Red Bull GmbH v Big Horn UK Ltd & Ors

Retrospective service by alternative means does not ordinarily deprive a defendant of a right to defend where the defendant filed a defence before the service order was made. The order must be construed in the light of the circumstances in which it was granted and should not operate retrospectively to create procedural default unfairly.

Strike out is a powerful case-management sanction. Although the Denton v TH White Ltd principles are relevant, the court must assess the proportionality of striking out itself. Procedural defects should generally be remedied where that is practicable. On a summary judgment application, a defence should proceed to trial where there is a real prospect of establishing dissimilarity between the signs, absence of confusion, or absence of the requisite link.

Red Bull GmbH brought trade mark infringement proceedings against Big Horn UK Ltd, Voltino EOOD and Lyubomir Enchev under Arts 9(2)(b) and 9(2)(c) of the European Union Trade Marks Regulation. The claimant applied for strike out, summary judgment and default judgment against Voltino.

Voltino had changed its registered office before service. The court later ordered retrospective service by alternative means. Voltino had nevertheless filed a defence before that order. The defendants’ other defences contained procedural and substantive deficiencies. The central issues were whether Voltino was in default and whether the defences should be struck out or judgment entered summarily.

1. Default judgment. The application for default judgment against Voltino was dismissed. The order of 6 August 2018 was an order for retrospective service by alternative means under CPR 6.15(2), not a declaration that earlier service had been valid. It was implicit that the order would not prejudice rights accrued before it was made. Voltino had filed a defence before the order, and retrospective service could not deprive it of the right to defend without requiring permission to rely on a document filed before any obligation to respond had arisen. The general purposes of service, including engaging jurisdiction and starting procedural time limits, supported that conclusion, consistently with Barton v Wright Hassall LLP [2018] UKSC 12.
2. Strike out. The court rejected strike out based on most procedural criticisms. Failure to serve a defence, failure to comply with the Shorter Trials Scheme requirements, an incorrect verification reference, and non-filing of the re-verified defence were breaches, but did not justify the disproportionate sanction of strike out. Under Walsham Chalet Park Ltd v Tallington Lakes Ltd [2014] EWCA Civ 1607, the Denton v TH White Ltd principles were relevant, but an application to impose strike out differs from an application for relief from an existing sanction. The court also applied the guidance in Prince Abdulaziz v Apex Global Management Ltd [2014] UKSC 64 and Inn Soo Kim v Youg Geun Park [2011] EWHC 1781 (QB) that strike out should be proportionate and that an opportunity to cure a pleading defect should normally be given.
3. Substantive defences. Allegations based on inadmissibility, extra petitum relief, general unlawfulness, the EU right to property, and ownership of a registered design disclosed no reasonable defence and were struck out. The registered design did not confer positive rights to use the design. The remaining defences raised arguable issues as to similarity, likelihood of confusion and the existence of a link.
4. Summary judgment. The claimant failed to show that the defendants had no real prospect of defending the infringement claims. Similarity was a threshold requirement under both Articles 9(2)(b) and 9(2)(c). The defendants had a real prospect of establishing dissimilarity in relation to the relevant figurative signs and, alternatively, no likelihood of confusion or no link. The applications were dismissed. Permission was granted to amend the defences in the terms of the re-verified Briffa Defence.