Why Delhi HC order on BHPC trade mark sets a significant precedent

Intellectual property (IP) protection has long been a concern in India, primarily due to a lack of awareness and abuse by unscrupulous businesses. The Thursday ruling by the Delhi High Court in favor of Lifestyle Equities, the brand owner of “Beverly Hills Polo Club” (BHPC), has set a significant precedent. The court ordered Amazon to pay ₹340 crore (approximately $39 million) in damages for willful trademark infringement.

Lifestyle Equities has actively registered and used the BHPC trademark in India since 2007. The company filed a trademark infringement lawsuit against Amazon Technologies in 2020, alleging that Amazon’s India platform sold apparel under its private label “Symbol,” which featured a logo strikingly similar to the BHPC mark. This led to consumer confusion and brand dilution.

This ruling is regarded as a landmark judgment due to the substantial damages awarded against a US firm in a trademark case in India.

“It underscores the critical need for e-commerce platforms to enforce stringent trademark compliance, especially in light of recent investigations into Amazon’s business practices in India,” says a Mumbai-based corporate IP lawyer who wishes to remain anonymous for client confidentiality.

In addition to the hefty fine, the Delhi High Court issued a permanent injunction, restraining Amazon from using the infringing mark. Lifestyle Equities had petitioned in 2020, claiming that Amazon’s India platform sold apparel with a logo nearly identical to BHPC’s at significantly lower prices.

By ordering the $39 million in damages for infringing upon the BHPC trademark, the court emphasised that Amazon was well aware of BHPC’s exclusive rights, citing prior litigations in multiple jurisdictions, including the UK.

The court described Amazon’s actions as “deliberate and willful infringement,” highlighting the company’s strategy of obfuscating liability by operating in multiple roles—intermediary, retailer, and brand owner.

Indian courts have also previously issued similar intellectual property rights (IPR) related rulings, primarily in the pharmaceuticals, engineering, apparel, and fashion industries, although such substantial fines have been rare.

One notable recent case in the trademark area is the Delhi High Court’s ruling in the Sir Ratan Tata Trust v. Dr. Rajat Srivastava case. On February 7, the court ruled that the name “Ratan Tata” is a well-known trademark that must be protected from unauthorized use. This decision came in a trademark suit filed by Tata Group and the Sir Ratan Tata Trust against the misuse of the Tata brand and the name of the late Ratan Tata.

The lack of awareness is also a key driver behind the rise in trademark infringement cases in India. Many business owners, even those who are informed, are not fully aware of the broad scope of IP protection, especially with regard to trademarks. According to the law, it’s not just the abuse of the original mark, but also the use of a similar style or look, that is considered infringement.

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