Luxe World v Touch of Vogue: The unexpected cost of unjustified threat claims
Executive summary
In Luxe World Ltd v Touch of Vogue Ltd [2026] EWHC 148 (IPEC), the Court considered
The remedies available for unjustified threat claims
When court fees must be paid in IP proceedings
In this article, Michael Richmond and Lloyd Lane explore why the Court rejected the possibility of an account of profits and required full court fees to be paid upfront.
Background
Touch of Vogue (“Vogue”), as the owner of registered designs for bike accessories, filed several takedown complaints with Amazon, alleging that Luxe World (“Luxe”) was advertising competing products which infringed these designs. Amazon removed Luxe’s Amazon listings following those complaints.
In response, Luxe issued proceedings, alleging that Vogue’s conduct constituted an actionable unjustified threat of infringement proceedings under Section 26A of the Registered Designs Act 1949.
Luxe sought not only the remedies of a declaration and injunction, but also an account of Vogue’s profits. Relying on Lifestyle Equities C.V. v Sportsdirect.com Retail Ltd [2016] EWHC 2092 (Ch), Luxe argued that an account of profits does not constitute a money claim, and on that basis it was only required to pay the lower initial court fee of £646 for the non-monetary relief sought and provided an undertaking to pay any additional sum once quantum had been determined. Her Majesty’s Courts and Tribunals Service (HMCTS) accepted this approach.
Key issues
The proceedings raised two central issues:
Issue 1: Is an account of profits available in unjustified threats claims?
Vogue applied to strike out Luxe’s claim for an account of profits. It argued that Section 26C of the Registered Designs Act 1949, excludes that remedy for threats claims.
Luxe argued that the Court retained an equitable jurisdiction to order an account of profits, relying on Attorney General v Blake [2001] 1 AC 268 (“Blake”). They also argued that because Section 24A (2) of the Registered Designs Act 1949 permits an account of profits for infringement, it would be inconsistent to deny the remedy in threats actions.
Issue 2: When did the full court fees have to be paid?
Vogue also sought an order requiring Luxe to quantify their alleged damages and to pay the appropriate court fee. It argued that Luxe’s claim was in substance, a monetary claim. As damages were the only available financial remedy, Vogue said the claim had been mischaracterised as non-monetary to attract a lower initial court fee.
Luxe argued that HMCTS’s acceptance of the £646 initial fee rendered them functus officio (without further official authority). On that basis, Luxe contended that no higher court fee could be required following HMCTS’s acceptance.
Outcome
Judge Hacon rejected Luxe’s arguments in full.
On the issue of remedies, the Court maintained that the actionable threats were not concerned with the infringement of proprietary rights but with wrongful commercial conduct. The Court was therefore bound by Devenish Nutrition v Sanofi Aventis SA [2009] Ch 360 (CA), which confirmed that an account of profits was not available for non-proprietary torts. Luxe’s reliance on Blake was misplaced. Blake involved a breach of contract and national security concerns, facts not present here. The Court also rejected the argument that Registered Designs Act 1949 was internally inconsistent. Sections 26A and 26C were held to reflect the distinction between proprietary and non-proprietary rights identified in Devenish.
The claim for an account of profits was therefore struck out.
The Court also rejected Luxe’s functus officio argument, confirming that they were not bound by HMCTS’s acceptance of the £646 fee. As damages were the only available financial remedy, the Court ordered Luxe to state the quantum of their claim or pay the full court fee.
Takeaways
Unjustified threats claims are compensatory only, meaning that an account of profits cannot be claimed
Where an unjustified threats claim is brought as a standalone action (i.e. not as a counterclaim), the claimant must either
quantify its loss and pay the relevant court fee (which could force a party to concede that they suffered minimal damage) or
pay the full £10,000 court fee upfront (which could well prove to be an overpayment)
Either option may be commercially unattractive.
The position for IP infringement claims remains unchanged. A claimant can opt to only pay the lower fee for non-monetary relief up-front and give an undertaking to pay the appropriate court fee when damages or an account of profits are awarded
How we can help
Our specialist Intellectual Property team regularly advises clients on how best to protect and enforce their intellectual property rights, including related actions such as claims for unjustified threats. If you would like to discuss this article or any of your current and future needs, please get in touch with Lloyd Lane.
Related expertise
The content of this page is a summary of the law in force at the date of publication and is not exhaustive, nor does it contain definitive advice. Specialist legal advice should be sought in relation to any queries that may arise.
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