Lifestyle Equities CV v Amazon UK Services Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Snowden,Sir Geoffrey Vos |
| Judgment Date | 12 May 2022 |
| Neutral Citation | [2022] EWCA Civ 634 |
| Docket Number | Case No: CA-2021-000592 (Formerly A3/2021/0852) |
| Court | Court of Appeal (Civil Division) |
[2022] EWCA Civ 634
Sir Geoffrey Vos, MASTER OF THE ROLLS
Lord Justice Arnold
and
Lord Justice Snowden
Case No: CA-2021-000592 (Formerly A3/2021/0852)
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD)
Mr Justice Michael Green
Royal Courts of Justice
Strand, London, WC2A 2LL
Michael Edenborough QC and Thomas St Quintin (instructed by Brandsmiths) for the Appellants
Daniel Alexander QC and Maxwell Keay (instructed by Hogan Lovells International LLP) for the Respondents
Approved Judgment on Consequential Issues
This judgment was handed down by the Court remotely by circulation to the parties' representatives by email and release to The National Archives. The date and time for hand-down is deemed to be 10:30 on 12 May 2022.
Introduction
On 4 May 2022 we gave judgment substantially allowing Lifestyle's appeal: [2022] EWCA Civ 552 (“the Main Judgment”). A number of consequential issues have arisen.
Declarations
Lifestyle seek declarations in the following terms:
“i. Product listings on the website at amazon.com (when viewed by a customer in the UK or EU) which make available products which had not been put on the market in the EEA by or with the consent of the Claimants or either of them under or by reference to a) the sign ‘BEVERLY HILLS POLO CLUB’, and/or b) the logo that is the subject matter of UK trade mark registration 1259226, and/or c) the logo that is the subject matter of EU trade mark registration 5482484 (each, a ‘Sign’) were advertisements, offers for sale, and (where sales were made) sales that infringed the Claimants' UK and EU registered trade marks.
ii. Product listings on the Amazon Global Store (when viewed by a consumer in the EU/UK) on the websites at www.amazon.co.uk or www.amazon.de which made available products which had not been put on the market in the EEA by or with the consent of the Claimants or either of them under or by reference to any Sign were offers for sale, and (where sales were made) sales that infringed the Claimants' UK and EU registered trade marks.”
Amazon resist such declarations being made on the ground that they are neither necessary nor appropriate.
It is well established that the court may grant a declaration where it will serve a useful purpose: see in particular Messier-Dowty Ltd v Sabena SA [2000] 1 WLR 2040. Lifestyle contend that the declarations sought would serve a useful purpose because they would enable Lifestyle to communicate the effect of this Court's decision to third parties in a form that had been approved by the Court. I am not persuaded that this does amount to a useful purpose. The Court's decision, and the reasons for it, are to be found in the judgment. Lifestyle have not sought an order that Amazon publicise the judgment pursuant to Article 15 of European Parliament and Council Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights. It is open to Lifestyle to provide third parties with a summary of the decision. If Lifestyle is concerned that third parties may perceive a summary prepared by or on behalf of Lifestyle to be partisan, an independent summary is already available from Lawtel, and further independent summaries will no doubt be published by other providers in due course. Furthermore, the Court's decision was based on the historical facts found by the judge. I consider that there is a risk that the declarations might be interpreted by third parties as meaning that any listing of US branded goods on amazon.com which can be viewed by a UK or EU consumer would infringe the Trade Marks, which is not necessarily the case.
Injunction
Lifestyle seek an injunction to restrain infringement of the Trade Marks by the Second and Fourth Defendants. Amazon resist the grant of an injunction, and contend that the issue as to whether an injunction should be granted should be remitted to the first instance court.
The starting point here is that, once a defendant to a claim for infringement has been found to have infringed the trade mark(s) in suit, the court will normally exercise its discretion to grant an injunction to restrain further infringement in the absence of a clear and unequivocal undertaking by the defendant not to continue the infringing acts: see e.g. Cantor Gaming Ltd v Gameaccount Global Ltd [2007]...
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...proceedings.” 58 The second decision was the decision of the Court of Appeal in Lifestyle Equities CV v Amazon UK Services Limited [2022] EWCA Civ 634. In giving the judgment of the Court of Appeal on certain consequential issues in the case, Arnold LJ made the following reference to the H......
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