Lifestyle Equities CV & Ors v Santa Monica Polo Club Ltd & Ors

In exercising its discretion after a successful intellectual property claim, the court must make proportionate and practical ancillary orders. Delivery-up or destruction should be determined by the practicability of erasing the infringing sign and the likelihood of compliance with an order under section 15(1) of the Trade Marks Act 1994. Costs may be apportioned by issue, but a double discount is reserved for cases outside the normal run. Interim payment applications must comply with the mandatory notice and evidence requirements in CPR Part 25.6. Publicity orders are exceptional and should serve a recognised deterrent or public-awareness purpose. A stay pending an application for permission to appeal depends on the balance of convenience and should avoid effectively prejudging the appeal.

The judgment dealt with consequential and procedural matters following the claimants’ successful trade mark and passing-off action against clothing businesses and individuals. The court considered the form of the injunction, delivery-up and destruction of infringing goods, disclosure needed to elect between an account of profits and an inquiry as to damages, costs, interim payments, a publicity order, permission to appeal and a stay.

The central issues were how far the ancillary relief should extend, whether the claimants had complied with the procedures for interim relief, and how the court should balance the parties’ interests pending a possible appeal.

1. Injunction. A proviso was added to make clear that the injunction did not prohibit use of the words “Santa Monica Polo Club” alone. That use had not been relied upon or adjudicated upon at trial. The court declined to determine whether a future claim based on those words would be barred by Henderson v Henderson principles.
2. Delivery-up and destruction. The defendants were required to provide evidence explaining how infringing signs would be erased, removed or obliterated and, where that was said to be impracticable, why. An order for delivery-up under section 15(2) of the Trade Marks Act 1994 was premature because there was no evidence that an order under section 15(1) would not be complied with or was likely not to be complied with.
3. Disclosure and costs. Proportionate information was ordered from all retail defendants to enable an informed election between an account of profits and an inquiry as to damages. The claimants were the overall winners, but the independent issues on which they lost justified a 10% discount. A further, so-called double discount was refused because the case was not outside the normal run. The defendants were ordered to pay 90% of the claimants’ costs.
4. Interim relief. The application for a lien and financial security was refused. The mandatory procedure in CPR Part 25.6, including service of an application notice at least 14 days before the hearing and supporting evidence, had not been followed. There was also insufficient evidence of an immediate risk of dissipation.
5. Publicity, appeal and stay. No publicity order was made. Such orders are unusual and should be desirable for a recognised purpose under recital 27 of Directive 2004/48/EC. Permission to appeal was refused because the proposed challenges disclosed no real prospect of success. A stay was nevertheless granted in relation to the three-horse sign pending an application to the Court of Appeal, because refusing it risked effectively prejudging the appeal and there was no real urgency.

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