32red Plc v WHG (International) Ltd & Ors

Justice should ordinarily be administered in public. Confidentiality and the protection of Part 36 procedures may justify private hearings, but practical risks can ordinarily be managed by redactions and procedural separation.

Following established intellectual-property infringement, an injunction is the normal remedy because it prevents continuation of the vindicated right’s breach. The remedy remains discretionary and may be refused where further infringement is no longer threatened or an injunction would serve no purpose.

Publication of an infringement judgment is also discretionary. The court should consider deterrence, public awareness, the nature of the infringement, continuing or indirect use, admissions, and proportionality.

32Red Plc brought proceedings against WHG (International) Ltd, WHG Trading Ltd and William Hill plc concerning infringement of two Community trade marks. Following findings of infringement, the court determined consequential relief.

The issues were whether the hearing concerning Part 36 matters should be private, whether an injunction should be granted, and whether the defendants should be required to publish a factual notice of the judgment under Article 15 of the IP Enforcement Directive and paragraph 26.2 of the Patents Court Practice Direction 63.

1. Private hearing. The general rule under CPR 39.2(1) is that justice is administered in public. Although CPR 39.2(3)(c) and (g) permit private hearings where confidential information or the interests of justice justify that course, and CPR 36.13(2) restricts disclosure of Part 36 offers before determination, no sufficient case for privacy was shown. Redactions, separate transcripts and careful separation of the relevant material could protect the rule. The hearing therefore remained public.
2. Injunction. An injunction is the standard relief following established trade-mark or other intellectual-property infringement, but its grant remains discretionary. The court may refuse it where there is no realistic prospect of further infringement, so that the order would serve no purpose. Here, the defendants’ earlier avowal of continued use, the absence of an open undertaking until the hearing, and evidence suggesting continuing or sponsored use through Adwords and affiliates meant that the case was not one in which future infringement could safely be excluded. The injunction therefore extended to direct and indirect infringement, while not requiring impossible control over genuinely independent third parties.
3. Publication. Article 15 of the IP Enforcement Directive and paragraph 26.2 of the Patents Court Practice Direction 63 confer a discretion informed by the deterrent and public-awareness purposes identified in recital 27. The discretion is not exercised routinely. Relevant considerations include whether the defendant was a primary or secondary infringer, whether infringement was admitted, whether infringement or related use may continue, the need to deter future infringement, the expense and difficulty of vindicating intellectual-property rights, and proportionality.
4. The present case involved primary infringement, evidence of possible continuing indirect use, and a changed litigation stance. Publication on relevant websites of a factual statement of the decision with a link to the judgment was proportionate and appropriate. The period was limited to six months rather than twelve.

First-instance consequential-relief decision following the court’s earlier findings of infringement in the same proceedings. The judgment records that the defendants sought permission to appeal, but no appellate decision is stated.