Red Bull GmbH v Sun Mark Ltd & Anor

Consequential relief following established trade mark infringement is discretionary. An injunction pending appeal is not automatic merely because the claimant offers a cross-undertaking in damages. The court must assess the balance of convenience and the likely prejudice to both parties.

A stay pending revocation proceedings may be refused where the defendant could have raised the issue earlier and its exposure to interim relief is substantially self-created. Disclosure orders should be confined to information reasonably required and proportionate to the infringement. Publicity orders should serve the policy of informing the public and deterring further infringement without creating unnecessary scope for dispute.

The court had previously found that the defendants infringed International Registrations 389 and 548 by using BULLET, and infringed the Community trade mark by using NO BULL IN THIS CAN: [2012] EWHC 1929 (Ch). This judgment determined the consequential relief.

The issues included the form of declarations, a certificate of contested validity, the territorial scope of the injunction, stays pending appeal and revocation applications, disclosure of sources and supplies, an Island v Tring order, publicity, and costs.

1. The court granted declarations that the defendants had infringed IR 389 and IR 548 by using BULLET in relation to an energy drink, and had infringed the CTM by using NO BULL IN THIS CAN. It also granted certificates of contested validity under section 73 of the Trade Marks Act 1994.

2. An EU-wide injunction was granted. The defendants did not resist that relief. The court accepted that it had jurisdiction as a Community Trade Mark Court under Articles 97(1) and 98(1) of the Regulation, and that the general territorial rule in Article 1(2) was engaged.

3. On the applications for a stay pending appeal, the applicable approach was the balance of convenience. Under Minnesota Mining & Manufacturing Co v Johnson & Johnson Ltd [1976] RPC 671 and Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Ltd [2009] EWCA Civ 1513, a cross-undertaking normally weighs in favour of granting an injunction, but it does not remove the court’s discretion. The defendants’ modest UK sales, export focus, available alternative mark, and the cross-undertaking meant that their likely harm was outweighed by the claimant’s harm if relief were withheld. The stay was refused.

4. The court applied the guidance in Second Sight Ltd v Novell UK Ltd [1995] RPC 423 to the stay sought pending revocation applications. A stay is discretionary and depends on the interests of justice, including the applicant’s prospects and diligence. The defendants could have amended their counterclaim when the marks became open to non-use revocation under section 46(1)(a) of the Trade Marks Act 1994. Their exposure to interim relief was therefore substantially self-created, and the stay was refused.

5. Disclosure was ordered in relation to persons within the European Union who had supplied or received infringing materials. It was disproportionate to extend the order to offers to supply or to persons outside the European Union. Documents did not need to be exhibited at that stage.

6. The court ordered an Island v Tring statement within six weeks. Applying the policy underlying Article 15 of the Enforcement Directive, and the considerations identified in 32Red plc v WHG (International) Ltd (No 2) [2011] EWHC 655 (Ch), publication on all websites under the defendants’ control, with a hyperlink to the complete main judgment, was sufficient. Display at the defendants’ premises was unnecessary.

7. Red Bull was prima facie entitled to its costs. The abandoned estoppel defence did not justify indemnity costs, and no deduction was made for alleged settlement conduct. An interim payment of £140,000 was ordered, payable within 28 days.

The judgment records that permission to appeal was granted on one proposed ground against the earlier decision dismissing the defendants’ counterclaim for invalidity: [2012] EWHC 1929 (Ch). This judgment refused stays pending appeal and pending revocation applications.