If your company is authorized to sell a certain brand of products in a place other than its country of origin, could you still get hit with a trademark infringement claim? It is possible. 

In a recent case decided by the High Court in the UK, Amazon was found liable for trademark infringement against a UK brand of clothing – even though the selling company was allowed to advertise this brand to customers online.

Why was Amazon held liable in this case?

Lifestyle Equities Sues for Trademark Infringement

The case was brought by Lifestyle Equities regarding the brand BEVERLY HILLS POLO CLUB, which is licensed to be sold by Lifestyle Equities in the UK and EU. BEVERLY HILLS POLO CLUB is also licensed to be sold in the U.S. through a different company, unrelated to Lifestyle Equities. 

So far, so good.

The US company that sells the brand – which was not a defendant – uses Amazon as one of its sales avenues. This is where things get more complicated. 

Lifestyle Equities hit Amazon with a trademark infringement claim in the UK because of how the online retail-delivery corporation framed the sale of BEVERLY HILLS POLO CLUB products on its platform. Specifically, Lifestyle Equities felt that Amazon’s portrayal of the brand was cutting into their UK/EU sales. They claimed that this constituted trademark infringement, at least on their turf. 

The case traveled through the High Court and the Court of Appeal before landing in front of the UK Supreme Court. The verdict came down to examining the experience of buyers.

The Audience Journey

The UK Supreme Court followed the journey of a UK- or EU-based shopper looking for BEVERLY HILLS POLO CLUB goods on the Amazon US website. The court noted several factors that plausibly suggested that the online retail giant was tailoring the experience to confuse UK/EU shoppers into thinking that they were shopping on a legitimate UK site. 

Specifically, Amazon’s US site:

• Offered prices in GBP on top of USD, 
• Added “Deliver to the United Kingdom” on the page when they detected that the IP address was in that region, and 
• Listed UK delivery options in the pricing.

Amazon argued that the standard USD prices and a link to the UK site should have been enough to signal to customers that they were not already shopping on the UK version of Amazon. While some courts agreed along the way, Lifestyle Equities ultimately received the winning ruling from  the highest court.

Target Your Audience Clearly – Not an Unlicensed One

The key grievance in this case came down to permission. BEVERLY HILLS POLO CLUB parsed out permission to use its brand to different retailers in different regions. Those retailers likely felt some reassurance in owning that corner of the market. 

Lifestyle Equities only took issue with U.S. Amazon biting into its UK buyers because they had licensed usage of the UK trademark. If Amazon or the BEVERLY HILLS U.S. retailer had also gained lawful licensing of the UK trademark, their competition would have been more – if not welcome – at least not infringing. 

This ruling could mean that online sellers have to be more careful about how they present their goods. If international shoppers buy in, trademark owners in other countries could claim infringement.