Amazon won a trademark dispute for BEVERLY HILLS POLO CLUB in the UK

Amazon won an interesting lawsuit in the UK. Lifestyle Equities accused Amazon of infringement of a trademark BEVERLY HILLS POLO CLUB owned by the company.

The reason for this accusation was the fact that products sold on amazon.com and their prices were been visible for consumers in the UK and EU as a whole.

As it is well-known, a trademark owner has the right to prohibit parallel import and sales of products labeled with a trademark in another country. The logic behind this is that the trademark owner has the right to determine its distribution and price policy for every country where its trademark is registered.

In the case at hand, products with the trademark BEVERLY HILLS POLO CLUB were sold through amazon.com in four main ways:

• Amazon Exports-Retail – customers purchased products from amazon.com and they are delivered to the UK/EU;

• FBA Export – third parties sell via amazon.com while Amazon manages everything related to the logistics and shipping;

• MFN Export – third parties sell via amazon.com but Amazon does not handle the logistics;

• Amazon Global Store – consumers on amazon.co.uk can access listings for products on amazon.com.

According to the Court there is no trademark infringement by Amazon.

In two of the options – FBA Export and MFN Export sales are done by the relevant sellers not Amazon itself.

In the rest of the options Amazon is not liable too. The reason for this is that Lifestyle Equities required from Amazon in 2018 to restrict any sales from amazon.com under the same brand in the UK and the EU. Amazon took the necessary technical measures and restricted the sales with some minor exceptions which the Court considered negligible.

The Court concluded that Amazon had no intention for such sales through amazon.com in Europe although the their price were visible for consumers in the EU.

In addition, the Court pointed out the Amazon’s Terms and Conditions according to which in case of purchasing through amazon.com the consumer is the ‘importer of record’ and gained title to the products in the US.

Source: RPC – Samuel Coppard and Matt Davies for Lexology.

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Volkswagen lost a dispute against Baidu in Japan

Volkswagen has recently lost an opposition against a word trademark application for “Car-pollo” for the following goods and services:

class 9 – navigation apparatus (GPS) for vehicles [onboard computers]; car video recorders; batteries for vehicles; battery charging devices for motor vehicles; electric locks for vehicles and others;

class 12 –  wheelbarrows; airplanes; vessels; bicycles; electric bicycles;

class 42 – automatic driving cars design;

The mark was filed by the Chinese company Baidu Online Network Technology Beijing Company Limited.

Against this application, the German company evoked its rights over POLO trademark in class 12.

According to Volkswagen, both signs are confusingly similar. The first part of the later mark is CAR which is a descriptive and not distinctive word for the list of goods and services at hand.

Apart from that, POLO trademark acquired a reputation in Japan due to its longstanding market presence in the country.

The Japan Patent Office, however, dismissed the opposition. According to the Office, both trademarks are dissimilar. The word CAR is descriptive whereas the term POLO means a game played on horseback between two teams. What’s more the POLLO part in the later mark has no dominant position.

Although the earlier mark is famous in Japan, the lack of similarity prevails the possibility of consumer confusion.

Source: Masaki MIKAMI.