Wirex Limited v Cryptocarbon Global Limited & Ors.

For trade mark infringement, damages for moral prejudice under regulation 3 of the Intellectual Property (Enforcement, etc.) Regulations 2006 compensate non-economic loss. General frustration experienced by litigants is insufficient without more. A Part 36 offer may be accepted at any time, but permission is required where a trial is in progress. An entitlement to seek judgment after an unless-order deadline expires is not itself the giving of judgment. Relief from sanctions is refused for a wilful, serious and significant breach which is unexplained and not remedied promptly.

The judgment determined three paper applications in an inquiry as to damages following an earlier finding that the First to Fourth Defendants had infringed Wirex’s registered CRYPTOBACK trade mark and that Mr Manuel was jointly liable for infringement by the First and Second Defendants.

The Defendants had failed to pay costs ordered during the inquiry. Unless orders provided for their defences to be struck out and judgment to be entered if payment was not made. Wirex applied for judgment on its unchallenged Points of Claim. Mr Manuel and Techbank sought permission to appeal and a stay, and later sought enforcement of an earlier Part 36 offer and relief from sanctions. The central issues concerned moral prejudice, acceptance of the Part 36 offer, and the consequences of breach of the unless order.

1. Damages. Because the Defendants were in breach of the unless orders, Wirex’s damages claim was assessed on the unchallenged assertions in its Points of Claim. The court awarded £200,000 for the lost annual upfront fee and £36,766 for lost per-retailer or account-holder payments. It awarded nothing for moral prejudice. Regulation 3(2)(a)(ii) of the Intellectual Property (Enforcement, etc.) Regulations 2006 covers non-economic loss, but severe frustration, without more, did not constitute moral prejudice.
2. Stay. The stay application was dismissed because the only live IPO opposition proceedings could not affect Wirex’s entitlement to relief in the inquiry. The application for permission to appeal to the Supreme Court was withdrawn.
3. Part 36 offer. CPR 36.11(2) permits acceptance at any time, subject to qualifications. Under CPR 36.11(3)(d) and CPR 36.3(d), permission is required where a trial is in progress, which continues until judgment is given or handed down. The expiry of the unless-order deadline made Wirex entitled to seek judgment, but judgment was not given on that date. Permission was therefore required and would have been refused because acceptance was a last-minute attempt to avoid the consequences of failed appeals.
4. Relief from sanctions. The breach of the 17 February 2022 unless order was wilful, serious and significant. Payment after unsuccessful appeals did not cure the failure to comply at the proper time. The absence of an explanation and the failure to remedy the breach promptly justified refusing relief under CPR 3.9.
5. Wirex was awarded the damages and costs identified in the judgment, including the 25% Part 36 costs uplift. The parties were invited to agree an order giving effect to the judgment.

The judgment records that the Court of Appeal dismissed applications for permission to appeal the orders of 8 December 2021 and 17 January 2022 on 12 April 2022. The present judgment then determined the damages inquiry and related applications.