Lifestyle Equities CV & Anor. v Amazon UK Services Limited & Ors.

Consequential relief after a finding of trade mark infringement remains discretionary. A declaration should be made only where it serves a useful purpose. It may be refused where it risks conveying a broader proposition than the historical findings justify. An injunction will normally follow a finding of infringement unless the defendant gives a clear and unequivocal undertaking. Voluntary restrictions that are not permanent, or that leave an infringing business model unaffected, do not remove the need for an injunction. The standard form should be used unless the circumstances require tailoring. An inquiry as to damages need not be replaced by summary assessment merely because substantial recovery appears doubtful, particularly where the claimant bears the costs risk and a Part 36 offer remains available.

Lifestyle appealed from the decision of Mr Justice Michael Green in the High Court, Intellectual Property List, reported at [2021] EWHC 118 (Ch). In its main judgment, the Court of Appeal substantially allowed the appeal: [2022] EWCA Civ 552. This judgment determined consequential issues concerning declarations, an injunction against the Second and Fourth Defendants, an inquiry as to damages, and permission to appeal to the Supreme Court. The central questions were whether the declarations would serve a useful purpose, whether an injunction remained appropriate despite Amazon’s restrictions and non-joinder arguments, whether damages should be assessed summarily, and whether permission to appeal should be granted.

1. Declarations. The declarations were refused. A declaration is discretionary and may be granted where it serves a useful purpose, as recognised in Messier-Dowty Ltd v Sabena SA [2000] 1 WLR 2040. The proposed declarations would not provide the necessary utility. They might also be understood as stating that any listing of US-branded goods on amazon.com viewable by a UK or EU consumer infringed the Trade Marks, although that did not necessarily follow from the historical findings. Lifestyle had not sought an order requiring publication under Article 15 of Directive 2004/48/EC.
2. Injunction. An injunction was appropriate against the Second and Fourth Defendants. The normal starting point is that an injunction follows a finding of infringement unless there is a clear and unequivocal undertaking not to continue the infringing acts: Cantor Gaming Ltd v Gameaccount Global Ltd [2007] EWHC 1914 (Ch), [2008] FSR 4. Amazon had given no such undertaking. Its voluntary restrictions were not permanent and did not affect the MFN Export model, apart from informing UK and EU consumers at checkout that goods were unavailable for shipping. The restrictions therefore did not prevent further infringement. Amazon could not raise the contrary contention or seek further evidence and remittal at this stage, having omitted the point from its Respondent’s notice, skeleton argument and oral submissions. The non-joinder of Amazon.com Services LLC did not justify allowing infringement to continue by defendants already found liable.
3. The injunction should take the standard form. Nothing in the circumstances required a tailored order, and tailoring would risk further dispute and difficulty. The approach to standard injunctions was considered in Coflexip SA v Stolt Comex Seaway MS Ltd [2001] RPC 9 and Specsavers International Healthcare Ltd v Asda Stores Ltd (No 2) [2012] EWCA Civ 494, [2012] FSR 20.
4. Further guidance and damages. A material change of circumstances would permit an application to vary or discharge the injunction. A compliance dispute could be resolved by declaratory relief rather than contempt proceedings, following Hotel Cipriani Srl v Fred 250 Ltd [2013] EWHC 70 (Ch), [2013] FSR 34. An inquiry as to damages was allowed at Lifestyle’s costs risk. The possibility that the recovery might be substantial was doubtful, but the inquiry was not so clearly disproportionate as to justify imposing summary assessment on unwilling parties, particularly since Amazon could protect itself by making a suitable Part 36 offer. Permission to appeal to the Supreme Court was refused because there was no arguable point of law of general public importance.

• Court of Appeal (Civil Division) — The main judgment, [2022] EWCA Civ 552, substantially allowed Lifestyle’s appeal. The present judgment resolved the consequential issues.
• High Court, Intellectual Property List — Mr Justice Michael Green’s decision, [2021] EWHC 118 (Ch), was the judgment under appeal.