BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Fetter Lane London EC4A 1NL |
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B e f o r e :
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(1) LIFESTYLE EQUITIES CV (2) LIFESYLE LICENSING BV (both companies incorporated under the laws of The Netherlands) |
Claimants (Respondents in the Application) |
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-and- |
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(1) SPORTSDIRECT.COM RETAIL LTD (2) […] (3) SDI BROOK LTD (4) SDI (BROOK ROW) LTD (5) REPUBLIC.COM RETAIL LTD |
Respondents (Applicants in the Application) |
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Mr Thomas St Quintin (instructed by Brandsmiths) for the Respondents (Claimants in the proceedings)
Heard on 16 April 2025
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Crown Copyright ©
MR JUSTICE MARCUS SMITH:
A. INTRODUCTION
(1) The application
i) The First Respondent is the registered owner of certain trade marks (the Marks) which I shall describe in due course. I shall refer to the First Respondent as the Proprietor.
ii) The Second Respondent is the exclusive licensee of the Marks from the Proprietor, pursuant to arrangements that I will also come to describe. I shall refer to the Second Respondent as the Exclusive Licensee.
(2) The evidence
(3) The proceedings so far
(i) Introduction
(ii) The Claim Form
Brief details of claim
The Claimants' claim is for Registered Trade Mark infringement and/or inducement of breach of contract
The Claimants seek: (1) Declarations as appropriate; (2) Injunctions; (3) An order for payment of all sums by way of an inquiry as to damages or at the Claimants' option an account of profits; (4) An order for publication, at the Defendants' expense of the Judgment pursuant to CPR 63 PD 26.2; (5) An order for delivery up or at the Defendants' option destruction of all goods and/or materials that would offend against the injunction sought; (6) Costs; (7) Interest, by reason of the Defendants' acts of Registered Trade Mark infringement and/or inducement of breach of contract.
Full details are provided in the Particulars of Claim.
Value
The Claimants are unable at this stage to quantify their damage however they believe it to be substantial. This action includes a substantive Intellectual Property claim and in the normal course will proceed by way of a split trial with liability being dealt with first and then quantum should the Claimants establish liability. If the Claimants succeed on liability the Claimants undertake to pay the appropriate court fee upon an order of the court directing all sums to be paid by an inquiry as to damages and the Claimant electing for such an inquiry (or if appropriate an account of profits save that such an account is thought to be non-money relief and so covered by the fee already paid). The Claimants believe the High Court is the appropriate forum for this action by reason of CPR 63.13 and also the complexity of the legal issues and remedies involved. Furthermore, by reason of CPR 63.13 this claim is allocated to the Multi Track.
(iii) The Particulars of Claim
5 The Second Claimant [ie the Exclusive Licensee] is also a company incorporated under the laws of the Netherlands…It is the exclusive licensee of the First Claimant's [ie the Proprietor] intellectual property rights, throughout the world outside the USA. In particular, it is the exclusive licensee of the CTMs and the UK Mark.
…
39 By reason of the matters aforesaid, the Claimants and each of them have suffered loss and damage in respect of which the Claimants and each of them are entitled to and will seek an enquiry as to damages or, at their option, an account of profits.
…
43 The Claimants are not currently aware of all acts of infringement of the Defendants but shall seek to rely on and claim relief in relation to all such acts.
AND THE CLAIMANTS CLAIM
…
(3) An enquiry as to damages suffered by the Claimants and each of them by reason of the aforesaid acts of trade mark infringement, alternatively and at the Claimants' option, an account of profits accrued to the Defendants or any of them by such acts.
…
(8) Further or other relief.
(iv) The Defence and Counterclaim
7. As to paragraph 5:
a. The first sentence is admitted.
b. It is admitted that the Second Claimant is a licensee of the UK Mark and the CTM pursuant to a Master License and Licensing Services Agreement between Lifestyle Equities CV and the Second Claimant with an effective date of 20 May 2008 (the "Exclusive Licence"). No admission is made as to whether the Second Claimant is licensee of any other intellectual property rights.
c. The Exclusive Licence was executed by Mr Eli Haddad on behalf of BHPC International LLC, a general partner of Lifestyle Equities CV and by Mr Haddad as Managing Director of the Second Claimant. The Second Claimant is a subsidiary of Lifestyle Equities CV.
d. At trial the First to Sixth Defendants will rely upon the terms of the Exclusive Licence for their full meaning and effect. The Agreement is subject to Dutch law but there is no material difference to English law insofar as relevant to this claim.
e. It is noted that it is not alleged in paragraph 5 that the Second Claimant is exclusive licensee of the Second CTM. In the absence of such a plea the First to Sixth Defendants reserve their right to plead further as to whether any such licence should have been registered.
8. In respect of the UK Mark, the Exclusive Licence is a registrable transaction. Prior to the date of this Defence and Counterclaim no application for registration of the licence has been made. In the premises, the Second Claimant is unable to claim for infringement of the UK Mark. Further, or alternatively, the Claimants are unable to recover the costs of this action.
37. Paragraph 39 is denied. It is denied that the Claimants have suffered loss and damage as alleged or at all. The First to Sixth Defendants repeat paragraph 31 above.…
39. Paragraphs 41 to 43 and the prayer are noted. It is denied that the Claimants are entitled to the relief sought or any relief.
(v) The Reply and Defence to Counterclaim
a. The first and second sentences are admitted. An application to register the Exclusive Licence insofar as it relates to the UK Mark was made on 18 December 2015.
b. The third sentence is denied. The Second Claimant is entitled to benefit from any remedy awarded against the Defendants as a consequence of their acts of infringement of the UK Mark and is an appropriate claimant in these proceedings by virtue of rule 19.3 of the Civil Procedure Rules. Further or alternatively, the Second Claimant is entitled to the benefits of sections 30 or 31 from the date of its application to register the Exclusive Licence in respect of the UK Mark.
c. The fourth sentence of paragraph 8 is denied. Section 25(4) of the Trade Marks Act 1994, upon which it is presumed that the Defendants rely, has no impact on the First Defendant's entitlement to recover the costs of these proceedings. Further or alternatively, the Second Claimant is entitled to recover any costs incurred in respect of those parts of this action that are not allegations of infringement of the UK Mark, and is entitled to recover its costs in respect of any act of infringement of the UK Mark that took place after its application to register the Exclusive Licence in respect of the UK Mark.
(vi) Judgment
i) The Judge stated that this was "the trial of all liability issues that arise in a claim by the claimants for (a) damages or an account of profits for what they allege to have been infringements of various trademarks of which they are the proprietors or licensees that are alleged to have occurred in two periods between 2013 and 2015 and (b) damages for allegedly wrongfully inducing West Coast Capital (USC) Limited, a company that at all material times was part of the SportsDirect Group but is now in administration ("WCC"), to breach the terms of a Licence Agreement made between WCC and the claimants on 6 June 2014 ("the Agreement") by selling goods bearing the claimants' marks to the sixth defendant ("Republic"). This is also the trial of a counterclaim by the defendants for cancellation of the marks on which the claimants rely" (Liability Judgement at [1]).
ii) The Judge considered the ownership and licensing of the Marks at [4]:
…The proprietor of the Marks is the first claimant ("CV"). The second claimant ("BV") is the registered exclusive licensee of the intellectual property rights held by CV. BV is solely owned by CV. CV is a Dutch partnership in which there is only one partner, a US registered corporation controlled by identified proxies for the benefit of Mr Haddad and his children. Mr Haddad accepted in the course of his cross-examination that these arrangements are driven by tax efficiency considerations. Mr Haddad lives in the US and works there when not travelling and working elsewhere on business. Although CV is ostensibly controlled by various proxies including Mr Haddad's son Daniel, acting nominally in the name of the US corporation that is the sole partner in CV, there is no dispute that BV is controlled by Mr Haddad. Given BV's status as licensee of the Marks, it is BV that is mainly relevant to these proceedings rather than CV. The Marks with which these proceedings are concerned are only two of a total of about 119 marks registered by CV and licensed to BV in 94 countries, all of which are concerned with the protection of the Beverly Hills Polo Club brand ("Brand").
iii) The Judge described BV's business model in the following terms:
[15] BV exploits the Brand in two ways. Firstly, it designs, produces and distributes Brand Goods directly. This activity appears to be conducted principally in India, the Gulf region and the wider Middle East. These proceedings are not concerned with that element of the claimants' business and it is not necessary that I mention it further.
[16] The other element of the claimants' business involves granting licences to third parties that enable those licensees to market and sell wholesale specific categories of Brand Goods in defined territories. Mr Haddad asserts that BV has issued licences to 27 difference licensees, of which 10 are based in Europe and 2 in the United Kingdom. One of the UK licensees is a corporate vehicle controlled by Mr Jacobs [Mr Earl Jacobs, described by the Judge at [2] as controlling a company that is one of BV's licensees]. His licence enables him to sell luggage and underwear wholesale using the Brand. At all times material to these proceedings, the other UK licensee was a corporate vehicle controlled by Mr Ian Wilson. It was licensed in relation to clothing other than underwear.
[17] The methodology by which this part of the claimants' business is carried into effect involves BV designing all relevant products and authorising the manufacture of such goods to the approved design by manufacturers nominated by the claimants' production agent. Most of these manufacturers are based in India although two are based in China. One of the latter relevant to these proceedings was called Runway. As Mr Haddad accepted in the course of his evidence, before manufacturing can take place in China the consent of the proprietor of the Chinese marks has to be obtained.
[18] The claimants' licensees are required to purchase the goods they are licensed to deal in directly from the manufacturers. Although it was suggested by the defendants that the manufacturers were authorised to sell Brand Goods to whomsoever they chose, there is no evidence that was so and it is inherently improbable that such could be the case since it would defeat entirely the protection and exploitation of the Brand and the Marks by BV. What evidence there is suggests that whilst purchase orders were placed by licensees directly with the manufacturers, the administration of the supply process was supervised by the claimants' production agents. This was achieved by requiring that all the commercial paperwork associated with each order (including all purchase orders ("Pos"), commercial invoices and letters of credit ("LCs")) be submitted to the manufacturers via BV's production agent. In relation to goods manufactured in India, at all times material to these proceedings, BV's production agent in relation to manufacturers based in India was QD Seatoman Designs Pvt Limited ("QDS"). Ms Willson performed the production agency role in relation to Brand Goods manufactured by Runway.
[19] BV's business model involved granting a licence to import into, and redistribute or sell in defined ways in a defined territory, a defined set of Brand Goods to a licensee, who would thereby become obliged to order a minimum quantity of the Brand Goods it had been licensed to import and redistribute from the claimants' authorised manufacturers and pay BV a royalty based on the resale price achieved by the licensee concerned. BV has a standard Licencing Agreement. Although licensees are required to order brand goods directly from the manufacturer (or "vendor" as they are sometimes referred to in BV's internal documentation), as I explain in more detail below, the process is supervised and controlled by QDS to whom all orders and LCs are required to be copied. Although there is no direct evidence to this effect, I infer that in reality the manufacturers would not sell goods to licensees otherwise than with the approval of QDS and would refuse to supply if directed to do so by QDS. That was the whole purpose of requiring purchase documentation to be routed through, or copied to, QDS.
[20] This structure was adopted by BV because it eliminates any risk that it might become legally responsible for any manufacturing costs in respect of goods ordered by its licensees. The claimants insist that such goods are paid for by licensees using LCs issued in favour of the manufacturers concerned. Mr Haddad accepted in the course of his cross-examination that this method was adopted in order to eliminate as far as possible any credit risk being run by the manufacturer concerned. He also accepted that this was not altruistic: it was to avoid the risk that manufacturers who were unable to recover manufacturing costs from a licensee would seek to recover such losses from the claimants by threatening to cease manufacturing Brand Goods.
iv) The Liability Judgment goes on to describe the manner in which the Agreement was negotiated, its terms, the question of inducing its breach, as well as the claims of infringement of the Marks. As I have noted (at [*]), the Respondents were substantially successful, and the claim proceeded to an inquiry as to damages, pursuant to the Judge's order consequential to the Liability Judgment made on 25 April 2018.
(vii) The Points of Claim in the inquiry
The Claimants claim for all the loss they and/or their licensees have suffered as a consequence of the Defendants' acts of infringement, passing off and/or inducement of breach of contract…
The Claimants seek in this claim the recovery of losses made by the Claimants' licensees under section 30(6) of the Trade Marks Act 1994. All sales of infringing BHPC Goods to consumers outside the UK were also infringements under the Trade Marks Act 1994 because those goods were all exported by the Defendants from the UK.
(viii) The Points of Defence
19. In their [Particulars of Claim], at paragraph 39 and in paragraphs (3) and (4) of the prayer for relief, the Claimants alleged, and sought an inquiry in relation to, the loss and damage allegedly suffered "by the Claimants and each of them". In their Points of Claim, served almost 8 years after their original [Particulars of Claim], the Claimants are now seeking damages for not only the loss allegedly suffered "by the Claimants and each of them" but also the loss allegedly suffered by their licensees, relying on section 30(6) of the Trade Marks Act 1994…20. It is denied on each of the following bases that the Claimants are entitled to bring a claim for or to recover losses allegedly suffered by their licensees:
a. no such claim was pleaded in the Claim Form or [Particulars of Claim in this action];b. no basis is pleaded in the Points of Claim for recovery of losses suffered by licensees under the EU Mark;c. the only basis pleaded in the Points of Claim for recovery of losses suffered by licensees under the UK Mark is section 30(6) [of the Trade Marks Act 1994], which:i. does not apply to unregistered licensees (including sub-licensees) by virtue of section 25(3)(b) [of the Trade Marks Act]; andii. does not in any event provide that such losses can be recovered by the proprietor (merely that such losses "shall be taken into account").21. At all material times the only licensee whose licence was registered in respect of the UK Mark was the Second Claimant, with the application for registration of that licence being made on 18 December 2015. Aside from the Second Claimant, no further licensee or sub-licences were registered on the UK or EU trade mark register at any material time, nor were any such licensees or sub-licensees joined as parties to the proceedings.
22. In the premises the Defendants plead the entirety of this statement of case without prejudice to their position that the Claimants are not now entitled to bring any claim for any loss suffered by anyone other than "the Claimants and each of them", which would exclude those licensees.
23. Alternatively if (which is denied) the Claimants are entitled to recover losses allegedly suffered by the Claimants' licensees under section 30(6) [of the Trade Marks Act 1994], the Claimants will hold the applicable portion of the damages awarded on behalf of those licensees.
(ix) The Points of Response
4. As to paragraph 20(a), it is denied if the same be alleged, that it is necessary for a claimant to allege in its Particulars of Claim that it is seeking to recover losses suffered or likely to be suffered by licensees. Section 30(6) of the Trade Marks Act 1994…provides that such losses shall be taken into account in infringement proceedings.
5. Paragraph 20(c) is denied:
5.1 Section 25(3)(b) of the Act does not have the effect paragraph 20(c)(i) contends. In particular, it does not prevent the Claimants from relying on section 30(6) of the Act.
5.2 The consequence of losses suffered or likely to be suffered by licensees being taken into account in infringement proceedings brought by the proprietor of a registered trade mark is that such losses will be recovered as part of the pecuniary remedy the claimant in an infringement claim seeks.
(4) The issues
i) At the hearing itself, the Respondents disclosed that an application to register a licence to Harvest Clothing Group Limited (Harvest) had been made.
ii) By an email sent after the hearing, on 23 April 2025, the Respondents disclosed a letter from the UK Intellectual Property Office dated 18 April 2025 (two days after the hearing of this application) stating that the application to record Harvest's licence had been accepted.
iii) The entry on the register provides the following details as regards the Harvest licence:
Licence number
RC000537577
Exclusive licence
Yes
Start date
01 January 2017
End date
30 June 2020
Limitation text
Class 25 – Men's Ladies and Children's Outerwear
Licence holder
Harvest Clothing Group Limited
Deane House Studios, Highgate Road, London N5 1LB, United Kingdom
It will be noted that whilst the application to register the Harvest licence was made and accepted in 2025, the licence itself expired on 30 June 2020. Furthermore, the Liability Judgment appears to proceed on the basis the relevant period of infringement (and so, one would think, damage) is between 2013 and 2015, whereas the Harvest licence commences 1 January 2017. I therefore have some difficulty in understanding the relevance of Harvest. The licence is also described as "exclusive", which I am not prepared to accept without further evidence and argument, given the Judge's findings in the Liability Judgment.
iv) SportsDirect raised a number of further issues in correspondence regarding the Harvest Licence, to which the Respondents replied.
i) There is a significant difference between a licensee of the Proprietor and a licensee of the Exclusive Licensee. As the Judge found in the Liability Judgment, the Exclusive Licensee is the only licensee of the Proprietor. If, as appears to be suggested, Harvest is a licensee of the Proprietor, then this seems to me to be inconsistent with the Liability Judgment and the Respondents' pleaded case before the Judge.
ii) I cannot decide this point, and I do not do so. I proceed on the basis of the findings in the Liability Judgment. I assume (but without deciding) that Harvest and any other licensee that the Respondents might wish to rely upon for purposes of loss and damage claimed, can only be licensees of the Exclusive Licensee. It also seems to be unlikely that any such licensee can be described as an "exclusive license", which is how Harvest is described: see [24(iii)]. Before me, Mr St Quentin disavowed any reliance on section 31 of the Trade Marks Act 1994, which provides for specific rights accruing to an "exclusive licensee", as that term is defined in section 29 of the 1994 Act. In short, I proceed on the basis that the "licensees" referred to in the Points of Claim are non-exclusive licensees of the Exclusive Licensee, licensed in accordance with the business model described by the Judge in the Liability Judgment, as set out at [15(2)].
iii) I will consider the provisions of the Trade Marks Act 1994 on this basis, as well as the associated questions of pleading (whether licensees needed to be joined to the proceedings) and cure (whether there can be after the event registration). The issues before me are as follow:
a) Issue 1: Must the Sub-Licensee of an Exclusive Licensee of a Mark owned by a Proprietor be registered under the Trade Marks Act 1994 in order for substantial damages sustained by that the Sub-Licensee (whether those damages are recovered by the Proprietor, the Exclusive Licensee or the Sub-Licensee)?
b) Issue 2: Must the Sub-Licensee be joined to the proceedings?
c) Issue 3: If the answer to Issue 1 is that the Sub-Licensee's interest must be registered and/or if the answer to Issue 2 is that the Sub-Licensee must be joined, can these issues be cured after the event)?
B. LICENCES
(1) Licences as contracts
(2) Going beyond contract
i) It is unsatisfactory for licensee B to depend upon proprietor A to protect their interests under the licence.
ii) The risk of "black hole" arguments arises. A legal "black hole" exists where an actionable wrong has been committed by third party C in circumstances where A has the right to claim against C, but where it is B who has suffered the loss. Thus, if licensee B has suffered loss because C has infringed A's intellectual property, A can bring an infringement action against C, but will have suffered no loss; whereas B will have no claim in order to recover the loss they have suffered.
(3) Special protection of the exclusive licensee
(4) Other licensees
i) A licence may entitle the licensee to grant sub-licences.
ii) Where the licence so provides, the 1994 Act applies to any sub-licence granted as if it were a licence.
i) To plead the terms of exclusive licence between the Proprietor and the Exclusive Licensee and – to the extent they have not already done so – produce a copy of that licence.
ii) To plead the terms of each and every sub-licence relied upon and again produce a copy of each and every such sub-licence.
C. ISSUE 2: JOINDER OF A SUB-LICENSEE
Subject to the right to intervene in section 30(6A), a sub-licensee cannot be joined to these proceedings.
D. SECTION 30(6) AND THE QUESTION OF REGISTRATION
(1) The effect of section 30(6)
(2) The registration requirements
i) First, must the sub-licencee's interest be registered in order for the proprietor to recover damages which include damages sustained by the sub-licensee?[3] This is Issue 1. The question is whether the loss of the protection of section 30 that non-registration compels affects the sub-licensee alone or both the proprietor and the sub-licensee.
ii) Secondly, can the sub-licensee apply to register their interest late; and if they do, what is the effect of such a late application on the recovery of damages sustained before the application for registration was made? This is Issue 3.
(3) Issue 1: extent of the loss of protection
In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account…
Non-registration of a licence is no bar to the court taking into account any loss suffered or likely to be suffered by a licensee in infringement proceedings brought by the proprietor of a registered trade mark.
The flexibility in section 30(6) must be stressed: the court must do no more than "take into account" the losses of a licensee. What "taking into account" means will depend very much on all the circumstances of the case. "Black holes" tend to have very different shapes and sizes, and one can see why the drafter of this provision opted to confer flexibility on the court rather than a straitjacket.
i) The latter half of section 30(6) – "…the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees…" – is a protection conferred by section 30, and so only available to a licensee where there is an application to register the licence.
ii) In order to assess the losses suffered or likely to be suffered by a licensee, the proprietor must plead out in full the relevant licences, including providing copies.
iii) It might be objected that the proprietor is being over-compensated. That, as it seems to me, is unlikely, for two reasons. First, the licensee may have in personam rights against the proprietor under their licence. Secondly, as I will come to describe under Issue 3, there is nothing to prevent a licensee to apply to register the licence late, and thereby remove the barrier to relying upon the "protection of section 30". Thirdly, and as I have already noted, the provision is notable for its flexibility. "Taking account of" does not mean "inevitably conferring".
(4) Issue 3: Curing by late registration
There is no time limit within which an application for registration of a licence needs to be made in order to obtain the protection of section 30.
i) The issue is most clearly identified by a consideration of section 25(3)(a) of the 1994 Act, which provides that a failure to apply for registration renders the registrable transaction "ineffective as against a person acquiring a conflicting interest" in regard to the mark. Clearly, once priority has been lost, it cannot be regained by making an after-the-event registration application. However, the licensee can, in applying to register the licence, at least protect themselves as against later conflicting interests.
ii) The same consequence does not follow where a licensee seeks to assert the section 30(6) or 30(6A) protections conferred on them. The licensee ought to be able to obtain the benefit such protections by way of late application, because no third-party interests are prejudiced by that application. Later registration enables the court to make "such directions as it thinks fit" under the latter half of section 30(6) so that the proprietor is not over-compensated. Of course, just as with late amendments, intervention under section 30(6A) may be refused if made late and is prejudicial to the defendant(s).
(5) Costs
i) The sub-licensees cannot bring or be joined to infringement proceedings.
ii) The only possible claimants – the Proprietor and the Exclusive Licensee – are already joined. I have insufficient information about the timings of (i) SportsDirect's infringements, (ii) the registration of the interests of the Proprietor and the Exclusive Licensee and/or (iii) the timing of the proceedings before the Judge. But the application of section 25(4) was plainly a matter for the Judge in the Liability Proceedings, and is not a matter for me.
E. DISPOSITION
On 30 June 2023, over 5 years after the judgment on liability, the Claimants served their Points of Claim on the Defendants. Pursuant to the Points of Claim, the Claimants are now seeking damages not only for the loss allegedly suffered by the Claimants themselves, but also the loss allegedly suffered by their licensees, relying on section 30(6) of the Trade Marks Act 1994…This is a departure from the position taken by the Claimants in the Particulars of Claim filed at the outset of these proceedings, in which the Claimants sought (by way of paragraph 39 and paragraphs (3) and (4) of the prayer for relief) an inquiry in relation to the loss and damage suffered "by the Claimants and each of them". This new claim, for losses allegedly suffered by non-parties to the proceedings, came as a surprise to the Defendants, almost 8 years after the commencement of the proceedings. This new claim has also had the effect of very significantly inflating the quantum of the Claimants' claims, given that the majority of the damages now sought by the Claimants relate to losses allegedly suffered by third party licensees.
i) Whether any amendments sought by the Proprietor and/or the Exclusive Licensee will in fact be permitted. That is obviously a matter for the case management conference, but it is quite clear that: (i) any such amendments (if any) will be late; and (ii) cannot without more be inconsistent with the findings in the Liability Judgment.
ii) If any proposed amendments relate to losses sustained by sub-licencees, and the interests of those sub-licensee have only recently been registered, these are matters to take into account for the purposes of section 30(6) of the Trade Marks Act 1994. That sub-section is drafted in remarkably fluid terms, and enables the court to take into account any potential over-recovery by a proprietor (or exclusive licensee) at the expense of sub-licensees. Obviously, given the factual uncertainties present in the proceedings at the moment, I can say no more.
25. Registration of transactions affecting registered trade mark.
(1) On application being made to the registrar by –
(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of a registrable transaction, or
(b) any other person claiming to be affected by such a transaction,
the prescribed particulars of the transaction shall be entered in the register.
(2) The following are registrable transactions –
(a) an assignment of a registered trade mark or any right in it;
(b) the grant of a licence under a registered trade mark;
(c) the granting of any security interest (whether fixed or floating) over a registered trade mark or any right in or under it;
(d) the making by personal representatives of an assent in relation to a registered trade mark or any right in or under it;
(e) an order of a court or other competent authority transferring a registered trade mark or any right in or under it.
(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction –
(a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it, and
(b) a person claiming to be a licensee by virtue of the transaction does not have the protection of section 30 or 31 (rights and remedies of licensee in relation to infringement).
(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless –
(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or
(b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.
(5) Provision may be made by rules as to –
(a) the amendment of registered particulars relating to a licence so as to reflect any alteration of the terms of the licence, and
(b) the removal of such particulars from the register –
(i) where it appears from the registered particulars that the licence was granted for a fixed period and that period has expired, or
(ii) where no such period is indicated and, after such period as may be prescribed, the registrar has notified the parties of his intention to remove the particulars from the register.
(6) Provision may also be made by rules as to the amendment or removal from the register of particulars relating to a security interest on the application of, or with the consent of, the person entitled to the benefit of that interest.
28. Licensing of registered trade mark.
(1) A licence to use a registered trade mark may be general or limited. A limited licence may, in particular, apply –
(a) in relation to some but not all of the goods or services for which the trade mark is registered, or
(b) in relation to use of the trade mark in a particular manner or a particular locality.
(2) A licence is not effective unless it is in writing signed by or on behalf of the grantor. Except in Scotland, this requirement may be satisfied in a case where the grantor is a body corporate by the affixing of its seal.
(3) Unless the licence provides otherwise, it is binding on a successor in title to the grantor's interest. References in this Act to doing anything with, or without, the consent of the proprietor of a registered trade mark shall be construed accordingly.
(4) Where the licence so provides, a sub-licence may be granted by the licensee; and references in this Act to a licence or licensee include a sub-licence or sub-licensee.
(5) The proprietor of a registered trade mark may invoke the rights conferred by that trade mark against a licensee who contravenes any provision in the licence with regard to –
(a) its duration,
(b) the form covered by the registration in which the trade mark may be used,
(c) the scope of the goods or services for which the licence is granted,
(d) the territory in which the trade mark may be affixed, or
(e) the quality of the goods manufactured or of the services provided by the licensee.
29. Exclusive licences
(1) In this Act an "exclusive licence" means a licence (whether general or limited) authorising the licensee to the exclusion of all other persons, including the person granting the licence, to use a registered trade mark in the manner authorised by the licence. The expression "exclusive licensee" shall be construed accordingly.
(2) An exclusive licensee has the same rights against a successor in title who is bound by the licence as he has against the person granting the licence.
30. General provisions as to rights of licensees in case of infringement.
(1) This section has effect with respect to the rights of a licensee in relation to infringement of a registered trade mark. The provisions of this section do not apply where or to the extent that, by virtue of section 31(1) below (exclusive licensee having rights and remedies of assignee), the licensee has a right to bring proceedings in his own name.
(1A) Except so far as the licence provides otherwise a licensee may only bring proceedings for infringement of the registered trade mark with the consent of the proprietor (but see subsections (2) and (3)).
(2) An exclusive licensee may call on the proprietor of the registered trade mark to take infringement proceedings in respect of any matter which affects his interests.
(3) If the proprietor mentioned in subsection (2) –
(a) refuses to do so, or
(b) fails to do so within two months after being called upon
the exclusive licensee may bring the proceedings in his own name as if he were the proprietor.
(4) Where infringement proceedings are brought by a licensee by virtue of this section or with the consent of the proprietor or pursuant to the licence the licensee may not, without the leave of the court, proceed with the action unless the proprietor is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a licensee alone.
(5) A proprietor who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(6) In infringement proceedings brought by the proprietor of a registered trade mark any loss suffered or likely to be suffered by licensees shall be taken into account; and the court may give such directions as it thinks fit as to the extent to which the plaintiff is to hold the proceeds of any pecuniary remedy on behalf of licensees.
(6A) Where the proprietor of a registered trade mark brings infringement proceedings, a licensee who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.
(7) The provisions of this section apply in relation to an exclusive licensee if or to the extent that he has, by virtue of section 31(1), the rights and remedies of an assignee as if he were the proprietor of the registered trade mark.
31. Exclusive licensee having rights and remedies of assignee.
(1) An exclusive licence may provide that the licensee shall have, to such extent as may be provided by the licence, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. Where or to the extent that such provision is made, the licensee is entitled, subject to the provisions of the licence and to the following provisions of this section, to bring infringement proceedings, against any person other than the proprietor, in his own name.
(2) Any such rights and remedies of an exclusive licensee are concurrent with those of the proprietor of the registered trade mark, and references to the proprietor of a registered trade mark in the provisions of this Act relating to infringement shall be construed accordingly.
(3) In an action brought by an exclusive licensee by virtue of this section a defendant may avail himself of any defence which would have been available to him if the action had been brought by the proprietor of the registered trade mark.
(4) Where proceedings for infringement of a registered trade mark brought by the proprietor or an exclusive licensee relate wholly or partly to an infringement in respect of which they have concurrent rights of action, the proprietor or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant. This does not affect the granting of interlocutory relief on an application by a proprietor or exclusive licensee alone.
(5) A person who is added as a defendant as mentioned in subsection (4) shall not be made liable for any costs in the action unless he takes part in the proceedings.
(6) Where an action for infringement of a registered trade mark is brought which relates wholly or partly to an infringement in respect of which the proprietor and an exclusive licensee have or had concurrent rights of action –
(a) the court shall in assessing damages take into account –
(i) the terms of the licence, and
(ii) any pecuniary remedy already awarded or available to either of them in respect of the infringement;
(b) no account of profits shall be directed if an award of damages has been made, or an account of profits has been directed, in favour of the other of them in respect of the infringement; and
(c) the court shall if an account of profits is directed apportion the profits between them as the court considers just, subject to any agreement between them.
The provisions of this subsection apply whether or not the proprietor and the exclusive licensee are both parties to the action, and if they are not both parties the court may give such directions as it thinks fit as to the extent to which the party to the proceedings is to hold the proceeds of any pecuniary remedy on behalf of the other.
(7) The proprietor of a registered trade mark shall notify any exclusive licensee who has a concurrent right of action before applying for an order under section 16 (order for delivery up), and the court may on the application of the licensee make such order under that section as it thinks fit having regard to the terms of the licence.
(8) The provisions of subsections (4) to (7) above have effect subject to any agreement to the contrary between the exclusive licensee and the proprietor.
Note 1 Section 30(1A) slightly muddies the waters, by referring to a “licensee” and not to an “exclusive licensee”. However, subsections (2) and (3) make expressly clear that the right to bring proceedings is conferred only (if sometimes only contingently) on an exclusive licensee. [Back] Note 2 Which would include an exclusive licensee if given the rights and remedies of a proprietor under section 31(1) of the Trade Marks Act 1994. [Back] Note 3 I shall from hereon refer only to the proprietor and not “and/or the exclusive licensee”, which can be taken as read. Also, there is no difference between a (non-exclusive) licensee and a (non-exclusive) sub-licensee, it is simply that this case appears to involve the latter, not the former. [Back]