ABP TECHNOLOGY LIMITED v VOYETRA TURTLE BEACH, INC.

On an application for summary judgment, the court should avoid finally determining a difficult or fact-sensitive issue where fuller evidence may materially assist the trial court. Honest concurrent use is a fact-sensitive, multi-factorial defence. The authorities do not prescribe a minimum period of coexistence.

Permission to amend should generally be granted where proceedings are at an early stage, the amendment has a real prospect of success and refusal would prevent adjudication of statutory rights. However, an amendment based on an unarguable construction of the Trade Marks Act 1994 should be refused. Genuine use for the purposes of section 47(2B)(a) must have been made by the proprietor, or with the proprietor’s consent, during the relevant period. A later transfer cannot retrospectively alter objectively ascertainable historical facts.

The claimant owned UK registrations for STEALTH and STEALTH VR for gaming headsets. It sued two defendants for infringement under sections 10(1) and 10(2) of the Trade Marks Act 1994. The defendants relied on honest concurrent use and sought permission to amend their defence and counterclaim after acquiring an earlier STEALTH registration from a third party.

The claimant applied for summary judgment. The defendants applied to plead statutory defences and counterclaims based on the acquired registration, including section 11(1B), invalidity under section 47 and infringement by the claimant. The issues were whether the existing defence had a real prospect of success and which proposed amendments were arguable and procedurally permissible.

1. Summary judgment. The claimant’s application was dismissed. The principles in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch), as supplemented in TFL Management Ltd v Lloyds TSB Bank Plc [2013] EWCA Civ 1415, required caution where fuller evidence or cross-examination might affect the result. The honest concurrent use defence had a real prospect of success. Its availability depended on a multi-factorial assessment, including the length and circumstances of coexistence, the effect on the functions of the trade mark and consumer perceptions. No minimum period of use was prescribed. The court therefore declined to determine the comparative merits finally at the summary stage.
2. Discretion to amend. Applying the principles in CIP Properties v Galliford Try [2015] EWHC 1345 (TCC) and Lucien Pearce v East and North Hertfordshire NHS Trust [2020] EWHC 1504 (QB), the court allowed amendments relating to the defendants’ recent ownership of the earlier mark. The proceedings were at an early stage, no previous work would be wasted, and the defendants had no general obligation to disclose their commercial plans. Cluley v RL Dix Heating [2003] EWCA Civ 1595 was distinguished because there had been no comparable admission on which the claimant had relied to its detriment.
3. Permission was refused for the proposed section 47 counterclaim based on alleged use before the defendants became proprietor or obtained the proprietor’s consent. Section 47(2B)(a) required genuine use by the proprietor or with consent during the relevant five-year period. A later acquisition could not retrospectively transform the real-world position.
4. The section 11(1B) defence was arguable and was permitted. The proposed counterclaim alleging infringement of the earlier mark was also arguable and required full pleading. The amendment relying on the later acquisition as evidence of honest concurrent use was refused because later events could not alter the historical assessment of coexistence.
5. The defendants were permitted to make some, but not all, proposed amendments and were directed to produce a further draft pleading.