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Amazon wins trademark infringement case in the UK

By Ferraiuoli LLC - 12/02/2021

On January 27, 2020, the United Kingdom Intellectual Property Enterprise Court (IPEC), a specialist court part of the Business and Property Courts of the High Court of Justice that handles cases relating to intellectual property disputes, dismissed a trademark infringement case brought against Amazon by Lifestyle Equities, owner of fashion brand Beverly Hills Polo Club (BHPC) in the United Kingdom and the European Union.

After a business split in 2008, Lifestyle Equities became owner of the BHPC trademark in the United Kingdom and the European Union, while another company called BHPC Associates owns the BHPC brand and corresponding trademark rights in the United States. The trademarks protect clothing, luggage, watches and perfumery.

According to Lifestyle Equities, Amazon infringed its trademark by allowing BHPC products that were manufactured, promoted and commercialized in the United States by BHPC Associates to be listed on its specific websites for the United Kingdom and the European Union.

Amazon argued that, after receiving complaints by Lifestyle Equities, the company put in place measures and restrictions to protect Lifestyle Equities trademark rights and prevent any sales of US based BHPC goods from Amazon’s websites for the United Kingdom and the European Union. According to Amazon, sales of US based BHPC products from such websites had been “historically tiny” and made through Amazon Global Store, which cross-listed products from US website onto Amazon’s sites for the UK and the EU.

Justice Michael Green from IPEC said that the fact that a website is accessible from anywhere in the world, and may attract occasional interest from consumers there when this is not intended, should not give rise to any form of liability. “In my judgment it is plain that both and the BHPC listings on it are not targeted at the UK/EU consumer. Such a consumer knows full well that they are viewing or shopping on the Amazon website that is primarily directed at US consumers,”, Green stated. 

By Ferraiuoli LLC - 12/02/2021
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Ferraiuoli LLC

Ferraiuoli LLC (FLLC) was founded in 2003 by the late Blas Ferraiuoli-Martínez, Eugenio Torres-Oyola and María Marchand-Sánchez. This group was then joined in 2004 by Fernando J. Rovira-Rullán, thus forming the founding core of FLLC. FLLC has grown exponentially since its founding from a law firm with three attorneys and a support staff of three to its current size of 54 attorneys with a support staff of 38. Also, FLLC has grown from initially being known as an intellectual property and corporate law boutique law firm to a multiservice law firm that handles most matters relevant to a business while continuing to earn praise for its leading intellectual property and corporate practices.

FLLC has been ranked as a leading law firm in Puerto Rico by the professional publication Chambers Latin America in intellectual property, corporate, bankruptcy, labor & employment, real estate, and tax law. Moreover, 17 FLLC partners have been ranked as leaders in their field by the same publication. 4 FLLC partners are ranked as leaders in Intellectual Property, no other firm has more than 2. This recognition in such a short period of time is a tribute to FLLC’s business model.

FLLC prides itself in doing its work faster and more cost-efficiently yet with the same quality as that of its main competitors. The founding name partners are available at all times to attend to client matters. Their work ethic sets the tone for the rest of the firm. FLLC’s founders’ goal has been steady from the outset: become one of the premier multiservice law firms in Puerto Rico.