Lindsay Lane KC appeared for the third, fourth and eighth defendants (collectively, “Santa Barbara”) in an appeal from the judgment of Hacon HHJ staying the claimants’ (“Lifestyle Equities”) claim for trade mark infringement and passing off pursuant to section 9 of the Arbitration Act 1996.
The claim concerned the alleged infringement of Lifestyle Equities’ EU and UK trade marks for the words and logo, Beverley Hills Polo Club (“the Trade Marks”). Santa Barbara had used the Santa Barbara Polo Club sign since 1911. In 1997, Lifestyle Equities predecessor entered into a co-existence agreement with Santa Barbara, governed by Californian law, with a clause stipulating that any disputes in relation to the agreement would be resolved by arbitration in Los Angeles. Lifestyle Equities argued that the co-existence agreement was not binding on them as they were unaware of it when they took assignment of the Trade Marks. Santa Barbara argued that, under California Law, the co-existence agreement was binding on Lifestyle Equities. Alternatively, having relied on the co-existence agreement for the purposes of registering trade marks in Mexico in 2015, Lifestyle Equities were bound by the doctrine of equitable estoppel.
The Court of Appeal dismissed the appeal. The judge was wrong, firstly to treat Lifestyle Equities as a party to the co-existence agreement upon assignment of the trade marks and secondly to treat them as estopped from denying the same by reason of communications to third parties in relation to the registration of the Mexican trade marks. However, by a two-to-one majority (Snowden LJ dissenting) the Court of Appeal found that the judge was correct that Californian law was the applicable law for the purposes of determining whether Lifestyle Equities was bound by the arbitration clause in the agreement. On the expert evidence, Californian law took a broader view than English law and bound Lifestyle Equities. The stay of the infringement proceedings granted by the judge was upheld.