Lindsay Lane QC appeared for three of the eight defendants in this hearing of the defendants’ application for a stay of trade mark infringement and passing off proceedings under s 9 of the Arbitration Act 1996.
The claimants had commenced proceedings in IPEC for trade mark infringement and passing off, based on their marks comprising the words BEVERLY HILLS POLO CLUB and a device depicting a polo player wielding a mallet. The defendants were the owners or licensees of a trade mark comprising the words SANTA BARBARA POLO & RACQUET CLUB and also depicting a polo player wielding a mallet.
An earlier dispute between the former owners of the BEVERLY HILLS POLO CLUB marks and the owner of the SANTA BARBARA POLO & RACQUET CLUB mark had been settled by a coexistence agreement in 1997. This agreement was governed by Californian law and provided (among other considerations) for the arbitration of disputes in Los Angeles under American Arbitration Association Rules. On this basis, the defendants argued that the IPEC proceedings should be stayed in favour of arbitration in Los Angeles. The claimants argued that the coexistence agreement did not apply because they were not parties to that agreement.
The court held that the issue of whether the claimants were bound by the arbitration agreement was a matter of interpretation of the agreement under Californian law. Considering expert evidence of Californian law, the court held that the claimants were bound by the arbitration agreement because the coexistence agreement applied to assignees of the marks and/or because the claimants were bound by the equitable doctrine of estoppel under Californian law because they had sought to take the benefit of the coexistence agreement.
Accordingly the defendants were entitled to a stay of the proceedings and the application was granted.