JUUL Labs, Inc. & Anor v Quick XUUL Ltd & Ors

Registered trade mark rights may be enforced against counterfeit goods and against signs which create an association with the registered marks. A defendant cannot rely on exhaustion or implied consent where the goods were unlawfully sold and the proprietor did not consent to their sale in the relevant market. Likelihood of confusion is assessed in context, including the similarity of the signs, the goods and the surrounding use. Advertising which identifies goods as different from the proprietor’s products may still take unfair advantage of, or cause detriment to, distinctive character or repute. Passing off is established where goodwill, misrepresentation and damage or a risk of damage are shown.

The claimants, members of the JUUL group, brought proceedings for infringement of four EU trade marks and passing off against a company, its directors and associated individuals. The defendants advertised and sold vaping products using JUUL-related names, images and product designs. The defendants applied for summary judgment, while the claimants sought summary judgment or judgment in default.

The central issues were whether the defendants’ use infringed the marks, whether any genuine grey-market goods gave rise to a defence, whether the use of Xuul and related signs infringed by similarity or unfair advantage, and whether the passing-off claim was clearly established.

1. Disposition. Final judgment was entered for the claimants against Quick Xuul Ltd, Linda McVeigh and Nicholas Jason Juul. Judgment in default was entered against Gary Wilson. Proceedings against Caxess Corporation were ineffective because that company had been dissolved.

2. The defendants’ use of JUUL names, packaging images and the claimant’s product designs in connection with identical vaping goods infringed the exclusive rights conferred by Article 9.1 of the EU Trade Mark Regulation 1001/2017, falling within Article 9.2(a). The later use of Xuul and Quick Xuul also infringed under Article 9.2(b), because the signs were visually and aurally similar and there was a likelihood of confusion.

3. Even where advertising makes clear that the goods are not JUUL products, use of similar signs may take unfair advantage of, or cause detriment to, distinctive character or repute. The assessment under Article 9.2(b) and (c) required consideration of all the circumstances and the cumulative effect of the use. The advertising was not genuine comparative advertising: it sought to create an association with the claimants’ products.

4. Any defence based on exhaustion or implied consent failed. Even if some products were genuine grey-market goods, 5% nicotine pods could not lawfully be sold in the United Kingdom or the European Union, and the claimants had not consented to their sale there. The Tobacco and Related Products Regulations 2016 prohibited sale of e-liquids exceeding the applicable nicotine concentration.

5. The passing-off claim was clearly established. The claimants had goodwill and reputation in the JUUL brand and product get-up. The defendants’ conduct misrepresented counterfeit or similar goods as JUUL goods or as associated with the claimants, causing actual or likely damage.

6. The court declined to restrain all sales of ENDS products exceeding 1.7% nicotine strength because that relief had not been pleaded and was more appropriately addressed by Trading Standards or the Police. It also declined to require Mr Juul to change his surname, since that was unnecessary in light of the other relief and raised issues under Article 8 of the Convention and the Human Rights Act 1998.

First-instance decision. The judgment itself does not state any prior appellate history.