Lumos Skincare Ltd v Sweet Squared Ltd & Anor

A Community trade mark registration does not provide a defence to a claim for passing off. Where passing off is established, the court may grant a general injunction while defining its practical operation. A short suspension may allow time for business adaptation, but a longer period is unjustified where the time allowed is sufficient for rebranding and replacement marketing materials. Goods retained for lawful sale in another jurisdiction need not be delivered up, subject to proper evidence. A stay pending an application for permission to appeal may be conditional on prompt filing, complete documentation and an application for expedition.

The claimant appealed from the Patents County Court, where the proceedings had been determined by Mr Recorder Campbell ([2012] EWPCC 28). The dispute concerned alleged passing off in the United Kingdom through use of the name LUMOS. The defendants relied on their registration of a Community trade mark for LUMOS in specified classes of goods.

The Court of Appeal had already allowed the appeal in a judgment given on 6 June 2013. This judgment addressed the form and implementation of the resulting order, including the injunction, delivery up, financial relief, publication, costs and a stay pending an application to the Supreme Court.

The court, in a judgment given by Lord Justice Lloyd on behalf of the court, confirmed that the defendants’ Community trade mark registration was not a defence to the passing-off claim. It therefore granted a general injunction restraining passing off in the United Kingdom by use of LUMOS or a confusingly similar trade name.

1. Operation of the injunction. The injunction was suspended for acts done on or before 31 July 2013, giving sufficient time for business adaptations. It did not require recall of stock already supplied to purchasers, and did not affect sales to purchasers in the Republic of Ireland. Goods retained for such Irish sales were exempt from delivery up, subject to proper evidence of the items and quantities retained.
2. Ancillary relief. The defendants were required to provide evidence concerning sales by 31 July 2013. A publicity statement was to be placed on their website. The claimant was the successful party and was entitled in principle to its costs below and on appeal, subject to deductions for two costs matters. The defendants were awarded £2,500 for the evidence application and £8,000 for the security-for-costs application. They were accordingly ordered to repay £45,024.50, being the sum paid under the order below less £10,500. The claimant received an interim payment of £60,000 on account of base costs, with interest at 8% on base costs.
3. Stay pending further appeal. Suspension of the injunction and a stay of specified provisions were granted only if the defendants filed their Supreme Court permission application by 4 pm on 21 June 2013, lodged all required documents and applied for expedition. If those conditions were met, the stay continued pending determination of the application and, if permission were granted, pending the appeal.

The defendants’ application for permission to appeal to the Supreme Court was refused by the Court of Appeal.

• Court of Appeal (Civil Division) — The appeal was allowed in a judgment given on 6 June 2013. The present judgment dated 14 June 2013 settled the terms and implementation of the order; permission to appeal to the Supreme Court was refused.
• Patents County Court — Proceedings determined by Mr Recorder Campbell, cited as [2012] EWPCC 28.