Tuesday 23rd November 2021
This is the Claimants’ appeal of the order of HHJ Hacon (sitting as a High Court Judge) dated 12th January 2021.
The substantive proceedings are concerned with allegations of trade mark infringement and passing off related to the appearance of figurative trademarks and a word mark for the words “BEVERLY HILLS POLO CLUB”.
This appeal arises in consequence of an application of a stay of the proceedings pursuant to section 9 of the Arbitration Act 1996 and CPR 62.8.
Lifestyle is a Dutch company that was the assignee for value of UK and EU trade marks. It alleges that the Defendants are liable for infringement of those marks. A US entity unconnected with Lifestyle and which, back through a chain of assignments, had once been the owner of some of the marks now owned by Lifestyle, and of US trade marks in which Lifestyle has never had any interest, had entered into a co-existence agreement with one of the Defendants (the 1997 Agreement). That agreement was subject to Californian law and contained an arbitration provision. Lifestyle did not know of that agreement prior to any acquisition of the UK and EU trade marks. The Judge nevertheless held that it was bound by the arbitration provision in that 1997 Agreement and stayed this claim.
That Order is now appealed.
Lower Court Judgment: