On January 27, 2021, the UK Intellectual Property Enterprise Court (IPEC) dismissed a patent infringement lawsuit against Amazon, the e-commerce retailer.
The dispute emerged after Beverly Hills Polo Club (BHFP) owner Lifestyle Equities accused Amazon of infringing on its patent rights by allowing its licenced products to be listed on Amazon’s UK and EU websites.
According to Lifestyle Equities, BHPC products that were lawfully made, advertised, and distributed in the United States with the permission of the US rights owner are being marketed and sold by Amazon in the United Kingdom and the European Union, which is a kind of counterfeiting.
However, Amazon said that the case was about stopping shoppers in the UK/EU from seeing BHFP products, and Mr. Eli Haddad, the managing director of Lifestyle Equities, agreed that this was his goal.
The court heard that Mr. Haddad and his two brothers broke up in 2008, and that the latter have owned the BHPC name and trademark rights in the US since then through their firm, BHPC Associates. This condition led to a controversy over Mr. Haddad’s brothers’ permit or licence, as Mr. Haddad wanted buyers to be unable to see, in fact, the price at which BHPC branded products are sold in the United States.
Amazon claimed that the controls placed in place to secure IP rights were successful in blocking sales to the United Kingdom and the European Union, and that the action was thus wholly unfair.
This were not “false” or “counterfeit” products, according to Justice Michael Green, since they were made and sold in the United States with the permission and consent of the US rights holder. He also discovered that the fact that the website is available from everywhere in the world, and that it may sometimes draw attention from users there when it is not expected, does not result in any kind of liability.
Both amazon.com and the BHPC listings on it are not aimed at the UK/EU consumer, according to Justice Green. Customers are aware that they are browsing or ordering on the Amazon platform, which caters mostly to Americans. He said that companies and brands would deal with the conflict between trademark territoriality and the global existence of the internet.
He dismissed the charges of piracy based on BHPC product pages on Amazon.com, adding that Amazon should only be held responsible for importing the items if it wanted to distribute them freely in the UK and EU.
Lifestyle Equities’ claims of mutual responsibility perplexed Justice Green, who concluded that the plaintiffs had not charged the right party over their allegations of targeting.
Since the peculiar and complicated question of split trademark rights surrounding BHPC products was brought to Amazon’s notice, he thought it acted fairly and responsibly. He discovered that the limitations imposed by Amazon, first with Amazon Global Store in 2018 and then with Amazon.com in 2019, had eliminated any chance of violation.