• Rosie Burbidge

What is the bar for summary judgment?


A recent application for summary judgment in a trade mark case in the IPEC was right on the cusp of being successful. The case was NAH Holdings Ltd & Anor v KBF Enterprises Ltd & Anor and the judgment was given by His Honour Judge Hacon.


The claimant alleged infringement of eight registered UK trade marks for SLIM SAUCE and similar marks. The defendants (KBF) sold a range of products under the name Slim Sauces, which were identical to the goods for which the marks are registered.


Counterclaim

The defendant’s counterclaimed that there was no infringement, no use of the trade marks and the SLIM SAUCE marks lacked distinctive character and/or were descriptive.


The judge said he believed it to be unlikely that the defendants would be able to establish that SLIM SAUCE has no distinctive quality at all “and that by extension there is no risk that the average consumer might believe that the goods of KBF come from the same undertaking as the goods of the claimants or come from an undertaking economically linked to the claimants”.


On the question of genuine use, exhibits including sales orders and spreadsheets were provided by the claimants and were not seriously challenged.


The claimants argued that the claim that the marks were devoid of distinctive character under Section 3(1)(b) or descriptive under Section 3(1)(c) of the Trade Marks Act could be dismissed without evidence. The judge said he believed it unlikely that the defendant’s argument could succeed. But he added: “I am not prepared to say without evidence that there is no real prospect of the defendants succeeding under either head of the Counterclaim. There is just enough doubt for me to believe the prospect is better than fanciful, though not by much.”


Conditional order

Noting that allowing the claim to go forward would impose time and money on the claimants, HHJ Hacon proposed making a conditional order as permitted by Practice Direction 24. A conditional order is an order which requires a party (1) to pay a sum of money into court, or (2) to take a specified step in relation to his claim or defence, as the case may be, and provides that that party’s claim will be dismissed or his statement of case will be struck out if he does not comply.


Before making such an order, however, he invited further submissions from the parties on whether a conditional order would be appropriate, the nature of the conditions and any relevant circumstances.


The judgment was given based on written submissions only and demonstrates how judges in the IPEC aim to resolve disputes as efficiently and fairly as possible, taking practical measures to ensure justice is delivered.


To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com

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