Tuesday 5 – Wednesday 6 April 2022
The Claimants appeal, with permission, the order of Michael Green J dated 23 March 2021 by which he dismissed the claim save in respect of the Second and Fourth Defendants’ admission.
The Claimants are LIFESTYLE EQUITIES C.V. and LIFESTYLE LICENSING B.V. The five Defendants are companies with the Amazon Group.
This is a trade mark dispute between the owners of the Beverly Hills Polo Club (BHPC) brand in the UK and EU (and certain other countries) and companies within the Amazon Group. The Claimant companies say that the Defendant companies have infringed their trade mark rights by allowing BHPC branded goods to be listed on their websites, in particular amazon.com, and so to be visible to consumers in the UK and EU. This is not a normal case of trade mark infringement as there are no issues of likelihood of confusion or similarity; it is accepted that the goods in question have the BHPC sign and are identical to the Claimants’ valid registered trade marks (the Claimants describe it as a `double identity’ case). The issue in this case arises because of a split in the ownership of the trade mark rights between the US and the UK/EU. The Claimants say that this is a form of `counterfeiting’ and it is destroying their business.
The Second and Fourth Defendants admitted to trade mark infringements by listing BHPC products on Amazon Global Store up to January 2019 when they were removed. Apart from that admitted infringement on amazon.co.uk which targeted UK consumers, Michael Green J found against the Claimants on all their other claims of trade mark infringement. He awarded costs to the Defendants deducting 5% for the infringement which had been admitted.