Factual and Procedural Background
The claimant is the manufacturer and distributor of a well-known energy drink and proprietor of several trade marks ("the claimant's marks"). The first defendant ("D1") imports and sells energy drinks bearing the name "Big Horn" in the UK. The second defendant ("D2") is a Bulgarian company distributing these products in Bulgaria and allegedly in the rest of the EU; it owns an EU trade mark application identical in part to a contested sign. The third defendant ("D3") is a Bulgarian citizen, director and sole shareholder of D1, and owner of the domain advertising the defendants' products.
The claimant brought a claim for trade mark infringement under Articles 9(2)(b) and 9(2)(c) of the EU Trade Marks Regulation, alleging use of signs similar to the claimant's marks on identical goods. There is no passing off claim.
The defendants initially acted in person, with a short period of legal representation by a firm ("Firm A"). D3 appeared with an interpreter and was assisted by a McKenzie friend, a Bulgarian-qualified advocate not fully fluent in English or familiar with English procedural law, which disadvantaged D1 and D3 in opposing the claimant's applications.
D2 did not appear at the hearing and was not represented by D3.
D2 applied for registration of its mark at the EUIPO on 23 August 2016, opposed by the claimant. The opposition was rejected by the EUIPO opposition division on 25 May 2018, and the claimant is appealing that decision.
The claim was issued on 6 February 2018 under the Shorter Trials Scheme, with service on D1 and D3 on 9 February 2018. D3 filed acknowledgments of service and Defences on behalf of D1 and himself in March and April 2018, but these were defective in various respects, including lack of proper service and statements of truth issues.
Service on D2 was attempted at its old registered office address on 16 April 2018 but was invalid as D2 had changed its registered address in early March 2018. The court made an order on 6 August 2018 deeming service by alternative means as sufficient and retrospective to 16 April 2018.
The claimant made two applications: the first on 8 June 2018 seeking strike out or summary judgment against Defences of D1 and D3 and default judgment against D2; the second on 10 August 2018 seeking strike out or summary judgment against Defences of all defendants.
Legal Issues Presented
- Whether the Defences filed by the defendants disclose real prospects of successfully defending the claim or should be struck out or summary judgment granted.
- Whether default judgment should be granted against D2 for failure to acknowledge service and file a Defence within the prescribed time.
- Whether the claimant's service on D2 was valid and whether retrospective service by alternative means affects D2's right to defend.
- Whether the defendants' application for a stay pending the outcome of the EUIPO appeal constitutes a compelling reason to refuse summary judgment.
Arguments of the Parties
Claimant's Arguments
- The Defences filed by D1 and D3 were defective, including lack of proper statements of truth, failure to serve the Defences, and breaches of procedural rules.
- The Defences contained no reasonable grounds for defending the claim and were likely to obstruct the just disposal of the proceedings.
- The Briffa Defence filed by Firm A was improperly verified and contained bare denials contrary to CPR requirements.
- D2 was not validly served and failed to file an acknowledgment of service or Defence within the required time, entitling the claimant to default judgment.
- The claimant submitted that the signs used by defendants were similar to the claimant's marks, causing a likelihood of confusion under Art. 9(2)(b), or at least a link and unfair advantage under Art. 9(2)(c).
- The defendants’ stay application was without merit and should not delay the claim.
Defendants' Arguments
- The Defences challenged the admissibility of the claim and relied on the existence of EUIPO opposition proceedings.
- D1 and D3 sought relief including dismissal or stay pending the EUIPO appeal and costs against the claimant, though not by counterclaim.
- The claim infringed free competition principles and violated their rights under the EU Charter.
- D2 owned a registered community design which granted exclusive rights to use the design in the EU.
- There was no likelihood of confusion due to phonetic and visual differences between the marks, including differences in the animals depicted and background elements.
- The figurative elements of the marks were dissimilar and did not give rise to a link in the mind of the average consumer.
- The stay application was based on the identity of legal issues between the claim and the EUIPO appeal.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] F.S.R. 30 |
Elements required to establish infringement under Art. 9(2)(b) |
Outlined the six elements necessary for infringement under Art. 9(2)(b), which the court applied in assessing the claimant's claim. |
| Interflora v Marks and Spencer [2015] FSR 10 |
Requirements for infringement under Art. 9(2)(c) |
Defined the additional elements for Art. 9(2)(c) claims, including reputation and injury without due cause, guiding the court's analysis. |
| Almond v Medgolf Properties Ltd [2015] EWHC 3280 (Comm) |
Default judgment principles regarding timing of Defence filing |
Supported the claimant's submission that late filing of Defence after application for default judgment does not preclude default judgment. |
| Barton v Wright Hassall LLP [2018] UKSC 12 |
Purpose and effect of service of claim form |
Clarified that service is necessary to engage court jurisdiction and start time limits, informing the court's view on service validity. |
| Easyair Ltd v Opal Telecom Limited [2009] EWHC 339 (Ch) |
Principles governing summary judgment applications |
Summarized standards for granting summary judgment, applied by the court in assessing the strike out and summary judgment applications. |
| AC Ward & Sons v Catlin (Five) Limited [2009] EWCA Civ 1098 |
Summary judgment principles |
Approved the principles set out in Easyair, confirming the court's approach to summary judgment. |
| Mellor v Partridge [2013] EWCA Civ 477 |
Summary judgment principles |
Further endorsed the established test for summary judgment, referenced by the court. |
| Denton v TH White Ltd [2014] 1 WLR 3926 |
Mitigation of sanctions and compliance with procedural rules |
Guided the court's assessment of breaches of rules and proportionality in deciding whether to strike out Defences. |
| Walsham Chalet Park Ltd v Tallington Lakes Ltd [2014] EWCA Civ 1607 |
Application of Denton principles in strike out applications |
Clarified the difference between strike out and relief from sanction, informing the court’s discretion in this case. |
| Prince Abdulaziz v Apex Global Management Ltd [2014] UKSC 64 |
Seriousness of strike out as a sanction |
Emphasized the gravity of strike out, influencing the court's reluctance to strike out Defences absent serious prejudice. |
| Inn Soo Kim v Youg Geun Park [2011] EWHC 1781 (QB) |
Opportunity to remedy defects in pleadings |
Supported the court's approach to allow amendment rather than striking out defective Defences. |
Court's Reasoning and Analysis
The court carefully examined the procedural history, noting defects in service on D2 and deficiencies in the Defences filed by D1 and D3. The order for retrospective service by alternative means was interpreted as not prejudicing D2's right to defend, as it had filed a Defence before the order was made. Hence, default judgment against D2 was dismissed.
Regarding the strike out and summary judgment applications, the court applied established principles under CPR Part 24 and CPR 3.4. It found that although the Defences contained procedural and substantive deficiencies, these were not sufficiently serious to justify striking out. The court emphasized proportionality and the importance of allowing parties to amend pleadings, especially given the defendants’ disadvantaged position due to language barriers and procedural unfamiliarity.
The court assessed the substantive arguments on infringement, acknowledging the opposition division's findings that the figurative elements of the defendants' mark were visually and conceptually dissimilar to the claimant's marks. The court accepted that the defendants had a real prospect of defending the claim on grounds of dissimilarity and absence of likelihood of confusion or link.
The claimant's submission that the figurative element alone was complained of was considered but not sufficient to overcome the opposition division's reasoning. The court also found that the Blue and Silver Parallelogram mark was not clearly infringed by the defendants.
Permission was granted for D1 and D3 to amend their Defence to the re-verified Defence filed by Firm A, which complied with procedural requirements. The court declined to stay the proceedings pending the EUIPO appeal, finding no compelling reason to do so.
Overall, the court dismissed the claimant's applications for strike out, summary judgment, and default judgment, emphasizing proper procedural conduct and the defendants’ rights to a fair trial.
Holding and Implications
The court DISMISSED the claimant's applications for:
- Strike out and/or summary judgment against the Defences of the first and third defendants;
- Judgment in default against the second defendant;
- Strike out and/or summary judgment against the Defences of all defendants in the second application.
The direct effect is that all defendants remain entitled to defend the claim, with the first and third defendants permitted to amend their Defence accordingly. No default judgment was granted against the second defendant due to invalid service and the timing of its Defence filing.
The court did not set new precedent but reaffirmed established principles on service, default judgment, strike out, and summary judgment, with careful attention to proportionality and fairness in procedural matters.