Court of Appeal Limits Licensee Damages in Trade Mark Case

A Court of Appeal ruling has clarified that trade mark proprietors cannot recover losses suffered by their licensees or sub-licensees in infringement proceedings unless the relevant licences have been registered at the UK Intellectual Property Office. The decision arose from a long-running dispute in which Lifestyle Equities, owner of the Beverly Hills Polo Club marks, sought to include such losses in a damages inquiry against Frasers Group following an earlier finding of infringement. The court held that the statutory mechanism for taking account of licensee losses forms part of a scheme of protections available only to registered licensees. Claims relating to unregistered sub-licences were therefore dismissed as statute-barred. The judgment emphasises the strict preconditions for accessing these remedies and rejects arguments that late registration could revive out-of-time claims.

Small-business owners should register all trade mark licences promptly to preserve the ability to recover full losses in any future infringement action.