Lifestyle Equities CV & Anor v Frasers Group Trading Limited (formerly called Sportsdirect.com Retail Limited) & Ors

Under s.25(3)(b) of the Trade Marks Act 1994, an application to register the prescribed particulars of a licence is a precondition to the protections in ss.30 and 31, including the protection in s.30(6). Section 30(6) forms part of a comprehensive scheme protecting licensees by allowing licensee losses to be taken into account in proceedings brought by the proprietor. An application may have retrospective effect, but it does not suspend limitation. A proprietor’s claim for losses suffered by a licensee is separate from its own claim and remains subject to the applicable limitation period. Registration after expiry of that period cannot revive the claim.

The registered proprietor and exclusive licensee of trade marks brought infringement proceedings and obtained an inquiry as to damages. They later sought to recover losses suffered by various sub-licensees, most of whose licences had not been registered. The appellants applied for summary judgment, contending that s.30(6) could not be used before an application to register each licence and that any later claim was statute barred.

Marcus Smith J dismissed the application, holding that s.30(6) permitted recovery of sub-licensees’ losses despite non-registration and that registration could occur retrospectively: [2025] EWHC 1417 (Ch). The Court of Appeal considered both issues. A cross-appeal concerning reserved costs was deferred.

Zacaroli LJ, with Arnold LJ and Peter Jackson LJ agreeing, allowed the appeal on both grounds and granted summary judgment dismissing the claims for damages relating to losses suffered by the sub-licensees.

1. Construction of the registration condition. The words of s.25(3)(b) of the Trade Marks Act 1994, read with the statutory context, disapply all protections in ss.30 and 31 until an application has been made to register the prescribed particulars of the licence. Section 30 is a comprehensive scheme of protection for licensees. It contemplates proceedings brought by the proprietor for the licensee’s benefit, or proceedings brought by the licensee if the proprietor fails to act.
2. Section 30(6). The first half of s.30(6), requiring licensee losses to be taken into account, and the second half, allowing directions for proceeds to be held for licensees, form a single protective mechanism. Treating the first half as protection for the proprietor would create an unprincipled windfall and would make little sense given the proprietor’s existing remedies under s.14. The subsection therefore falls within s.25(3)(b). An application to register the licence was consequently a precondition to recovering sub-licensee losses under s.30(6).
3. Timing and limitation. The Act contains no specific deadline for making the application. Registration may nevertheless have retrospective effect in relation to infringements occurring before registration. The claim remains subject to the limitation periods imposed by the Limitation Acts. The application must be made before expiry of the applicable limitation period if the claim is to be brought without being time barred.
4. Accrual and separate claims. The registration requirement is procedural and does not postpone accrual of the infringement cause of action. The court applied the principle stated in Coburn v Colledge [1897] 1 QB 702 (CA) and Sevcon Ltd v Lucas CAV Ltd [1986] 1 WLR 462 (HL). A proprietor’s claim for its own losses is separate from its claim to recover losses suffered by a licensee. Commencing the former within time did not preserve the latter.
5. The last pleaded infringement occurred on 30 June 2016. The sub-licensee claims were first advanced on 30 June 2023, and the relevant registration applications were absent or made only in April 2025. The claims were therefore statute barred. The costs cross-appeal was not determined in this judgment.

• Court of Appeal (Civil Division) allowed the appeal on both grounds and granted summary judgment dismissing the claims for damages based on sub-licensees’ losses: [2026] EWCA Civ 583.
• Business and Property Courts of England and Wales, Intellectual Property List (ChD) Marcus Smith J dismissed the appellants’ summary judgment application and held that s.30(6) could apply despite non-registration and that late registration could confer protection: [2025] EWHC 1417 (Ch).
• The underlying liability trial had resulted in an inquiry as to damages. The respondents’ cross-appeal concerning the reservation of costs was deferred.