9th Circ reignites brand conflict between beauty brands Ayla and Alya


A gavel is seen on legal books in Washington, DC, the United States on May 14, 2021. REUTERS / Andrew Kelly

  • American Ayla sues Australian Alya for trademark infringement
  • San Francisco court declared no US jurisdiction over Alya
  • 9th Circ said the sales, announcements and distribution center in the United States warranted the competence

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(Reuters) – Australian skin care company Alya Skin faces allegations in the United States that it infringed trademarks owned by San Francisco-based beauty brand Ayla, the 9th ruled on Friday. United States Court of Appeals, setting aside a San Francisco federal court’s dismissal of the case.

Alya’s business activity in the United States has justified federal jurisdiction, with U.S. District Judge Jed Rakoff, sitting by designation, wrote for a panel of three judges unanimously.

Ayla and her attorneys Gregory Smith and Peter Gregora of Lowenstein & Weatherwax did not immediately respond to a request for comment, nor did Alya or her attorney David Grossman of Loeb & Loeb.

Ayla for follow-up Alya in 2019, alleging that her cosmetics of the same name were likely to confuse consumers. United States District Judge Haywood Gilliam fired the complaint later that year, concluding that the Australian company did not have enough contact with the United States to warrant federal jurisdiction over it.

Ayla argued U.S. jurisdiction over the case was appropriate on appeal because, among other things, ten percent of Alya’s sales are to Americans, its only distribution center outside of Oceania is in Idaho, and Alya has announced that its products were approved by the United States Food and Drug Administration. .

Rakoff, joined by U.S. Tour judges Clifford Wallace and Daniel Collins, agreed with Ayla and reinstated the case on Friday.

Alya’s marketing, sales and operations “reflect a strong focus on the United States,” Rakoff said.

Rakoff noted Alya’s promotion of its products “by means of references explicitly directed at Americans.” He cited an Alya Instagram post that began with “ATTENTION USA BABES”, her Black Friday sales ad taking place “the day after Thanksgiving Day in the United States”, and statements on her website that his products were featured in American magazines, including Vogue and Teen Vogue.

“The fact that Alya Skin was able to target a large portion of her advertising to an international or Australian audience does not change the jurisdictional effect of marketing specifically targeting the United States,” said Rakoff.

Rakoff also said that Alya’s 10% of sales in the United States was substantial, even though it sold more products elsewhere, and that its distribution center in Idaho was “particularly telling.”

“Although the distribution center shipped Alya Skin products worldwide, the contract performance clearly provided for the shipment of products from Idaho to consumers across the United States,” said Rakoff.

And the FDA-claimed approval of Alya indicated that she “was seeking the benefits offered by this country’s regulatory regime,” Rakoff said.

The case also stems from Alya’s US activities, and US jurisdiction would not be unreasonable despite the distance from Alya’s home in Australia, Rakoff said.

The case is Ayla LLC v Alya Skin Pty Ltd, 9th United States Court of Appeals, No. 20-16214.

For Ayla: Gregory Smith and Peter Gregora from Lowenstein & Weatherwax

For Alya: David Grossman of Loeb & Loeb