Ashley's Frasers group dodges hefty damages bill in trademark appeal victory

"Frasers had lost the underlying infringement case seven years ago but mounted a fresh challenge against the scale of damages it was ordered to stump up. At an appeal hearing in April, the retailer's lawyers argued that the bill should be slashed because the third-party companies trading under the Beverly Hills Polo Club name, and on whose behalf Lifestyle Equities was attempting to recover losses, had never been officially registered as licensees in the United Kingdom."

"The Court of Appeal duly sided with the high street giant, ruling that it was "too late" for Lifestyle Equities to retrospectively register the licences in question. With the original claim dating back to 2018 and the licensing arrangements stretching back nearly a decade, the court concluded that the additional claims "appear to be well out of time" and that allowing them through would amount to an "unprincipled windfall" for businesses that had not properly placed themselves on the public register."

"Counsel for Frasers warned during the appeal that permitting such claims to succeed would expose accused infringers to ambush litigation, leaving defendants "suddenly confronted with a Trojan Horse full of licensees claiming damages" of whose existence they had no prior knowledge."

Frasers Group, formerly Mike Ashley’s discount sports chain, faced a trademark infringement dispute brought by Lifestyle Equities, owner and licensor of the Beverly Hills Polo Club brand. Lifestyle Equities alleged Frasers sold goods under the “Santa Monica Polo Club” label in infringement of the Beverly Hills Polo Club trademark. Frasers lost the infringement case years earlier, but challenged the damages amount. At appeal, Frasers argued that third-party traders using the Beverly Hills Polo Club name were not officially registered as UK licensees, so Lifestyle Equities should not recover losses on their behalf. The Court of Appeal agreed, finding the additional claims were out of time and would amount to an unprincipled windfall.

Read at Business Matters