Lifestyle Equities v Royal County of Berkshire Polo Club: multi-country trademark claim survives strike-out bid

What happened

Lifestyle Equities, owner of the 'Beverley Hills Polo Club' trademarks, sued the Royal County of Berkshire Polo Club and ten other UK and overseas defendants, including companies based outside the UK, for trademark infringement, passing off and conspiracy across the UK, EU and five other countries. The Royal County of Berkshire Polo Club defendants applied to strike out the claims against the overseas defendants, arguing the structure of the case was an abuse of process, and asked for a stay on jurisdictional grounds. Lifestyle Equities applied for summary judgment against the defendants' counterclaim, which alleged unjustified threats and said the trademark itself was deceptive because no actual 'Beverley Hills Polo Club' existed.

What did the court decide in Lifestyle Equities CV v Royal County of Berkshire Polo Club?

The judge held that bringing one consolidated claim against all 11 defendants in the English courts was a legitimate choice for the claimant to make, not an abuse of process. Questions about whether individual defendants based outside the UK belonged in another court, or whether an English court could rule on the validity of trademarks registered outside the UK, were separate issues that hadn't properly been raised yet by those defendants, so the strike-out and stay application was dismissed. On the counterclaim, the court found a solicitors' letter sent after proceedings had already been issued, but before the recipient knew that, could still count as an actionable 'threat' under the amended Trade Marks Act 1994, so summary judgment failed on that point. But the court did grant summary judgment on the allegation that the mark was deceptive, finding it made no real claim to an actual polo club existing in Beverly Hills.

What we learned from this

• What I'd take from this is that a brand owner facing infringement by a network of connected businesses across several countries doesn't necessarily have to bring separate claims in each country just to avoid a challenge, though jurisdictional fights over individual defendants can still follow later. If you send a cease and desist letter, bear in mind it can count as an unjustified threat even if you've quietly already issued proceedings, if the recipient doesn't know that. A trademark isn't automatically deceptive just because the name suggests a real place or club that doesn't actually exist in that form.

Things to be aware of

The businesses involved

What happened next

• The club's own website describes itself as 'the Berkshire', one of the leading polo clubs in Europe, hosting tournaments including the Prince of Wales Trophy.Source: Rcbpc
• Wikipedia describes the club as based near Windsor and home to the Prince of Wales tournament, one of the sport's most prestigious fixtures.Source: En
• The club's brand management representative states it was founded by a businessman and formally opened by a member of the Royal Family.Source: Brandmanagement

What others said about it

• Lexology notes the Royal County of Berkshire Polo Club was separately involved in an invalidation dispute brought by The Polo/Lauren Company over its trademark portfolio.Source: Lexology, April 2018