Tom Moody-Stuart QC appeared for the claimant in this application for default judgment and summary judgment on a claim for infringement of EU trade marks and registered designs.
The claimants make and sell vaping products. The defendants used the claimants’ marks and designs in marketing and selling vaping pods which purported to be compatible with the claimants’ devices. The defendants did not engage with proceedings and were not represented.
In addition to default judgment, the claimants sought summary judgment for declarations that the way in which the defendants used their marks was not capable of benefiting from the exemption under EU Trade Mark Regulation Article 14. So far as relevant to this claim, Article 14 provides that it is not infringement to use a trade mark to indicate that a product is an accessory or spare part, as long as such use is in accordance with honest practices in industrial or commercial matters. Declaratory relief was sought for the purposes of aiding in enforcement against other similar traders.
The claimants argued that the defendants were not using the claimants’ marks “in accordance with honest practices in industrial or commercial matters” for the reason that selling the defendants’ products was unlawful because the products did not comply with applicable regulations. The defendants’ pods were sold with excessive nicotine concentration, without adequate age verification safeguards, and without proper labelling. In addition, the claimants argued that it was not “in accordance with honest practices in industrial or commercial matters” for the defendants to sell empty vaping pods, pods that contained active ingredients other than nicotine, and pods that would invalidate the warranty on the claimants’ devices if used with them, because all of those were damaging to the reputation of the claimants’ JUUL system and the marks under which it is sold.
Mann J gave default judgment on the claim for injunctive and damages relief, and injunctive relief predicted on the finding that some (but not all) the defendants’ acts were not in accordance with honest practices because the marks were used in relation unlawful products. However, he refused to grant the declaratory relief sought. Given that the defendants had not engaged with proceedings and the Article 14 defence had not actually been raised, and that default judgment had been given, there was not an active dispute between the parties. The defendants’ side of the argument had not been fully argued, and the claimants had all the relief they needed on the default judgment. Making declarations against unrepresented third parties which would go beyond the facts of this particular case was outside the proper scope of declaratory relief.