Lifestyle Equities CV v Royal County of Berkshire Polo Club Ltd
Jurisdiction | England & Wales |
Judge | Mr. Justice Morgan |
Judgment Date | 14 December 2018 |
Neutral Citation | [2018] EWHC 3542 (Ch) |
Court | Chancery Division |
Docket Number | Case No: IL 2018 000115 |
Date | 14 December 2018 |
[2018] EWHC 3542 (Ch)
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. Justice Morgan
Case No: IL 2018 000115
APPEARENCES:
Mr. Michael Edenborough QC and Mr. Thomas St. Quintin (instructed by Brandsmiths) appeared for the Claimants.
Mr. Martin Howe QC and Ms. Ashton Chantrielle (instructed by Maitland Walker Solicitors) appeared for the First and Third Defendants.
Approved Judgment
This judgment is concerned with two applications which have been made in this litigation. The first application was made on 28th September 2018 by the first, second and third defendants. The first defendant is called Royal County of Berkshire Polo Club, and I will refer to these three defendants at the RCB defendants.
The application made by the RCB defendants is expressed in somewhat compressed language, but when the wording is separated out one can see that the application is seeking five separate orders, which are: (i) an order that the claimant's claims against the sixth to eleventh defendants be struck out on the grounds that they are an abuse of the process of the court; (ii) an order that the claimants' claims, which allege that the first to fifth defendants were jointly or severally liable for the acts of any of the sixth to eleventh defendants, be struck out on the grounds that they are an abuse of the process of the court; (iii) in the alternative to (i) and (ii) above, an order that the claims referred to in (i) and (ii) above be stayed, because those claims are or contain or raise defences which are not justiciable in the courts of England and Wales; (iv), also in the alternative to (i) and (ii) above, an order that the claims referred to in (i) and (ii) above be stayed, because this is not the appropriate forum for those claims; (v) an order striking out the claimants' claim for conspiracy to injure by unlawful means, because the particulars of that claim disclose no reasonable grounds for bringing the claim and/or such claim is an abuse of the process of the court.
The application by the RCB defendants raises questions as to the jurisdiction of the court and questions as to procedure.
The second application which is before me is an application issued on 7th November 2018 by the claimants which asks for summary judgment in favour of the claimants in relation to the issues raised by the counterclaim of the RCB defendants, alternatively asks for the counterclaim to be struck out.
This application overlaps to a limited extent with some of the points raised by the application made by the RCB defendants, but in addition the claimants' application requires the court to determine two points arising in the law relating to trade marks. Although the claimants' application asks for the court to dispose of the whole of the counterclaim, the submissions made on behalf of the claimant focused on two particular allegations in the counterclaim.
Mr. Edenborough QC and Mr. St. Quintin appeared on behalf of the claimant. Mr. Howe QC and Ms. Chantrielle appeared on behalf of the RCB defendants. There has been no appearance by the fourth and fifth defendants. They have served a defence in these proceedings. Their solicitors, Gateley Plc, have written to the court to support the application made by the RCB defendants, but they have not made any application on behalf of the fourth and fifth defendants. I will deal with the position of the sixth to eleventh defendants later.
I will begin with the application by the RCB defendants. For this purpose I need to summarise the particulars of claim. The particulars of claim are a lengthy document, running to some 40 pages and will take a little bit of summary.
Briefly, the claim relates to alleged infringement of UK and EU trade marks and also of non-EU trade marks, in relation to which the first claimant is the registered proprietor and the second claimant is a licensee from the first claimant.
Paragraphs 2 to 8 of the particulars of claim set out information as to the UK and EU registrations. I need not summarise those paragraphs at this stage, although later in this judgment I will describe the principal trade mark which is relied upon by the claimants and which is said to be infringed by the defendants.
Paragraphs 9 to 22 set out the non-EU registrations. The countries in which the first claimant has become registered with a mark as pleaded in these paragraphs are: Panama, Chile, Mexico, Peru and the United Arab Emirates. Paragraphs 25 to 27 of the pleading set out the claimants' contentions as to the goodwill, reputation and enhanced distinctive character of the UK and EU marks.
Starting at paragraph 28 the pleading then identifies the eleven defendants. The first defendant is the Royal County of Berkshire Polo Club Limited. It is the owner of and uses various signs which are identified as infringing signs. The second defendant, before her recent death, was a director of the first defendant. The third defendant is a director of the first defendant. I have already explained that I am referring to these three defendants as the RCB defendants. The fourth defendant is a licensing agency which is connected with the first defendant and the use by the first defendant of its signs. The fifth defendant is the sole director of the fourth defendant. The first to fifth defendants are domiciled in this jurisdiction.
The sixth to eleventh defendants are not domiciled in this jurisdiction. I can refer to them as the non-EU defendants. The sixth defendant is a Panamanian company and it is pleaded that it is a vendor of a wide variety of goods, it operates a website, and the sixth defendant has stated that it is the exclusive licensee for the first defendant's signs in Latin America and the Caribbean.
The seventh defendant is a Chilean company. It is pleaded that it operates a chain of retail stores in Chile at which goods bearing the allegedly infringing signs are offered for sale and sold. The eighth defendant is another company incorporated in Chile. It is pleaded that it operates a chain of retail stores in a similar way to the seventh defendant.
The ninth defendant is a Peruvian company. It is pleaded that it operates a chain of retail stores in Peru doing the same things as the seventh and eighth defendants do in Chile. The tenth defendant is a company incorporated in Mexico. It is pleaded that it operates a chain of department stores in Mexico at which goods bearing the first defendant's signs are offered for sale and sold.
The eleventh defendant is a company incorporated in the United Arab Emirates. It is pleaded that it operates retail stores branded as Royal County of Berkshire Polo Club Stores.
The pleading then, beginning at paragraph 42, alleges various respects in which the defendants, it is said, have incurred joint and several liability to the claimants. Paragraph 42 pleads joint and several liability on the part of the three RCB defendants. Paragraph 44 pleads that the RCB defendants are jointly and severally liable for the acts of the fourth and fifth defendants. Paragraph 45 pleads that the RCB defendants are jointly and severally liable for the acts of the sixth to eleventh defendants and particulars are given of that allegation. Paragraph 47 pleads that the fourth and fifth defendants are jointly and severally liable for the acts of the fourth and fifth defendants. Paragraph 49 pleads that the fourth and fifth defendants are jointly and severally liable for the acts of the sixth to eleventh defendants and particulars are given of that allegation.
These allegations of joint and several liability appear in the pleading before the pleading sets out the acts of which complaint is made. The acts of which complaint is made are pleaded beginning at paragraph 51. The pleading begins by identifying acts in the UK and in the EU and refers to a number of signs used by principally the first three defendants but of course said to have implications for the other defendants also.
Then, at paragraph 53, there is pleaded the detail of the alleged infringement of the claimants' rights in the non-EU jurisdictions. The pleading then sets out the case as to infringement of the UK and EU registrations and a claim in passing off. It is essentially pleaded that the use of the signs infringes the claimants' rights in their registered marks and involves passing off of the defendant's goods for those of the claimants.
The pleading then sets out the detail of the case as to infringement of the non-EU registrations. In the case of each of the five non-EU countries, the pleading sets out the relevant law of that country and sets out the rights of...
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