Hogan Lovells

Firm overview:

Stronger on the contentious side of trademark matters, Hogan Lovells is “admired” by fellow full-service firm peers. Acting on significant cases for market-leading brands, including for online retail giant Amazon in an infringement matter, places the global firm in a solid position among UK trademarks firms. Benefitting from dependable international links for multi-jurisdictional matters, Hogan Lovells has a “strong brand in the UK”. Taking a commercially-focused IP approach to its clients, its advice spans all corners of brand strategy, from familiar non-contentious trademark work, up to infringement litigation, complex licensing matters and franchising arrangements.

The range is exemplified by Hogan Lovells’ work with multinational client Mars confectionery and food company. The UK team advised on Mars’ contentious and non-contentious branding matters, including infringement, validity and licensing issues. Other key work includes acting for family-favourite crisps company Walkers in a High Court trademark litigation to protect its widely recognised packaging and acting for a large online retailer in the UK Court of Appeal on the use of third party brands in its online stores.

Team overview:

Hogan Lovells has offices across multiple continents, covering key commercial hubs around the globe. Nearly 20 of its locations are in Europe alone. The firm is recognised as a leading trademarks firm in multiple jurisdictions including by WIPR Insights in China, Germany and the US. Sahira Khwaja is a commercially-focused IP lawyer based in the London office. Khwaja’s primary client base is businesses in the consumer and TMT industries, and she has worked with well-known brands such as Skype, advising on brand issues in the UK, and advising Ford on its sale of Volvo. Joel Smith focuses on IP litigation and on IP in global transactions and commercial arrangements. He has acted in trademark disputes in the IPEC, High Court, Court of Appeal and Privy Council. Counsel Alastair Shaw is an experienced litigator across trademarks, copyright, design, and trade secrets cases often involving multiple jurisdictions.

Key matters:

• Lifestyle Equities and another (Respondents) v Amazon UK and others (Appellants) Hogan Lovells represents global e-commerce company Amazon in the ongoing and closely-watched matter against Lifestyle Equities, owner of luxury brand Beverly Hills Polo Club. Lifestyle is the owner and exclusive licensee of the mark ‘Beverly Hills Polo Club’ in the EU and UK and brought the matter against Amazon, claiming the marketplace has infringed on the mark by advertising US branded goods, owned by another entity, in the UK and EU.
• The case is significant in the ever-changing online world for brands, and also raised the issue for the courts as to whether the goods were specifically targeted at the UK and EU market. Amazon succeeded in the first instance, however this was overturned by the Court of Appeal, where the judge summarised the principles of targeting that had been discussed in Argos v Argos and Merck v Merck. The Court of Appeal found that each page of a customer’s journey on Amazon were targeted at the UK—the purchaser, shipping and billing addresses were UK based, and the currency in GBP.
• The matter concluded in favour of Lifestyle, but Amazon now seeks permission to appeal to the UK Supreme Court, on the basis that the Court of Appeal: (i) should not have overturned the High Court’s analysis of whether the listings were targeted at UK/EU consumers; and (ii) misinterpreted the EU case law regarding whether sales on foreign websites could constitute infringement of the trademarks in the UK/EU.

Clients:

Amazon, Ford, Fraser-Nash, Mars, News UK, Prudential, Skype, The Financial Times, Stichting BDO, Walkers, Zeebox