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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Advising a client to bring an application for Summary Judgment is difficult. The dividing line between whether a defendant has a real or “fanciful” chance of success is blurred, a claimant cannot rely solely on the evidence that it brings before the Court at the application. It is also subject to what might “reasonably be expected to be available at trial”, and, even where a case seems to be clear, simple and with agreed facts, case law states that a Court should “hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application”.


All in all, therefore, advice to clients must be to ensure that their case for a Summary Judgment application is fully supported by evidence, does not contain any surprises and, most of all, does not have any uncertainties which might move a defendant’s case from being merely “fanciful”, to having a “real chance” of success, or which might persuade a judge to consider that the defendant may be able to bring further evidence to full trial, which was not made available at the time of the application for Summary Judgment. 

In the recent case of Vertical Leisure Limited v Poleplus Limited & Martin Bowley in the Intellectual Property Enterprise Court (“IPEC”), the claimant seemed to have an open and shut case. Vertical manufactured and sold pole exercise equipment and, in particular, poles for use by pole dancers (which this writer is given to understand is an increasingly popular form of exercise among the younger generation). Vertical owned a number of trade mark registrations containing the term “X-POLE”. This was a product that they had sold in the UK since 2004. 

In 2013, Vertical launched a new pole, named “SILKii”. This was advertised at an exhibition in Blackpool in March 2013, and was then displayed at a later exhibition in Cologne in April 2013. Vertical claimed that it had goodwill in both of the names X-POLE and SILKii at the time of the Cologne exhibition (in April 2013). Subsequent to that German based exhibition, it (Vertical) applied to register the sign SILKii as a trade mark in August 2013. This application proceeded to registration in November 2013. 

On 12 April 2013, the second day of the exhibition in Cologne, the second defendant registered a number of domain names containing the elements X-POLE and SILKii. Further domain names, containing similar terms, were registered by Mr Bowley during the course of 2013. In August 2013, Mr Bowley wrote to Vertical offering to sell it various domain names, as well as two Twitter accounts containing the name SILKii. Vertical refused to purchase the items offered and instead commenced proceedings based on trade mark infringement and passing off. 

In respect of trade mark infringement, Mr Bowley admitted registering the domain names and offering to sell them to Vertical. He claimed that he wanted to “make some money” from the owner of the X-POLE and SILKii trade marks.  In considering the application for summary judgment against Mr Bowley based on trade mark infringement, the judge decided that he was unwilling to make a decision without further argument. However, in respect of the passing off allegation, the judge found that Mr Bowley had purposefully registered the domain names to take advantage of the goodwill enjoyed by Vertical and with a view to obtaining an advantage from those domain names by selling them back to the trade mark owner. The judge therefore had no difficulty in finding that Vertical was entitled to summary judgment against Mr Bowley based on passing off.

Bearing this in mind, therefore, and considering that Poleplus Limited (Poleplus) was a company under the control of a Ms Colebourne, the fiancee of Mr Bowley, that Mr Bowley was listed as a director of Poleplus at the time of its incorporation, that Mr Bowley was referred to as the “technical director” of that company, that Mr Bowley and Ms Colebourne were described as a “legendary team” on Poleplus’s website and that they both had access to each other’s emails and represented the company together at various events, it would seem that there was a fairly clear link between Mr Bowley as the second defendant and Poleplus as the first defendant. Surely, therefore, if the judge could easily find that Vertical was entitled to summary judgment against Mr Bowley, he could equally easily find that Vertical was entitled to summary judgment against the first defendant (Poleplus)?  

Apparently not. For the judge to be able to find this, it would have been necessary for Vertical to have shown that Poleplus was a joint tortfeasor with Mr Bowley. Unfortunately, counsel for Vertical did not even mention the possibility that Poleplus was a joint tortfeasor until filing skeleton arguments. Similarly, the skeleton arguments filed by Vertical introduced a claim of vicarious liability against Poleplus due to the activities of Mr Bowley. As with the arguments relating to joint tortfeasorship, however, the arguments based on vicarious liability were not included in the original Particulars of Claim.

As the case stands, therefore, it appears that it will proceed to trial purely to determine the liability of Poleplus, simply because Vertical did not ensure that its application for Summary Judgment was watertight. As the judge stated, this seems to be a very unsatisfactory state of affairs. It is also interesting to note that the judge dropped some fairly elephantine hints to both parties that they should consider settlement or at least that Vertical and Poleplus should consider making Part 36 offers to preserve their respective positions. 

Comment

From this writer’s point of view, it seems to be fairly astounding that the defendants continued with the case. Having admitted purchasing the domain names (and apparently some Twitter accounts) in order to sell them to Vertical “to make some money”, it seems clear that, following the case of BT v One in a Million, at least in respect of passing off, Mr Bowley was always going to be caught by an application for Summary Judgment. Poleplus can perhaps breathe a brief sigh of relief that the case against it was not properly made out at the Summary Judgment stage. However, unless settlement is reached, it seems almost certain that Vertical will win against Poleplus at full trial. 

As suggested by the judge, the defendants really should consider whether discretion in this case might be the better part of valour. 

Advising a client to bring an application for Summary Judgment is difficult. The dividing line between whether a defendant has a real or “fanciful” chance of success is blurred, a claimant cannot rely solely on the evidence that it brings before the Court at the application. It is also subject to what might “reasonably be expected to be available at trial”, and, even where a case seems to be clear, simple and with agreed facts, case law states that a Court should “hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application”.

All in all, therefore, advice to clients must be to ensure that their case for a Summary Judgment application is fully supported by evidence, does not contain any surprises and, most of all, does not have any uncertainties which might move a defendant’s case from being merely “fanciful”, to having a “real chance” of success, or which might persuade a judge to consider that the defendant may be able to bring further evidence to full trial, which was not made available at the time of the application for Summary Judgment.