Remedies for Groundless Threats - Luxe World Ltd v Touch of Vogue Ltd.
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| Jane Lambert |
Intellectual Property Enterprise Court (His Honour Judge Hacon) Luxe World Ltd v Touch of Vogue Ltd and another [2026] EWHC 148 (IPEC) (30 Jan 2026)
S.26C (1) of the Registered Designs Act 1949 provides that proceedings in respect of an actionable threat may be brought against the person who made the threat for—
(a) a declaration that the threat is unjustified;
(b) an injunction against the continuance of the threat;
(c) damages in respect of any loss sustained by the aggrieved person by reason of the threat.
An "actionable threat" in this context means a threat to sue for infringing a registered design. S.26A (1) states that a threat of infringement proceedings made by any person is actionable by any person aggrieved by such a threat, subject to the provisions of subsections 26A (2) to (5). S.26 (1) adds that a communication contains a “threat of infringement proceedings” if a reasonable person in the position of a recipient would understand from the communication that-
(a) a registered design exists, and
(b) a person intends to bring proceedings (whether in a court in the United Kingdom or elsewhere) against another person for infringement of the right in the registered design by—
(i) an act done in the United Kingdom, or
(ii) an act which, if done, would be done in the United Kingdom.
Remedies for Groundless Threats
There are similar provisions in the Patents Act 1977, Copyright, Designs and Patents Act 1988 and Trade Marks Act 1994. The remedy for aggrieved persons who suffer unjustified threats is the same in all four statutes. Such persons are entitled to declarations, injunctions and damages in respect of any loss sustained by the aggrieved person by reason of the threat. There is no express provision in any of those enactments for an account of profits. The question of whether an aggrieved person might also be entitled to an account of profits as an alternative to an inquiry has crossed my mind more than once over the years, and I doubt that I am the only one.
Strikeout Application
The issue arose in Luxe World Ltd v Touch of Vogue Ltd and another [2026] EWHC 148 (IPEC) (30 Jan 2026) before His Honour Judge Hacon on 27 Jan 2026. The claimant, Luxe World Ltd, sought an account of profits as an alternative to an inquiry as to damages. The defendants, Touch of Vogue Ltd. and its director, Mirwas Naffee, applied to strike out the prayer for an account as a head of relief in an action alleging an actionable threat of proceedings for infringement of a registered design.
The Issue Fee
The defendants suspected that the claimant had sought an account of profits to avoid paying an issue fee of £10,000, which it would have had to pay had it chosen an inquiry. The claimant had stated that it did not know the value of the defendants' accountable profits and was charged £646 for issuing the claim form. The defendants sought an order requiring the claimant to quantify its claim or pay £10,000 instead.
Claimant's Arguments
The claimant conceded that the Registered Designs Act 1949 does not provide for an account of profits as a form of relief in proceedings for a threat of infringement of a registered design, but it argued that equity enables the court to order an account of profits as an alternative to an inquiry where appropriate. A statute may be silent as to an account of profits, but that does not deprive the court of its equitable discretion to order an account.The claimant relied on the judgment of the Court of Appeal in Experience Hendrix LLC v PPX Enterprises Inc [2003] EMLR 25, [2003] EWCA Civ 323, [2003] FSR 46, [2003] 1 All ER (Comm) 830 which followed the House of Lords' decision in Attorney General v Blake [2001] IRLR 37, [2001] IRLR 36, [2001] 1 AC 268, [2000] 3 WLR 625, [2001] AC 268, [2000] EMLR 949, [2000] 2 All ER (Comm) 487, [2000] 4 All ER 385, [2001] Emp LR 329, [2000] UKHL 45. In Experience Hendrix, Lord Justice Mann said:
"[34] ....... Since Blake I see no reason why, if the beneficiary of a restrictive covenant is unaware of its infringement in time to obtain an injunction immediately, but is able to obtain an injunction for the future after the defendant by the infringement has obtained some benefit, the appellant should be precluded from obtaining an injunction and, if justice requires, a reasonable sum to compensate for the past infringement, even though he may not be able to show any financial loss to himself.
…
[35] I can take the example put in argument of breach of a restrictive covenant not to use land for a pop concert, committed in circumstances where the beneficiary was out of the country and suffered no discomfort at all. Why should he not obtain an injunction to restrain repetition and a reasonable sum having regard to the financial benefit obtained by the neighbouring landowner from the infringement? Likewise, if a breach of contract occurs in such circumstances that there is no possibility at all of obtaining an injunction (e.g. because the interests of a third party have intervened), I see no reason why that should, since Blake, present any insuperable bar, in appropriate circumstances, to an order for payment of a reasonable sum having regard to any benefit made by the infringement, even though the appellant cannot prove any financial loss (cf. Jaggard [v Sawyer [1995] 1 WLR 269 (CA)], at p.291, per Millett L.J.). Lord Nicholls in Blake took as ''a useful general guide, although not exhaustive'' of circumstances in which an account of profit might be appropriate, ''whether the plaintiff had a legitimate interest in preventing the defendant's profit-making activity''. Those are precisely the circumstances in which an injunction for the future is likely to be granted. It would be paradoxical if its granting in the light of a continuing future risk were at the same time to deprive the appellant of any claim to strip, or seek a reasonable sum taking account of, the defendant's profit from past infringement."
The claimant contended that its case was similar to Experience Hendrix as it also had a legitimate interest in preventing the defendants' profit-making activity made possible by their threats of proceedings for infringement of a registered design.
Defendants' Arguments
The defendants relied on the following passages of Snell;
The judge also referred to Devenish Nutrition Ltd v Sanofi-Aventis SA [2009] Ch 360 (CA), where the Court of Appeal held that it was bound by authority to hold that a restitutionary award could not be made on a claim for a non-proprietary tort.
Decision
His Honour held at para [16] that he was bound by the Court of Appeal's interpretation of Blake and its decision in Devenish. He added at [17] that as an actionable threat of proceedings for infringement of a registered design is not a tort concerned with the invasion of a proprietary right, two consequences follow. First, equity does not permit relief by way of an account of profits in relation to a claim relating to an actionable threat of proceedings for infringement of a registered design. Secondly, the law set out in Devenish explains what otherwise may appear to be an anomalous difference in the relief available under s.26C and that provided for in respect of an infringement of a registered design or, for that matter, an infringement of other intellectual property rights governed by statute.
Comment
Although Judge Hacon was bound by authority, his decision may not be the last word on the matter. Damages are not always an adequate remedy, and the traditional role of equity is to mitigate the strictures of the law. The roots of the constraining authority to which the judge referred do not run deep. The Supreme Court could easily do some weeding, much as it did with the law on accessory liability in Lifestyle Equities CV and another v Ahmed and Another [2024] UKSC 17 (15 May 2024). Anyone wishing to discuss this article may call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact page at any time.
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