Lifestyle Equities C.v v. Amazon UK Services Ltd
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Michael Green |
| Judgment Date | 23 March 2021 |
| Neutral Citation | [2021] EWHC 721 (Ch) |
| Court | Chancery Division |
| Docket Number | Claim No: IL-2019-000003 |
| Date | 23 March 2021 |
[2021] EWHC 721 (Ch)
THE HONOURABLE Mr. Justice Michael Green
Claim No: IL-2019-000003
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY
The Rolls Building
7 Rolls Buildings,
Fetter Lane
London EC4A 1NL
Mr. Thomas St Quintin (instructed by Brandsmiths) appeared for the Claimants.
Mr. Daniel Alexander QC and Mr. Maxwell Keay (instructed by Hogan Lovells International LLP) appeared for the Defendants.
Approved Judgment
This is the hearing of certain consequential matters arising out of my judgment handed down on 27th January 2021, following the trial I heard between 8th and 15th December 2020. My judgment has neutral citation number [2021] EWHC 118 (Ch). I will also use the same abbreviations and definitions as in the main judgment.
Mr. Thomas St Quintin appeared before me today on behalf of the Claimants and Mr. Daniel Alexander QC appeared with Mr. Maxwell Keay for the Defendants on this hearing, as Mr. James Mellor QC, who appeared at the trial for the Defendants, has since been appointed to the High Court bench.
The following issues were argued before me today:
i) Whether an injunction should be granted against the Defendants.
ii) The appropriate order as to costs, including a point on interest.
iii) The amount of the interim payment on account of such costs that I should order.
iv) The Claimants' application for permission to appeal.
I will deal with them in that order.
Summary of Judgment
Before doing so I should perhaps summarise the findings that I made in the judgment. The Claimants alleged both trade mark infringement and passing off by the Defendants' use in the course of trade of their signs in the EU. Passing off was not really pursued at the trial, nor was trade mark infringement under sections 10(2) and (3) of the Act or Articles 9(2)(b) and (c) of the EUTMR. The case was only concerned with whether there were trade mark infringements under section 10(1) of the Act and/or Article 9(2)(a) of the EUTMR.
Very shortly prior to the trial, the Second and Fourth Defendants admitted to trade mark infringements by listing BHPC products on Amazon Global Store up to January 2019 when they were removed. Apart from that admitted infringement on amazon.co.uk which targeted UK consumers, I found against the Claimants on all their other claims of trade mark infringement.
The main issue was whether amazon.com, the US website, targeted UK/EU consumers in the listing of BHPC products. The Claimants were trying to prevent all visibility of BHPC products by UK or EU consumers on amazon.com because they said that the mere visibility of the products was destroying their business. I held that both amazon.com and the BHPC listings on it are not targeted at the UK or EU consumer. Accordingly, none of the Defendants were using the Claimants' signs in the course of their trade in the UK or the EU.
Because of the restrictions that Amazon had put in place from January 2019 there were no sales of BHPC goods from the US to the UK or EU thereafter. Nevertheless, the Claimants alleged that historical sales up to January 2019 constituted trade mark infringements. I held, however, that the relevant sales took place in the US and because of my analysis of the case of Blomqvist they were not infringements. Also in relation to alleged historical importation by the Defendants, I held that the importation was in fact carried out by the private individual consumers and there was no intention that those goods so imported would be put into free circulation in the UK or EU. Accordingly, there was no infringement established on that ground either.
I also rejected the Claimants' case on joint liability whereby they tried to establish that the Third Defendant, as the holding company of the entire Amazon group, should be held liable for the alleged infringements.
So apart from the belatedly admitted infringement by the Second and Fourth Defendants by their listings on Amazon Global Store prior to January 2019, the Claimants' claims were dismissed. I rejected the Claimants' request for an inquiry as to damages in respect of the admitted infringements because I considered that those admitted infringements were trivial in comparison to the main case of targeting that I had dismissed and an inquiry would be disproportionate. Also, the historical sales from the US to the UK or EU, which I had found not to be infringements, were tiny and could not justify an inquiry into losses flowing from pre-2019 infringements. I found that Amazon had generally responded reasonably and responsibly after this unusual split trade marks issue had been brought to their attention. The restrictions put in place in January 2019 had been effective to remove any possibility of infringements occurring.
The injunction
With that summary I turn to the injunction application. It was only late in the afternoon last Friday, 19th March 2021, that the Claimants for the first time suggested that they should be entitled to an injunction against the Defendants based on the admitted historic infringements that I have just referred to. Actually, the Claimants simply inserted the proposed injunction into the draft order that the Defendants had been trying to agree with the Claimants, and they did so without any explanation or forewarning. The Defendants had provided their suggested draft order over a month before but the Claimants had not responded before last Friday when they inserted their injunction wording. That is an unfortunate way of going about this, particularly as the parties have had my judgment for nearly two months now and the Claimants left it to one working day before this hearing to notify the Defendants that they would be seeking this injunction.
The injunction that the Claimants were, until this morning, asking for is as follows:
“The Second and/or Fourth Defendants shall not:
1. In the UK advertise goods under or by reference to the sign BEVERLY HILLS POLO CLUB or the sign shown below (together ‘the Signs’) or any other sign confusingly similar to the Signs or either of them, save where those goods have been put on the market in the UK or the EU under the Signs, or either of them by the Claimants or where the Claimants have consented to those goods being put on the market in the UK or the EU.
2. In the EU advertised goods under or by reference to the Signs or either of them or any other sign confusingly similar to the Signs or either of them, save where those goods have been put on the market in the EU under the Signs or either of them by the Claimants or where the Claimants have consented to those goods being put on the market in the EU.”
Having seen the way that the Claimants put their case for an injunction in their skeleton argument, Mr. Alexander prepared a supplementary note in response, which was provided to me this morning, and that had attached to it a suggested form of order and recital to the order. Mr. Alexander submitted that any form of injunction would in the circumstances be inappropriate but he suggested that if the court wished this matter to be addressed in the order it could include additional recitals in the following form:
“AND UPON the court finding that such infringements had been completely prevented from occurring by effective restrictions introduced in 2019
AND UPON the Defendants indicating that they have no intention of removing such restrictions to enable those acts to be repeated.”
Mr. St Quintin responded in his oral submissions this morning to say that the Claimants would be happy with the wording in the second recital but only if it were converted into the form of an injunction by the court. In other words, he was asking the court to order the Defendants not to remove the restrictions that they put in place in 2019. Mr. St Quintin said that this would be appropriate because the Defendants have never offered an undertaking to keep the restrictions in place and they only conceded these infringements at the last minute. There is therefore, he says, a continuing threat which should be met by a court order.
Because of that stance I do need to decide whether it is appropriate in the circumstances to make such an injunction. As I have said, Mr. St Quintin submitted that it is appropriate and just and convenient to grant an injunction because the admission came very late in the day and prior to it the Defendants had denied liability and had refused to provide any sort of undertaking. They were prepared to provide an undertaking but only as part of an overall settlement of the proceedings. Therefore, based on the principles derived from well-established authorities in this area, he said that an injunction should be granted and there is no reason to depart from the usual practice where an infringement is established. Furthermore, the injunction now sought would only prevent that which the Defendants have said they will not do, namely remove the restrictions.
Mr. St Quintin referred to a case of Mr. Alexander's when he was sitting as a Deputy High Court Judge in Cantor Gaming Ltd v Gameaccount Global Ltd [2007] EWHC 1914, in which Mr. Alexander reviewed the cases on final injunctions in intellectual property cases. His conclusions at paragraph [113] were the following:
“Summary of principles.
113. I therefore summarise the applicable...
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Montres Breguet S.A. v Samsung Electronics Company Ltd (a company incorporated in South Korea)
...of awarding 90% of budgeted costs as a payment on account. I was shown the decision of Michael Green J in Lifestyle Equities v Amazon [2021] EWHC 721 (Ch) at [30]–[35], where there was an award of 90%. That reflects earlier cases, including the decision of Birss J in Thomas Pink v Victoria......