Lifestyle Equities CV & Anor v Royal County of Berkshire Polo Club Ltd

A claim is not an abuse of process merely because the claimant prefers to sue multiple defendants in one jurisdiction, or because a jurisdiction challenge might succeed. Strike-out for abuse requires a clear and obvious case, including clear demonstration that the claimant lacks a legitimate object in bringing the proceedings in their chosen form.

For conspiracy to injure by unlawful means, an intention to injure the claimant remains a necessary ingredient, although it need not be the dominant intention. Under section 21 of the Trade Marks Act 1994, a communication may contain a threat of infringement proceedings even though proceedings have already been issued, where the communication would reasonably be understood as indicating an intention to bring proceedings. A mark is deceptive only where the deception concerns information conveyed by the mark itself.

The claimants brought trade mark infringement, passing off and related claims against defendants domiciled in England and against distributors and retailers domiciled outside the jurisdiction. The first three defendants applied to strike out or stay parts of the claims on abuse of process, non-justiciability and forum non conveniens grounds. The claimants applied for summary judgment or strike-out on parts of a counterclaim concerning threats of trade mark proceedings, invalidity of the claimants’ marks and alleged abuse of process.

The central issues were whether the proceedings were an abuse because foreign defendants and foreign trade mark rights were joined in one action; whether the conspiracy claim pleaded the necessary intention to injure; whether letters sent after issue of proceedings were actionable threats; and whether the words “Beverley Hills Polo Club” made the marks deceptive.

1. Applications and abuse of process. The defendants’ application to strike out or stay the claims was dismissed. The relevant principles were those stated in JSC BTA Bank v Ablyazov (No 6) [2011] 1 WLR 2996 and Broxton v McClelland [1995] EMLR 485. Motive and an ulterior purpose are not enough. Proceedings are abusive where the court’s process is used to obtain an impermissible collateral advantage or to cause problems beyond those ordinarily arising from proper litigation. Only a clear and obvious case warrants preliminary strike-out.
2. The claimants had a legitimate object in suing all defendants in one set of proceedings. The fact that foreign defendants might later succeed on a jurisdiction or forum challenge would not itself make the proceedings abusive. The English defendants could not challenge jurisdiction on behalf of foreign defendants who had not done so. No stay was justified on the present applications.
3. Conspiracy. Following JSC BTA Bank v Ablyazov (No. 14) [2018] UKSC 19, an intention to injure the claimant, though not necessarily a dominant intention, remained a necessary ingredient of conspiracy to injure by unlawful means. The existing pleading did not allege that intention adequately. Permission to amend was granted because the amended allegations were sufficiently particularised and were not shown to be clearly unfounded.
4. Threats of trade mark proceedings. A letter sent after proceedings had been issued could still be a threat within section 21 of the Trade Marks Act 1994. The statutory test asks what a reasonable person in the recipient’s position would understand from the communication. The fact that proceedings had already been issued, without the recipients knowing that fact, did not provide a defence. Summary judgment for the claimants on this issue was therefore refused because their legal argument was wrong.
5. Deceptive marks. Summary judgment was granted for the claimants on the invalidity allegation. Applying Emanuel v Continental Shelf 128 Ltd [2006] ETMR 56, the relevant deception must arise from information conveyed by the mark itself. The mark did not represent that the goods had been placed on the market with the imprimatur of an existing Beverley Hills Polo Club. The pleaded facts therefore did not establish deception under the applicable trade mark provisions.
6. The court did not determine whether a direct challenge to the validity of a foreign trade mark was justiciable in England, because no such challenge had yet been pleaded. The possible tort claim for abuse of process was also left for consequential consideration.

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