Fried v Fried (Approved)

Factual and Procedural Background

The Plaintiff initiated proceedings seeking interlocutory injunctive relief concerning the trade mark “Claddagh Jewellers”, registered in Ireland and with the European Union Intellectual Property Office. The Plaintiff contended ownership of the mark and associated intellectual property rights, alleging that the Defendant unlawfully procured the transfer of the mark from the Plaintiff’s sole name to a company jointly owned by the Plaintiff and Defendant, without the Plaintiff’s consent. The Defendant purportedly used a Power of Attorney granted by the Plaintiff in Spain, allegedly limited to property matters there, to effect this transfer. The Plaintiff also alleged a further unauthorized transfer placing the mark into the joint names of the Plaintiff and Defendant. The Plaintiff sought declaratory and injunctive relief to correct the Trade Mark Register and restrain the Defendants from infringing the Plaintiff’s rights.

The proceedings were heard alongside a related application under section 212 of the Companies Act 2014 involving the same parties and a company associated with the trade mark. The Defendants’ solicitors withdrew from the case prior to the hearing, and the Defendants did not appear at the hearing to contest the application for injunctive relief. The Plaintiff’s legal representatives proceeded with the application.

Legal Issues Presented

1. Whether the Plaintiff is the sole owner and proprietor of the trade mark “Claddagh Jewellers” and entitled to injunctive relief to prevent the Defendants’ use of the mark pending trial.
2. Whether the transfers of the trade mark by the Defendant, purportedly under a Power of Attorney, were lawful and valid.
3. The appropriateness of interlocutory relief restraining the Defendants from infringing the Plaintiff’s trade mark rights pending determination of the proceedings.

Arguments of the Parties

Plaintiff's Arguments

• The Plaintiff asserted ownership of the trade mark and associated intellectual property rights, registered in his name since 2012 in Ireland and 2016 in the EU.
• The Defendant unlawfully transferred the trade mark to a jointly owned company without the Plaintiff’s authority, using a Power of Attorney limited to Spanish property matters.
• The Defendant intended to use a corporate vehicle to appropriate part of the business and infringe the Plaintiff’s rights.
• The Plaintiff sought interlocutory orders restraining the Defendants from using the trade mark and associated intellectual property pending trial.
• The Plaintiff argued that the Defendants lacked any formal license to use the trade mark and that unlicensed use would cause irreparable damage to the brand’s reputation and goodwill.

Defendant's Arguments

• The Defendant accepted that the trade mark was originally registered in the Plaintiff’s name but denied the Plaintiff ever beneficially owned it, asserting beneficial ownership resided with the jointly owned company.
• The registration in the Plaintiff’s name was for administrative convenience and to avoid certain creditors viewing it as a company asset.
• The Defendant admitted responsibility for the transfers of the trade mark in 2018 and 2019, relying on the Power of Attorney and claiming the Plaintiff was aware of its use.
• The Defendant alleged unlawful withdrawals of funds by the Plaintiff from the company’s bank account and claimed the transfers regularised the ownership to reflect reality.
• The Defendant stated the new business operated by the second Defendant did not use the “Claddagh Jewellers” trade mark and offered an undertaking not to use the mark or open premises under that name prior to the conclusion of proceedings.

Table of Precedents Cited

Court's Reasoning and Analysis

The court considered the pleadings, affidavits, and submissions, applying the established legal principles governing interlocutory injunctions, notably the Campus Oil test as interpreted in the cited precedents. The court found that there was a fair question to be tried regarding the Plaintiff’s sole ownership of the trade mark and the lawfulness of the transfers effected by the Defendant without the Plaintiff’s consent. The Defendant’s reliance on the Power of Attorney for the transfers was viewed with skepticism, particularly as it appeared limited to Spanish property matters and not the transfer of intellectual property rights.

Regarding the balance of convenience, the court noted the absence of any undertaking from the Defendants since they did not appear at the hearing. The risk of irreparable damage to the Plaintiff’s established brand reputation due to unlicensed use of the trade mark was significant. The Defendants did not demonstrate any inability to satisfy damages or any prejudice from the grant of interlocutory relief. The Defendant’s own affidavits indicated that the new business did not use the trade mark and included an undertaking not to do so pending trial, but this undertaking was not before the court at the hearing due to their non-attendance.

The court also declined to grant broader relief concerning “all associated intellectual property rights and goodwill” due to lack of clarity, limiting the injunction to restraining use of the trade mark itself pending trial to minimize injustice and confusion.

Holding and Implications

The court’s final decision was to grant interlocutory relief in favour of the Plaintiff. Specifically, the court ordered:

• Amendment of the title of proceedings to reflect the current parties’ names.
• Interlocutory injunction restraining the second Defendant from using the trade mark “Claddagh Jewellers” pending determination of the proceedings or further order.
• Prohibition and restraint of the Defendants from infringing the Plaintiff’s registered trade mark pending trial or further order.

The court did not grant relief concerning associated intellectual property rights or goodwill at this stage due to insufficient clarity. The decision directly affects the parties by preventing the Defendants from using the trade mark in dispute until the matter is resolved at trial. No new precedent was established; the court applied well-established principles on interlocutory injunctions and intellectual property rights.