Lifestyle Equities C.v v. Royal County of Berkshire Polo Club Ltd

Hearing date: 3 rd November 2023

Approved Judgment

This judgment was handed down remotely by circulation to the parties' representatives by email. Once any corrections have been made, it will also be released for publication on the National Archives and other websites. The date and time for hand-down is deemed to be Friday 17 ^th November 2023 at 10.30am. This is the revised version (Rev 1).

THE HON Mr Justice Mellor

INTRODUCTION

This is my judgment from the Consequentials/Form of Order hearing which took place on 3 ^rd November 2023, following the hand down of my judgment from the trial on 19 ^th July 2023 (‘the Main Judgment’). Primarily due to the Defendants' application for an anti-suit injunction, but also because I wanted to review some of the materials relating to the suggested deductions from the Defendants' costs, I took time to consider my judgment on the various issues for determination. These were:

i) The wording of certain declarations sought by the Defendants.

ii) Whether I should grant an anti-suit injunction sought by the Defendants.

iii) On costs:

a) Whether, as the Claimants contend, there should be a 20% or some other deduction from the Defendants costs.

b) The size of the interim payment.

c) Whether I should summarily assess a separate body of costs from the first to fifth Defendants for this hearing

iv) The Claimants' application for permission to appeal.

In this judgment I will address these issues in the order set out above. In general, references to the Defendants are to Defendants 1–5, unless the context indicates otherwise.

The evidence filed for this hearing

The Defendants served evidence in the form of the Third Witness Statement of Ms Virgin, a partner in the solicitors acting for the Defendants, Maitland Walker LLP (‘MW’). Her witness statement was dated, filed and served on 19 ^th October 2023 in good time before this hearing. It covers various aspects of the costs position of the Defendants in some detail. The response from the Claimants side was contained in a letter from Brandsmiths, the solicitors for the Claimants, dated 31 ^st October 2023, and apparently received by the Defendants at 7.30pm. MW responded to the points made the following day. I will address all these points below. The MW letter concluded with an inquiry as to when they might expect to receive the Claimants' evidence on costs. This was not immediately responded to. Instead, Brandsmiths emailed at 6.30pm on 1 ^st November, proposing that the following documents would be added to the bundle for this hearing, namely:

i) D1's Accounts that were last published at the time of issue (those to 31/12/2016), and at the time of the trial (those to 31/12/2021).

ii) Land Registry Title Documents dated 15 June 2018 and 1 November 2023.

Early the next morning, MW emailed objecting to the inclusion of these documents. The email noted that Brandsmiths had initially indicated they would put in evidence for this hearing and then indicated they would not.

None of these documents were in the trial bundles nor, as far as I am aware, in the case at all. It is unclear why they were not put in evidence by way of exhibits to a witness statement. Although these documents were included in the bundle by Brandsmiths and addressed in the Claimants skeleton, the Defendants asked me not to read them or the paragraphs in the Claimants skeleton discussing them.

In fact I did briefly review these documents in advance of the hearing, de bene esse, on the basis that I am quite capable of leaving them out of account if I need to do that. These documents were put in the bundle for the purpose of a point which arises on the costs of the joint liability allegations.

There are a few points to note from the absence of any evidence from the Claimants:

i) First, the documents which the Claimants have added to the bundle are not in evidence.

ii) Second, the Claimants do not have evidence to support the various % estimates which they say, by way of submission, should be ascribed to various issues – the support is by way of submission in their Skeleton Argument.

iii) Third, precisely because the Claimants' estimates were not the subject of evidence from, for example, the Claimants solicitor, the Defendants have had no opportunity to put in reply evidence.

iv) However, fourth, I was not really disadvantaged by the absence of evidence from the Claimants, particularly in relation to the costs issues, where, for example, detailed page counts of various documents in the case can give an impression of precision yet provide an unreliable guide.

DECLARATIONS

Two short points arise on the wording of the first declaration sought, which declares no infringement in the countries the subject of this claim:

i) The first is whether the declarations should refer only to D1–5 or to all the Defendants. The claim was stayed against the Sixth to Eleventh Defendants and they took no part in the trial, but their liability was entirely dependent on liability being established against D1 (at least). Notwithstanding that, in the final Order (subject to certain points), I dismiss the Claimants' claim. This dismissal applies to the Sixth to Eleventh Defendants. Accordingly, the declaration of no infringement should apply to all the Defendants.

ii) The second point is one of clarification. It is trite that a registered trade mark can only be infringed in the territory to which the registration relates. Accordingly, a declaration of no infringement of a mark can only apply in the territory to which it relates. The declaration I grant reflects this.

ANTI-SUIT INJUNCTION

The anti-suit injunction sought by the Defendants is as follows:

‘The Claimants be restrained from bringing or threatening proceedings in relation to the use of the signs complained of or any other sign differing only colourably therefrom in any of the aforementioned jurisdictions in reliance upon the BEVERLY HILLS POLO CLUB name and logo for infringement of registered trade mark, passing off, unfair competition, conspiracy to injure the Claimants or any other like or equivalent cause of action in any such jurisdiction.’

The ‘aforementioned jurisdictions’ are those in the declaration, namely, the UK, the EU, Panama, Mexico, Chile, Peru and the UAE.

Applicable principles

In his skeleton argument, Mr Silverleaf KC for the Defendants acknowledged that the anti-suit injunction sought was of a ‘slightly unusual kind’. He explained that the injunction seeks to prevent the Claimants from asserting again the claims which have been heard and determined in this action (which I will call ‘the Claims’), whether in this jurisdiction or in the other jurisdictions covered by the Claimants' claims of infringement. The legal basis for the grant of injunctive relief was said to be to restrain an abuse of process because the Claims are res judicata. Mr Silverleaf drew an analogy with a claim brought in breach of an agreement as to jurisdiction. He submitted the underlying principle applied with at least as much force in the present circumstances.

For the Claimants, Mr St Quintin drew my attention to the following principles which I did not understand to be in dispute:

i) There is longstanding authority that protection of the jurisdiction of the English court, its process and its judgments by injunction is a legitimate ground for the grant of an anti-suit injunction (see e.g. the conclusion in Masri v Consolidated Contractors [2009] QB 503 (CA) at [100] following extensive review of the authorities).

ii) However, the discretion to grant anti-suit injunctions should not be exercised without full knowledge of the relevant circumstances (including what is sought to be restrained). In Donohue v Armco Inc [2001] UKHL 64; [2002] CLC 440, HL, at [16] Lord Bingham described the approach to be taken to anti-suit injunctions as follows:

“The grant of an anti-suit injunction, as of any other injunction, involves an exercise of discretion by the court. To exercise its discretion reliably and rationally, the court must...