Nah Holdings Limited & Anor. v KPF Enterprises Limited & Anor.

On an application for summary judgment in a trade mark infringement claim, the court must ask whether the opposing party has a real prospect of successfully defending the claim or pursuing the counterclaim. Similarity and identity of goods may make confusion likely, but summary determination remains inappropriate where a pleaded validity challenge has a more than fanciful prospect and requires evidence. A late defence cannot be circumvented by seeking summary judgment: the procedural remedy is judgment in default, subject to the rules governing default judgment. Evidence of apparent genuine use may be sufficient where it is unchallenged by any positive reason for doubt. A conditional order should not be made without giving the parties an opportunity to address its terms and relevant circumstances.

The claimants sought summary judgment in proceedings concerning eight registered food-related trade marks, principally the word marks SLIM SAUCE and SLIM SAUCES. The defendants marketed low-calorie sauces under the name Slim Sauces and counterclaimed that the marks were descriptive or devoid of distinctive character under sections 3(1)(b) and 3(1)(c) of the Trade Marks Act 1994, and, for most of the marks, should be revoked for non-use under section 46(1)(b).

The defence and counterclaim had been filed late. The court considered whether that justified summary judgment, whether the defendants had any real prospect of defending the infringement claim or succeeding on the counterclaim, and whether a conditional order should be made.

1. Late pleading. The lateness of the defence was not a ground for summary judgment under CPR 24.2. The proper remedy for a defence filed out of time was an application for judgment in default under CPR 15.3. Such an application would have been dismissed under CPR 12.3(1) in the circumstances, and the claimants could not circumvent that result by recasting the application as one for summary judgment. In any event, retrospective relief from sanctions under CPR 3.9 was granted because the breach was neither serious nor significant.
2. Infringement. The relevant question under section 10(2) of the Trade Marks Act 1994 was whether the similarity between the registered mark and the sign created a risk that the average consumer would believe that the goods came from the same undertaking or an economically linked undertaking. The goods were identical and the sign differed only by using the singular. The defendants therefore had no real prospect of resisting infringement on the pleaded basis that “sauce” was descriptive and “slim” lacked all distinctive quality.
3. Non-use. The evidence exhibited to the defence appeared to establish genuine use of the marks within the relevant periods. No positive reason had been advanced to cast doubt on the evidence or on the genuineness of the use. The non-use counterclaim therefore disclosed no real prospect of success on the material before the court.
4. Validity. The court was unwilling to determine without evidence that the marks were incapable of distinguishing the goods or were descriptive within section 3(1)(b) or (c). The prospect of success was slight but better than fanciful. Summary judgment could not therefore be granted on those issues.
5. Further procedure. Although Practice Direction 24, paragraph 5 permitted a conditional order, the judge invited short written submissions and draft orders before deciding whether such an order was appropriate.