Summary

Where a defendant had mounted a defence to trade mark infringement under Trade Marks Act 1994 s.12, it was inappropriate on a summary judgment application to conduct a mini-trial and reach a conclusion of fact that documents relied upon by the defendant were forged.

Facts

Claimants' (C) application under CPR Part 24 for summary judgment on a claim for trade mark infringement. C manufactured and sold, through its subsidiaries, a range of products under the NIVEA trade mark of which it was the registered proprietor. Subsidiary companies of C sold the products in certain territories in which those subsidiaries were incorporated. The local company was entitled to use the trade mark in that territory but not otherwise. In April 2003, C discovered that the first defendant (D1) had in its possession a quantity of NIVEA products that it apparently bought from Germany, which it intended to re-label and sell. The products were out-of-date stock that C had sent for destruction. After C had obtained an injunction restraining D1 from trade mark infringement and passing off, D1 disclosed to C that it had obtained the products from a company that was subsequently joined as a second defendant (D2). An injunction was also obtained against D2 which disclosed that the source of the goods it sold D1 was a further company. C's claim for trade mark infringement was based on Trade Marks Act 1994 s.9, s.10 and s.12 and the issue was whether or not the goods were on the market in the European Economic Area or elsewhere with C's consent. The defendants argued that they had letters of consent from C, which C submitted were forged. D2 contended that, while on the evidence before the court it was probable that the court would infer on the balance of probabilities that the documents were forged and that there was no defence, this was not the trial of the action and it could not be said that there was no real prospect of defence.

Held

There was no doubt on the facts that if the documents were genuine then there was a defence. The question of whether or not they were genuine was something that the defendants were entitled to contest by disclosure and cross-examination in the ordinary way. It was not right on the evidence here that a conclusion of fact, that the documents were forgeries, should be reached without a trial. The matter should go to trial and not be disposed of at summary judgment.

Application refused.