Court: Intellectual Property Enterprise Court
Judge: HHJ Hacon
Judgment: Here
Issue: Actionable (Groundless) Threats

Published: 6 February 2026
Author: Andrew Brennan

Online marketplaces such as Amazon and eBay are a key route to market for many brand owners. However, with success comes imitation, with many brand owners identifying third party products on the platforms which infringe their intellectual property rights.

To address this, the online marketplaces provide a takedown service, whereby the brand owner can identify its intellectual property and the alleged infringement. If the online marketplace agrees, typically the allegedly infringing product is removed from the platform. The number of online takedowns today runs into the millions.

However, what happens if the intellectual property right asserted is invalid or the allegation of infringement without basis? In these circumstances, the alleged infringer’s product may be removed without justification, with the alleged infringer suffering loss of sales. Typically, it is very difficult for the alleged infringer to persuade the online marketplace to reverse its decision.

In the United Kingdom, this can give rise to a cause of action for actionable threats. Broadly, the takedown notice may constitute a threat of infringement proceedings. In such circumstances, the alleged infringer (a person ‘aggrieved’ by the threat) may be able to commence proceedings seeking a declaration from the court that there is no infringement and damages arising from the takedown. For simple cases, the claim can be conducted relatively cost effectively. This is often an unexplored risk for brand owners using takedown notices.

These are the allegations raised in Luxe World v Touch of Vogue. Here, Luxe World alleges that Touch of Vogue’s registered design (for an attachment to a bicycle, pictured below) used to takedown Luxe World’s bicycle products is invalid because it was prior disclosed outside the grace period. If so, it says that the takedown notice constitute a threat of infringement proceedings for which it suffered damages. As a result, it seeks certain relief from the court, including an injunction and its damages or an account of Touch of Vogue’s profits (typical remedies for a claim of intellectual property infringement).

There are, however, limitations to such a claim. While it was common ground that Luxe World was entitled to seek its damages (if any), at the Case Management Conference of the claim, His Honour Judge Hacon was asked to consider whether Luxe World was entitled to seek an account of Touch of Vogue’s profits.

Here, HHJ Hacon concluded that such relief was not available. The legislation addressing actionable threats (s. 26C of the Registered Designs Act 1949) only makes provision for damages. This is distinct to the legislation which addresses infringement (24A(2) of the Registered Designs Act 1949). Further, he held that he was bound by the reasoning in Devenish Nutrition Ltd v Sanofi-Aventis SA [2009] Ch 360 (CA) that restitutionary remedies such as an account of profits are not available in respect of non‑proprietary torts (such as unjustified threats).

Notably, it followed that, as Luxe World was only entitled to seek damages the Court held it should quantify those damages and pay the appropriate court fee (typically a claimant only has to pay the court fee for the injunction, with the court fee for damages/account of profits payable when these are determined at a subsequent inquiry/account of profits).

Ultimately, the claim serves as a timely reminder that online takedown tools, while powerful, are not without legal risk. Brand owners who rely on these mechanisms must ensure their rights are valid and their allegations well‑founded, or risk finding themselves on the receiving end of an actionable threats claim.