Lyle & Scott v American Eagle Outfitters – permission to serve out of jurisdiction and Rome II Regulation

This was an application to set aside permission to serve proceedings on the US defendant alleging breach of a worldwide trade mark co-existence agreement and passing off. Both parties used eagle devices for clothing


In dismissing the application, Miles J held that the passing off case had a real prospect of success. He also held that England was the appropriate forum for the causes of action under the forum conveniens principle. Of interest to lawyers was what was the governing law for the claim in passing off under the Rome II Convention (Applicable Law) and whether the fact that there was a co-existence agreement to which Pennsylvanian law applied, which might or might not provide a defence to the tort claim relating to activity directed at the UK, pointed away from England being the appropriate forum.

The judge held that that the governing law for the passing off action fell within Art.6 Rome II Convention (unfair competition) rather than Art.8 (Infringement of IPRs) and that the governing law was English law. He also held that the fact of a possible defence under the co-existence agreement did not justify the application of Art 4(3) such as to displace the effect of 4(1). 

The judge decided that the weight to be given to the governing law for the contract claim being Pennsylvanian law should not be overstated, and that the connecting factors (e.g. that the tort of passing off was alleged to have occurred in England and that the evidence will focus on activities and consumers within the UK) pointed towards England being the appropriate forum. 

The judge also gave reasons why he refused PTA at ([2021] EWHC 306 (Ch)). Permission to appeal was also refused by the CA and the proceedings continue.

The main judgment can be found here  

Amanda Michaels (instructed by Freeths LLP) acted for the Claimant