The Intellectual Property Enterprise Court (“IPEC”) recently heard an application in the case of Luxe World Ltd v Touch of Vogue Ltd [2026] EWHC 148 (IPEC) which affirmed the Court’s position on equitable remedies arising from actionable threats in IP infringement proceedings.
Glassware company Touch of Vogue wrote to the fashion-based Luxe World alleging registered design infringement, and filed take down requests with Amazon in respect of Luxe World’s products which resulted in their removal, to which Luxe World responded by issuing a claim in the IPEC for the tortious offence of actionable threats. The crux of this claim was that Luxe World sought relief in the form of damages or an account of profits, and paid the non-monetary issue fee of up to £646, which prompted Touch of Vogue to apply for the threats claim to be struck out on the basis that the remedy of an account of profits was not available to Luxe World and it instead should have specified the amount it sought in damages for the alleged threats.
Luxe World argued that although it knew it was not prima facie entitled to an account of profits from Touch of Vogue, it believed it was still within the court’s jurisdiction to make such an award given Touch of Vogue had allegedly profited from its trade having made threats of proceedings.
Though Touch of Vogue’s strike out application was refused by Hacon J, the Judge ruled that as an actionable threat of infringement proceedings was not a tortious offence relating to a proprietary right, Luxe World could not access an account of profits as a remedy. As such, Luxe World was directed to specify the value of its claim and pay the appropriate court fee.
Judge Hacon’s ruling follows the Court of Appeal’s position in Devenish Nutrition Ltd v Sanofi-Aventis SA [2008] EWCA Civ 1086 that, save in exceptional circumstances, an account of profits is not available where a case does not concern a proprietary right.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
