mr Coles in evidence) that the Defendant would have ‘used’ the sign complained of.61.I do not find Mr Small’s argument to be a logical one. I disagree that there is a material difference in the use of the sign complained of in the two scenarios presented by Mr Small for the Defendant. How can it be that offering for sale and selling the Product on a Listing entitled ‘20ft Aluminium Flagpole’ ‘by DesignElements’ is not a use of the sign complained of, whereas offering for sale and selling the Product on a Listing entitled ‘DesignElements 20ft Aluminium Flagpole’ is? It is not the case that the title of the listing is ever presented to the consumer or potential consumer without the additional words ‘by DesignElements’ also being visible. Even if the consumer might search against for the title without the sign, the words ‘by DesignElements’ appear after the title of the listing, whether in a search results list or in the listing itself, as can be seen from figures 1 and 2. Whether the sign complained of appears in the listing title itself, or in the descriptor ‘by DesignElements’, it still acts to indicate the origin of the goods for sale on the listing, in my judgment.62.In making this finding, I do not accept Mr Coles’ attempts to define the words ‘by DesignElements’ as merely a ‘shop name’, by which I understand him to mean the name of the seller who originally created the listing. It is clear from the procedure for creating a new Amazon listing, which I have been taken through, that these words have been taken from the specified manufacturer of the product, and not the creator of the listing, which also explains why the product is described as being ‘by’ the brand. If the average consumer were to click through to the “Features and details” section of the Listing, he would discover that the manufacturer is also named as DesignElements. I am satisfied that the average consumer would be likely to do so, as he is likely to be considering all of the information in order to assess the utility and quality of the offered product, which are two of the qualities most important to his decision to purchase.63.For those reasons I do not accept the Defendant’s submission that it was merely using a ‘generic’ listing for a 20ft Aluminium Flagpole. The Listings are not generic. Whenever the item is presented to a consumer or potential consumer it is expressed to be ‘by DesignElements’ which that consumer can easily discover is the manufacturer’s brand. 64.I accept that some people who create listings for branded products which are not their own mis-describe the brand so that their own shop name or trading name appears here, as Mr Coles suggests: for example, on a search for Nike trainers, the vast majority of the entries which are returned contain a description of a type of Nike trainer in the title and then say ‘by Nike’, but a few say, for example, ‘by La Redoute’ (a large and well-known French department store and online retailer). However, for the reasons I have given I am satisfied from the listing process that it is the manufacturer, not the original seller, that is required to be displayed here, and which the average consumer expects to find here. The seller name (whether that is the seller who originally set up the listing or one of multiple sellers who sell on the listing thereafter) has its own place in the listing, where it is made clear that they are the supplier of the product. 65.For those reasons I am satisfied that the Defendant has used the sign complained of, namely ‘DesignElements’, to offer or expose the Products for sale in the United Kingdom, and put them on the market in the United Kingdom, pursuant to section 10(4)(b) TMA.