1. Introduction
The appeal concerned whether the High Court was entitled to grant an interim injunction restraining trade mark infringement threats where the applicant
(a rival vape supplier) had shown only a serious issue to be tried on whether the threats were unjustified.
The key legal issue was the correct application of section 12(3) of the Human Rights Act 1998 (“HRA”)—the statutory provision that limits pre-trial
injunctions restraining “publication” where Article 10 (freedom of expression) is engaged.
The claimant/appellant (“the trade mark owner”) had written letters threatening infringement proceedings to distributors/retailers of the respondent (“the alleged infringer”).
The respondent sought to restrain further threats under the unjustified threats regime in the Trade Marks Act 1994 as reformed by the
Intellectual Property (Unjustified Threats) Act 2017.
3. Background and Procedural Context
3.1 The commercial setting
The parties were competitors in the UK vape market. The trade mark owner relied on three UK registered marks (including word and device marks containing “CRYSTAL” and “CRYSTAL BAR”).
The respondent challenged validity/non-use and was already engaged in UKIPO/High Court proceedings concerning registration disputes.
3.2 The communications complained of
The respondent’s interim application was driven by letters sent to a set of distributors/wholesalers/retailers. Earlier letters were treated as permitted communications
(and therefore not actionable threats). Later “letters before claim” explicitly threatening proceedings were common ground to be threats, and the respondent had standing
as a “person aggrieved”.
3.3 The High Court’s approach
Miles J proceeded on the basis that s.12(3) HRA applied and concluded that, in unjustified threats cases, the “more likely than not” threshold would
“often” be too high because threats can quickly clear the market and cause rapid losses. He granted an interim injunction, finding (in substance) serious issues to be tried on validity/non-use and
that damages would be hard to assess if customers stopped dealing with the respondent.
4. Analysis
4.1 The statutory framework: unjustified threats and remedies
The court located the modern threats regime in the historic problem of rightsholders deterring trade by threatening customers rather than suing primary alleged infringers—obtaining
“interim-injunction-like” commercial effects without typical litigation risks. The key remedial provision highlighted was s.21C Trade Marks Act 1994, which includes:
(a) declaration, (b) injunction against continuance, and (c) damages—subject to a defence if the threatened act constitutes infringement.
Notably, the Court of Appeal recorded that the Law Commission materials leading to the 2017 reforms did not appear to address the interaction with s.12(3) HRA, setting the stage for
this decision to fill a doctrinal gap.
4.2 Why s.12(3) HRA mattered here
Section 12 applies when the court is considering relief that “might affect” Article 10 expression. Threat letters are a form of communication; an injunction restraining the making of threats
restrains that communication in advance of trial. The case therefore required the court to identify the correct merits threshold for such relief.
4.3 Precedents cited and how they shaped the result
This was the controlling authority on s.12(3). The Court of Appeal treated Lord Nicholls’ speech as laying down:
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A general rule: courts should be “exceedingly slow” to grant interim restraints on publication unless the applicant will probably succeed at trial
(i.e., “more likely than not”).
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Recognised exceptions where a lesser likelihood may suffice, including: (i) where the adverse consequences of disclosure are particularly grave; and (ii) where a short-lived
injunction is needed to enable proper consideration of interim relief.
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A structural point: the “threshold” question (likelihood of success) is distinct from the later balancing of Article 10 with countervailing rights.
The Court of Appeal held that Miles J’s approach—treating unjustified threats cases as “often” falling into an exceptional category and applying a lower merits standard to avoid undermining the
statutory threats protection—was inconsistent with Cream Holdings. The exceptions are fact-sensitive and must be justified on evidence, not assumed by category.
(b) Boehringer Ingelheim Ltd v Vetplus Ltd [2007] EWCA Civ 583, [2006] Bus LR 1456
The court used Vetplus to confirm that the Cream Holdings approach is not confined to privacy or defamation-type cases; it applies in trade mark contexts where Article 10 is
engaged (there, comparative advertising). Although Vetplus addressed comparative advertising, the Court of Appeal treated its endorsement of the “probably succeed” threshold as
reinforcing the cross-contextual nature of s.12(3).
The respondent invoked the “no mini-trial” principle associated with American Cyanamid to argue against a demanding merits inquiry. The Court of Appeal rejected this as a reason to
dilute s.12(3): Parliament’s intention in s.12(3) is precisely to impose a merits threshold for prior restraints affecting expression. Courts can still control proportionality and avoid
mini-trials through case management, but they cannot replace the statutory threshold with the lower “serious issue” standard.
4.4 The Court of Appeal’s legal reasoning
The reasoning proceeded in three linked steps:
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Fix the governing threshold: Under s.12(3) as construed in Cream Holdings, the default is “more likely than not” success at trial before granting interim relief
restraining publication.
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Ask whether an exception is engaged: Although Cream Holdings leaves open the possibility of further exceptions, the respondent did not rely on any “third category”
exception, and relied instead on the “particularly grave adverse consequences” category.
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Evaluate the evidence against the exception: The judge had not found that consequences would be “particularly grave”, nor even that further threats and resulting lost sales
were strongly likely; indeed, there was no evidence of actual lost sales from the existing threats and the application was not pursued with urgency (a practical indicator that undermined the
“grave consequences” narrative). Therefore, no exception justified lowering the threshold.
Key appellate conclusion (paraphrased): the High Court did not apply the “more likely than not” rule, did not bring the case within a recognised exception, and therefore had no
basis under s.12(3) to grant the injunction.
4.5 Impact and significance
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Doctrinal clarification in threats litigation: This is presented as the first appellate consideration of s.12(3) HRA in the specific context of interim injunctions to restrain
allegedly unjustified trade mark threats. It establishes that threats injunctions are not a “soft” category for s.12(3).
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Higher bar for early relief: Applicants (typically alleged infringers) seeking to restrain threats before trial will generally need to show they are more likely than not
to prove the threats are unjustified—often requiring a more developed merits case on validity/non-use/infringement than would be required under a pure American Cyanamid analysis.
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Exception requires evidence: Market sensitivity and the statutory rationale of threats provisions do not, by themselves, establish “particularly grave” consequences.
Evidence of imminent and severe harm (and urgency in seeking relief) will matter.
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Practical litigation behaviour: Parties may respond by (i) seeking expedition, (ii) assembling stronger early evidence on validity/non-use/infringement, and/or (iii) pursuing
undertakings (or resisting them) with a clearer appreciation that Article 10-driven thresholds may control interim outcomes.
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Legislative-policy tension surfaced: The decision highlights a friction point: the threats regime aims to prevent market harm from groundless threats, while s.12(3) aims to
restrain prior restraints on expression. The Court of Appeal resolves this tension by adhering to the statutory text and Cream Holdings, rather than by creating a threats-specific
dilution of the threshold.