Luxe World Limited v Touch of Vogue Limited & Anor

An account of profits is unavailable as relief for an actionable threat of proceedings for infringement of a registered design. Section 26C of the Registered Designs Act 1949 provides the relevant remedies, and equity does not create an independent power to award an account where the claim concerns a non-proprietary wrong. The distinction between threats proceedings and infringement proceedings is not anomalous: the Act expressly provides for an account in an infringement action, but not in threats proceedings. A claimant seeking relief in a threats action must therefore pursue the statutory remedies, including damages, rather than an account of profits.

Luxe World brought proceedings alleging an actionable threat of proceedings for infringement of a registered design. It claimed an account of profits as an alternative to an inquiry as to damages.

The defendants applied to strike out the account claim. They also sought an order requiring Luxe World either to state the value of its claim or to pay the full court fee applicable to an inquiry. The central issue was whether an account of profits could be awarded in proceedings under section 26C of the Registered Designs Act 1949, either under the statute or through the court’s equitable jurisdiction.

1. The account claim was struck out. An actionable threat of proceedings for infringement of a registered design is not a tort concerned with invasion of a proprietary right. The claimant was therefore not entitled to alternative relief by way of an account of profits.
2. Section 26C of the Registered Designs Act 1949 provides for a declaration, an injunction and damages. It does not provide for an account. Although the Act expressly provides for an account in an infringement action under section 24A(2), that statutory distinction does not support implying an account remedy in threats proceedings.
3. The court rejected the argument that equity supplied an independent jurisdiction to order an account. Applying the majority ruling in Devenish Nutrition Ltd v Sanofi-Aventis SA [2009] Ch 360 (CA), the court held that the equitable remedy was unavailable for this non-proprietary claim. Experience Hendrix LLC v PPX Enterprises Inc [2003] EWCA Civ 323 was a contract case and did not alter that conclusion.
4. The court also rejected the contention that HMCTS’s acceptance of the initial fee made it functus officio. The court could order Luxe World either to state a value for the claim or to pay the higher fee.
5. Counsel were invited to agree an order including all necessary directions for trial.