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

Strike out and summary judgment are exceptional at the pleading stage where the pleaded defence depends on factual evidence and raises a developing legal issue. A pleading should be removed only if it discloses no reasonable grounds or has no realistic prospect of success. The court must avoid conducting a mini-trial, but should decide a short point of law where the necessary material is available. A defence remains arguable where its legal consequences depend on findings about consumer perception, trade origin and the functioning of trade marks. Procedural efficiency alone does not justify removing a plausible alternative defence or counterclaim.

The claimants sought to strike out, or obtain summary judgment on, parts of the defence and counterclaim of the fourth and fifth defendants in trade mark infringement proceedings. The application concerned alleged non-infringement, invalidity of the claimants’ United Kingdom and EU trade marks, failure to plead responses to foreign trade mark allegations, and unlawful means conspiracy.

The court dealt with the first and second groups of issues. The central questions were whether the impugned pleadings disclosed reasonable grounds and whether the pleaded arguments had realistic prospects of success.

1. The application under CPR 3.4(2)(a) and CPR 24.2 was refused in relation to paragraphs 6(b)-(n), 18 and 27 of the defence and counterclaim, and in relation to the other identified pleading paragraphs. The defendants were nevertheless required to amend paragraphs 3, 7, 9, 11, 14, 17, 19 and 20.
2. The applicable summary judgment guidance, stated in Global Asset Capital Inc v Aabar Block Sarl [2017] EWCA Civ 37, included asking whether the case had a realistic rather than fanciful prospect of success, avoiding a mini-trial, and deciding a short point of law where the necessary evidence and submissions were available.
3. The attacks on paragraphs 6(b)-(k) could not be resolved summarily. The pleaded issues concerning the effect of words and figurative elements in polo-themed logos, consumer perception, reputation, goodwill and confusing similarity required factual investigation and were not unarguable.
4. The invalidity arguments under Article 4(1)(a) of the Trade Marks Regulation 2017 and section 1(1)(a) of the Trade Marks Act 1994 were not fanciful. The question whether the marks were capable of distinguishing goods in practice raised a serious legal issue in a developing area and depended, at least potentially, on evidence at trial.
5. The alternative non-infringement arguments concerning impairment of the origin function also could not be removed at this stage. The primary defence might succeed, making the alternative issues unnecessary, but that possibility did not justify striking out an otherwise plausible pleading.
6. The desire for procedural efficiency was insufficient to warrant strike out or summary judgment. Further amendments or particulars concerning the validity issues were left for consequential directions.