In 2020 Lifestyle Equities C.V., an Amsterdam based company, initiated a case against Amazon Technologies, Cloudtail India Private Limited and Amazon Seller Service Private Limited for the infringement of their registered "Beverly Hills Polo Club" trademark. It was alleged that the Defendants have been using a mark that is identical or deceptively similar to the Plaintiff's.
The trademark of the Plaintiffs consists of the word-mark 'BHPC' along with the accompanying logo i.e., the image of a "charging polo pony, the rider and the polo stick or mallet". The Plaintiff claims that this combined use of the word mark and the logo serves as a unique identifier of the Plaintiff's brand.
In the plaint, the Plaintiff alleges that Defendant 1 was engaged in the sale of apparel products, with Defendant 2 serving as the retailer on the e-commerce platform www.amazon.in, which is operated by Defendant 3. These products were sold under the private label "Symbol," featuring a horse device mark strikingly similar to the BHPC logo, thereby constituting trademark infringement and unauthorized use. The Plaintiffs contend that this was a deliberate attempt to exploit the goodwill associated with the BHPC trademark, as the logo design is a distinctive and valuable element of the BHPC brand.
On October 12, 2020, the Court heard the case at the ad-interim stage, where Defendants 2 and 3 were present. However, Defendant 1 failed to appear despite being served in advance. The Court, therefore, passed an Order granting an ad-interim injunction restraining Defendant 1 and 2 from infringing the Plaintiff's trademark and directed Defendant 3 to take down the products of Defendant 1 within 72 Hours of the URL's being communicated to them.
Further on April 20, 2022, Defendant 1 failed to appear despite being served and was proceeded against ex-parte. Defendants 2 and 3 were instructed to submit separate affidavits detailing their exact relationship with Defendant 1, along with other directives. Defendant 2 submitted that a license agreement had been executed between itself and Defendant No. 1.
On September 5, 2022, Defendants No. 1 and 2 expressed their willingness to (i) accept an injunction decree and (ii) pay reasonable damages. As a result, the matter was referred to the Delhi High Court Mediation and Conciliation Centre, where it was confirmed that Defendant No. 1 had appeared before the Court. However, Defendant 1 subsequently withdrew from any liability for paying damages, asserting that, under the brand license and distribution agreement, Defendant 2 alone was responsible for compensating the Plaintiff. In response, the Plaintiff argued that the trademark infringement fell outside the scope of the brand license agreement, holding both Defendant 1 and Defendant 2 accountable for damages. In its order dated March 2, 2023, the Court ruled that the Plaintiffs were entitled to a permanent injunction against Defendant 1, prohibiting any further use of the infringing logo.
The Court observed that the Defendants had failed to comply with specific Court orders to disclose the precise nature of their relationship with one another. Despite repeated directives, the Defendants did not provide a clear and detailed explanation regarding the legal, financial, and operational connections between Defendant 1, Defendant 2, and Defendant 3, which was crucial to determining their respective liabilities in the matter. This lack of transparency was seen as a failure to adhere to the Court's instructions and raised concerns regarding the veracity of the Defendants' claims and their intentions.
Notwithstanding the aforementioned omission, the Court noted that certain facts remained undisputed. Specifically, it was acknowledged that the brand "Symbol" was owned by Defendant 1, who had granted a license to Defendant 2 to use and distribute the brand under the terms and conditions set forth in the Amazon Brand License and Distribution Agreement. This agreement governed the relationship between Defendant 1 and Defendant 2, outlining the rights, responsibilities, and obligations with respect to the use of the "Symbol" brand, including the distribution and marketing of products under this brand name.
Moreover, the Court also recognized that Defendant 3 is a corporate entity that operates as part of the Amazon Group, which is a multinational conglomerate engaged in various business sectors, including e-commerce, technology, and digital services. Defendant 3, as part of this larger corporate structure, was responsible for operating the online platform on which the infringing products were sold. The Court emphasized that the involvement of Defendant 3 in facilitating the sale of the disputed products was an essential element in assessing the overall liability of the parties involved, particularly in the context of the infringement of the Plaintiff's intellectual property rights.
The use of the disputed logo or mark is undisputed in this case. Defendants 2 and 3 are already subject to a permanent injunction, which restrains them from further use or dissemination of the infringing logo. Additionally, this Court has also extended similar restrictions against Defendant No. 1, prohibiting any further infringement or involvement in the unauthorized use of the logo.
The central issue, however, revolves around whether Defendant 1 can be held liable for damages arising from its clear electronic infringement, particularly given its role in facilitating Defendant 2's infringing activities on Defendant 3's platform. Specifically, the Court had to determine whether Defendant 1, as the owner of the brand "Symbol" and the primary party responsible for licensing it to Defendant 2, could be held accountable for the harm caused by Defendant 2's sale of infringing products on Defendant 3's platform.
After carefully considering the facts and the legal principles involved, the Court concluded that Defendant 1 was indeed liable for the damages. The Court found that Defendant 1, by granting the license to Defendant 2 and thereby enabling the sale of the infringing products, played a significant role in the infringement. Defendant 1's direct involvement in the creation and distribution of the infringing logo, coupled with its knowledge of Defendant 2's actions on Defendant 3's platform, led the Court to an unequivocal conclusion: Defendant 1 must be held accountable for the resulting damages caused by the e-infringement. Therefore, the Court ruled that Defendant 1 is jointly and severally liable for the infringement and the corresponding damages.
Therefore, on February 25, 2025, the Court decreed the suit in favour of Plaintiffs and against the Defendants. A damages decree of $38.78 million (₹336,02,87,000) was awarded to the Plaintiffs against Defendant 1, which if paid within three months, no interest applies; otherwise, a 5% annual interest will accrue until full payment. Additionally, a cost decree of ₹3,23,10,966.60 plus court fees was granted.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
