ABP Technology Limited v Voyetra Turtle Beach Incorporated & Anor

An amendment may be late even at an early procedural stage if it could have been made earlier. The court must assess the prejudice caused by its timing and require a satisfactory explanation from the party seeking it.

A legally available trade mark point does not override the court’s case-management discretion. An amendment should be refused where its deliberate timing deprives the opposing party of a revocation opportunity, and no good reason or evidence justifies that prejudice. A party is not required to search the register for unused third-party marks in order to preserve that opportunity.

ABP Technology Limited owned registered trade marks for STEALTH and STEALTH VR. It brought infringement proceedings against the respondents, who later sought to amend their defence to rely on an earlier STEALTH registration acquired through a company acting for them. They also sought to counterclaim for infringement of that earlier mark.

The proposed amendments were notified only after the three-month period in which ABP could seek revocation of the earlier mark for non-use under Trade Marks Act 1994, section 46(3). Miles J permitted the defence based on section 11(1B) and the infringement counterclaim, while refusing other relief. ABP appealed the permission to amend.

The central issue was whether the amendments were improperly late because their timing deliberately removed ABP’s revocation opportunity.

1. Appeal allowed unanimously. Birss LJ, with whom Nicola Davies LJ and Coulson LJ agreed, held that Miles J had erred in permitting the amendments. The permission to add the section 11(1B) defence and counterclaim for infringement of the earlier mark was set aside.

2. An appellate court may interfere with a discretionary case-management decision where, among other matters, the judge failed to take account of a relevant consideration. The relevant consideration here was that the amendment was late in the relative sense: it could have been pleaded earlier, even though the proceedings remained at an early absolute stage.

3. The significance of lateness lies in the prejudice caused and the need for an explanation. The respondents’ section 11(1B) case was available from the acquisition of the earlier mark in January 2021, before their original defence was filed. Its delayed introduction deprived ABP of the section 46(3) opportunity to seek revocation for non-use.

4. The fact that the proposed case was legally permissible under the Trade Marks Act 1994 did not determine the amendment application. Civil proceedings are decided on the issues properly before the court, and a party has no free hand to introduce a point late where that timing removes an opposing defence.

5. There was no evidence explaining or justifying the deliberate concealment. The respondents’ objective was to avoid alerting ABP to a possible revocation application. That was not a good reason. The inaccurate and misleading original pleading concerning proprietorship reinforced the need for an evidential explanation. In those circumstances, the prejudice was deliberately caused and the amendments had to be refused.

6. The court also agreed that it was at least arguable that section 11(1B) did not require the other party first to invoke section 11(1). It further stated, in an observation not necessary to the result, that ABP had no duty to search the register and attempt to revoke unused marks held by third parties.

• Court of Appeal (Civil Division): Allowed ABP’s appeal in [2022] EWCA Civ 594 and set aside permission to amend the defence and add the counterclaim.
• High Court, Business and Property Courts: Miles J had permitted those amendments, while refusing ABP’s application for summary judgment on honest concurrent use and refusing the proposed invalidity counterclaim. No citation for that decision is stated in the judgment.