Lifestyle Equities C.v v. Hornby Street (MCR) Ltd

JurisdictionEngland & Wales
JudgeHacon
Judgment Date30 November 2020
Neutral Citation[2020] EWHC 3320 (IPEC)
CourtIntellectual Property Enterprise Court
Docket NumberClaim No. IP-2020-000060
Date30 November 2020

[2020] EWHC 3320 (IPEC)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERY COURTS OF ENGLAND AND WALES

INTELLECTUAL PROPERTY LIST (ChD)

INTELLECTUAL PROPERTY ENTERPRISE COURT

Before:

Before HIS HONOUR JUDGE Hacon

Claim No. IP-2020-000060

Between:
(1) Lifestyle Equities C.V.
(2) Lifestyle Licensing B.V.
Claimants
and
(1) Hornby Street (MCR) Limited
(2) Regency Trading Limited
(3) Santa Barbara Polo Club
(4) SB Members LLC
(5) Toqir Abbas
(6) Arunkumar Devij Pindoria
(7) Joanne Claire Swift
(8) Santa Barbara Polo & Racquet Club
Defendants

Thomas St Quintin (Instructed by Brandsmiths) appeared on behalf of the Claimants

Lindsay Lane QC (Instructed by Burges Salmon LLP) appeared on behalf of the Third, Fourth, and Eighth Defendants

Andrew Lenon QC appeared on behalf of the First, Second, Fifth, Sixth, and Seventh Defendants

Monday, 30 November 2020

(9.00 am)

Hacon JUDGE
1

This is an application by the third, fourth and eighth defendants for a stay of the proceedings pursuant to section 9 of the Arbitration Act 1996 and CPR 62.8.

2

Those three defendants have been referred to by the parties as the SBPC Defendants, the letters standing for Santa Barbara Polo & Racquet Club. The remaining defendants call themselves the MCR and Regency Defendants. Lindsay Lane QC appears for the SBPC Defendants; Andrew Lenon QC appears for the MCR and Regency Defendants; Thomas St Quintin appears for the claimants, which are the respondents to this application.

3

Although all the defendants are applying for the stay, it is the SBPC Defendants which have been at the forefront of the argument and the application has been led by them. Unless I state otherwise, hereafter my references to “the defendants” should be taken to mean the SBPC Defendants.

4

In the substantive proceedings, the claimants allege trade mark infringement and passing off. The first claimant is the registered proprietor of 6 EU trade marks, five of them figurative marks which look like this:

I will call this the Beverly Hills Logo.

5

The sixth EU trade mark is a word mark for the words BEVERLY HILLS POLO CLUB. The first claimant also owns a UK trade mark in the form of the Beverly Hills Logo. The six EU trade marks and the UK trade mark are registered in respect of various goods, mostly clothing.

6

The second claimant is the exclusive licensee of the first claimant's rights. Both the first and second claimants are companies registered in the Netherlands, and I need not distinguish them.

7

The claimants say that the seven trade marks have been infringed. The claimants also claim goodwill associated with the Beverly Hills Logo and allege passing off. The alleged acts of infringement and passing off consist of the sale and related acts done in the UK and in the EU under the following sign:

I will call this the Santa Barbara Logo.

8

The third defendant is a non-profit corporation which owns a UK trade mark in the form of the Santa Barbara Logo. The day-to-day business of the Santa Barbara Polo & Racquet Club, founded in 1911, is run by the eighth defendant, another non-profit corporation.

9

The fourth defendant is described as the global master licensee of the third defendant's IP rights, which include the third defendant's UK trade mark and other rights in the Santa Barbara Logo.

10

It is relevant to set out how the seven trade marks came to be in the ownership of the first claimant. The following chronology is taken from Mr St Quintin's helpful skeleton argument. I am not sure that all the dates are quite agreed, but it does not matter and it is sufficient for me to state only months and years.

11

In 1982 two students in California began to market products under the brand name BEVERLY HILLS POLO CLUB. In January 1986 the application for the UK trade mark in suit was filed by Gregory Lang Inc. In January 1989 the granted UK mark was assigned to a US entity called BHPC Marketing Inc. In 1996 and 1997 respectively, BHPC Marketing applied for the first and second of the EU marks in suit.

12

At around this time, there arose a dispute between BHPC Marketing and the defendants. The defendants had registered the Santa Barbara Logo as a trade mark. The issue was whether the signs each side used, the logos shown above, infringed the other side's trade marks.

13

In June 1997 the dispute was resolved by a written agreement, which I will call the 1997 Agreement. The signatories to the 1997 Agreement were BHPC Marketing and the eighth defendant, the Santa Barbara Polo & Racquet Club.

14

I will come back to the terms of that agreement, but here it is enough to say that each side consented to the other side's use of the other side's logo worldwide, and also agreed to the filing of further marks in the form of the other side's logo.

15

In September 2004 BHPC Marketing applied for the third of the EU marks in suit. In January 2007 BHPC Marketing assigned the UK trade mark and the three EU marks to BHPC Associates LLC. In October 2008, those four trade marks were assigned by BHPC Associates LLC to BHPC International LLC. In February 2009, the UK mark was assigned by BHPC International LLC to the first claimant.

In March 2009, the three EU marks were assigned to the first claimant.

In July 2009, the first claimant applied for the fourth of the EU trade marks in suit and in 2016 and 2017 respectively, the first claimant applied for the fifth and sixth of the EU trade marks in suit.

16

I was shown a written recording of one of the assignments I have referred to but not the others. It is not clear which law governed each of those assignments but they played little part in the arguments. It was not in dispute that all the assignments were effective.

17

The claimants say that they did not know of the 1997 Agreement when they obtained assignments of each of the trade marks in suit. There is evidence in support of this from Eli Haddad, who is Managing Director of the claimants, that the claimants did not have such knowledge.

18

The Arbitration Act 1996 provides, in relevant part:

“2.—Scope of application of provisions.

(1) The provisions of this Part apply where the seat of the arbitration is in England and Wales or Northern Ireland.

(2) The following sections apply even if the seat of the arbitration is outside England and Wales or Northern Ireland or no seat has been designated or determined—

(a) sections 9 to 11 (stay of legal proceedings, &c.), and

(b) section 66 (enforcement of arbitral awards).

(3) The powers conferred by the following sections apply even if the seat of the arbitration is outside England and Wales or Northern Ireland or no seat has been designated or determined—

(a) section 43 (securing the attendance of witnesses), and

(b) section 44 (court powers exercisable in support of arbitral proceedings);

but the court may refuse to exercise any such power if, in the opinion of the court, the fact that the seat of the arbitration is outside England and Wales or Northern Ireland, or that when designated or determined the seat is likely to be outside England and Wales or Northern Ireland, makes it inappropriate to do so.

(4) The court may exercise a power conferred by any provision of this Part not mentioned in subsection ( 2) or (3) for the purpose of supporting the arbitral process where—

(a) no seat of the arbitration has been designated or determined, and

(b) by reason of a connection with England and Wales or Northern Ireland the court is satisfied that it is appropriate to do so.

(5) Section 7 (separability of arbitration agreement) and section 8 (death of a party) apply where the law applicable to the arbitration agreement is the law of England and Wales or Northern Ireland even if the seat of the arbitration is outside England and Wales or Northern Ireland or has not been designated or determined.

3. — The seat of the arbitration.

In this Part “the seat of the arbitration” means the juridical seat of the arbitration designated—

(a) by the parties to the arbitration agreement, or

(b) by any arbitral or other institution or person vested by the parties with powers in that regard, or

(c) by the arbitral tribunal if so authorised by the parties, or determined, in the absence of any such designation, having regard to the parties' agreement and all the relevant circumstances.

5.—Agreements to be in writing.

(1) The provisions of this Part apply only where the arbitration agreement is in writing, and any other agreement between the parties as to any matter is effective for the purposes of this Part only if in writing. The expressions “agreement”, “agree” and “agreed” shall be construed accordingly.

(2) There is an agreement in writing—

(a) if the agreement is made in writing (whether or not it is signed by the parties),

(b) if the agreement is made by exchange of communications in writing, or

(c) if the agreement is evidenced in writing.

(3) Where parties agree otherwise than in writing by reference to terms which are in writing, they make an agreement in writing.

(4) An agreement is evidenced in writing if an agreement made otherwise than in writing is recorded by one of the parties, or by a third party, with the authority of the parties to the agreement.

(5) An exchange of written submissions in arbitral or legal proceedings in which the existence of an agreement otherwise than in writing is alleged by one party against another party and not denied by the other party in his response constitutes as between those parties an agreement in writing to the effect alleged.

(6) References in this Part to anything being written or in writing include its being recorded by any means.

6.—Definition of arbitration agreement.

(1) In this Part an “arbitration agreement” means an agreement to submit to arbitration present or future disputes (whether they are contractual or not).

(2) The reference in an agreement to a written form of arbitration clause or to a document containing an...

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1 cases
  • Lifestyle Equities C.v v. Hornby Street (MCR) Ltd
    • United Kingdom
    • Court of Appeal (Civil Division)
    • 28 January 2022
    ...FROM THE HIGH COURT OF JUSTICE BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES INTELLECTUAL PROPERTY ENTERPRISE COURT HHJ HACON [2020] EWHC 3320 (IPEC) Royal Courts of Justice Strand, London, WC2A 2LL Thomas St Quintin (instructed by Brandsmiths) for the Lindsay Lane QC (instructed by Burge......

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