Lifestyles Equities CV & Anor v Sportsdirect.Com Retail Ltd & Ors

For joinder under CPR Part 19, the court must consider whether the proposed claim has a reasonable prospect of success and whether adding the party is desirable to resolve connected matters. An inference that a company’s director or controlling individual actively participated in, and intended to facilitate, infringing acts may be sufficient to establish a reasonable prospect of joint tortfeasorship. Joinder and a possible stay of proceedings under Article 104(1) of the Community Trade Mark Regulation are distinct questions. A possible stay does not justify refusing joinder. Where the court raises a stay of its own initiative, the parties must have a proper opportunity to provide evidence and considered submissions. Case-management directions should balance preparation time, trial efficiency and prejudice caused by delay.

The claimants, proprietor and licensee of Beverly Hills Polo Club trade marks, brought proceedings concerning alleged infringement by clothing and shower gels. They applied to join six further defendants said to have participated in the supply chain for the shower gels, including a former licensee, company officers and other companies.

The application raised issues concerning reasonable prospects of success, joint tortfeasorship, jurisdiction over a foreign proposed defendant, the possible stay of the EU trade mark claim pending a revocation application, and the appropriate management and listing of the proceedings.

1. Joinder and reasonable prospects. The claims against the proposed defendants had a reasonable prospect of success. The principles of joint tortfeasorship require active cooperation in bringing about the primary tort and an intention that the cooperation should do so. Where a company is controlled by a sole director and shareholder, the circumstances may support an evidential inference that the individual instigated and controlled the relevant acts. The proposed defendants had not displaced those inferences at this stage. They were therefore suitable parties under CPR 19.2.
2. Jurisdiction. The English court had jurisdiction over the Spanish proposed defendant under Article 8(1) of Regulation (EU) No. 1215/2012. The claims were closely connected and should be heard together. Article 94 of the Community Trade Mark Regulation did not disapply that jurisdictional provision.
3. Stay. Joinder and a stay under Article 104(1) of Regulation (EC) 207/2009 on the Community Trade Mark were discrete questions. A possible stay did not provide a reason to refuse joinder. The court should not determine the stay immediately because the application had not been properly prepared. Article 104 required a structured process, with directions enabling the parties to adduce evidence and make fully considered submissions. The stay issue would ordinarily be considered after pleadings had closed, at a case management conference or on a properly prepared application.
4. Case management. Adding five or six active parties meant that the existing trial estimate could not realistically be maintained. The existing trial was vacated and the proceedings were ordered to be relisted on the first available date convenient to the parties after 1 October 2017. Further directions, including the time estimate, were to be agreed or determined after submissions.

First-instance decision. No prior appellate decision is stated in the judgment.