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Court proceedings stayed because trade mark assignees bound by arbitration agreement (Lifestyle Equities v Hornby Street)

Court proceedings stayed because trade mark assignees bound by arbitration agreement (Lifestyle Equities v Hornby Street)
Published on: 16 December 2020
Published by: LexisPSL
  • Court proceedings stayed because trade mark assignees bound by arbitration agreement (Lifestyle Equities v Hornby Street)
  • What are the practical implications of the case?
  • What was the background?
  • What did the court decide?
  • Case details

Article summary

Arbitration analysis: His Honour Judge Hacon in the Intellectual Property Enterprise Court granted a stay of proceedings commenced in breach of an arbitration agreement, exercising its power under section 9(1) of the Arbitration Act 1996. The claimants in the English proceedings were not originally parties to the arbitration agreement, which was entered into by BHPC Marketing Inc as part of a broader coexistence agreement with the defendants, who owned trade marks similar to their own. However, when BHPC Marketing assigned its trade marks to the claimants, the latter relied on the coexistence agreement when registering the trade marks in Mexico. This resulted in their becoming parties to that agreement, and the English court concluded that, under Californian law, the arbitration clause in the agreement ‘travelled’ with it, because of the assignment. In any case, the claimants’ conduct was such that they may have already bound themselves to the arbitration agreement, under the equitable doctrine of estoppel as applied in California. The court concluded that the proceedings should be stayed. Written by Alejandro Garcia, partner, and Giles Hutt, professional support lawyer at Clyde & Co, London. or take a trial to read the full analysis.

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