1. Jean Christian Perfumes Ltd and Another v Sanjay Thakrar (trading as Brand Distributor and/or Brand Distributors Ltd Alternatively Sued on his own Account)
| Jurisdiction | England & Wales |
| Judge | Mr John Baldwin |
| Judgment Date | 27 May 2011 |
| Neutral Citation | [2011] EWHC 1383 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC-08-C03716 |
| Date | 27 May 2011 |
[2011] EWHC 1383 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr John Baldwin QC
(sitting as a deputy Judge of the Chancery Division)
Case No: HC-08-C03716
Richard Miller QC and Jonathan Hill (instructed by Kuit Steinart Levy LLP) for the Claimants
Robert Deacon and Samson Spanier (instructed by Ward Hadaway) for the Defendant
Hearing dates: 17 to 20 and 27 May 2011
Mr John Baldwin QC:
This is an action by the registered proprietor and licensee respectively for infringement of Community Trade Mark No 5349162 in respect of the mark Stunning in relation, inter alia, to perfumes and similar. The action arises out of the importation into and distribution in the UK of two consignments of unauthorised Stunning branded goods in about 2008 (the Unauthorised Goods). The goods were manufactured in India by the authorised manufacturers, Aroma de France (Aroma), but were not in authorised packaging and their importation into and sale in the UK was without the consent of the Claimants and was an infringement of registered trade mark. All these matters are common ground.
It is also common ground that the arrangements in relation to both the first and second consignments were taking place at around the same time, that is to say, summer/autumn 2008. The first consignment involved sales to a UK company called Elisa International Limited (Elisa) and the second involved the participation of a Mr Somani and a number of his companies. This is also common ground.
The issue in the case is whether the Defendant's involvement, if any, with the first and/or second consignments was such as to amount to infringement of registered Community trade mark by reason of the importation into or offer for sale and sale of the Unauthorised Goods in the EU or the UK. In relation to the first consignment, there was an offer for sale by the Defendant in relation to some of the goods prior to the sale to Elisa and there is a further issue as to whether that involved any trade mark infringement.
There were two disputes as to the relevant law. The first is whether or not an oral licensee of a Community Trade Mark has locus to sue for infringement, the second is whether oral use of a Community Trade mark can be an infringement. I was told that there was no binding authority on either point.
Pursuant to section 28(2) of the Trade Marks Act 1994, a licence under a UK registered trade mark is not effective unless it is in writing and signed by or on behalf of the grantor. Accordingly an oral licensee of a UK registered trade mark would have no locus to sue for infringement; he would not have an effective licence at all.
However, Community Trade Mark Regulation No 40/94 is of direct effect and Article 97(1) provides that the courts (that is to say, this court) shall apply the provisions of the Regulation. Although there is provision for assignments of CTMs to be in writing (Article 17(2)), there are no formalities with respect to licences. Article 22(3) provides that (unless precluded by contract) a licensee may bring proceedings for infringement if he has the consent of the proprietor and Article 22(4) provides that a licensee is entitled to intervene in infringement proceedings brought by the proprietor for the purposes of obtaining compensation for any damages he may have sustained. These Articles suggest that an oral licensee may bring proceedings for infringement if he has the consent of the proprietor.
I was referred to Article 16 of the CTMR which provides that a Community trade mark as an object of property shall be dealt with in its entirety as a national trade mark registered in the Member State in which the proprietor has his seat or domicile on the relevant date. It was suggested that this provision subjects Community trade marks to the stipulations of section 28(2) of the 1994 Act. However, Article 16 has effect '[u]nless Articles 17 to 24 provide otherwise …', and it seems to me that Article 22 does provide otherwise. Accordingly, in my judgment an oral licensee of a Community trade mark may bring proceedings for infringement if he has the consent of the proprietor of the mark.
Regarding whether oral use of a trade mark can amount to infringing use, the usual texts books seem to say that such is the case and it appears to be implicit in the Court of Justice's decision in C-2/00 Holterhoff [2002] FSR 52. Furthermore, it is clear that sounds can be registered as Community trade marks (so long as they are capable of being represented graphically), so it would be peculiar if oral use of a mark could not amount to an infringement. Article 9(2) gives examples of use which may amount to infringement and there is nothing to suggest oral use is excluded. I am satisfied that oral use of a mark can amount to infringement of the rights granted by registration of a Community trade mark.
I was also shown a number of authorities on joint tortfeasance and common design. It is not necessary to discuss them here. There was no dispute about the general principles; the dispute was about the facts and whether or not they were sufficient to fix liability upon the Defendant.
The Defendant, Mr Thakrar, is an experienced dealer in perfumes and similar goods and in about June or July 2008 he became aware that Aroma had some Unauthorised Goods for sale and wanted to sell them. At that time he says he was an agent for a Belize company called Brand Distributors Limited (BDL). At one stage in the proceedings he tried to distance himself from the acts of BDL but Mr Deacon in his final submissions accepted that what BDL had done was rightly attributable to Mr Thakrar. Thus the issue is whether Mr Thakrar or BDL infringed the rights granted by registration of the trade mark by reason of what they did in relation to either of the two consignments.
It is convenient to deal with the second consignment, the one involving Mr Somani, first. In his witness statement dated 16 December 2010 Mr Thakrar said this:
My involvement with the sale of perfumes from Aroma to Rajesh Somani was limited. I simply informed Rajesh Somani about the [Unauthorised Goods] and Rajesh Somani discussed the details of his purchase and transactions direct with Aroma. I simply acted as a contact between Rajesh and Aroma at the very outset.
Following my initial involvement as a contact I had nothing more to do with the Second Consignment with which these proceedings are concerned. I was unaware that this consignment of stock subsequently entered the UK and was sold by Rajesh Somani and his companies within the EU and the UK. I had no involvement with this whatsoever.
If what Mr Thakrar said in his witness statement were true, he would have incurred no liability for trade mark infringement.
Mr Somani's evidence about the second consignment was different from that of Mr Thakrar. His evidence was that, at the outset, Mr Thakrar and he agreed together that Mr Thakrar would negotiate the purchase of a consignment of Unauthorised Goods from Aroma by one of Mr Somani's companies, that the goods would be shipped to Dubai and thereafter to the UK by one of those companies, and that once in the UK, the goods would be sold principally through the efforts of Mr Thakrar but also of himself, onto the UK market.
Mr Somani's evidence was that the deal was first hatched in a meeting between himself and Mr Thakrar in Dubai on 1st July 2008, that the goods of the consignment became the subject of an invoice from Aroma to one of his companies dated 11 July 2008 (for 3,000 of the 100ml size and 15,000 of the 30ml size), that the goods were shipped from India to Dubai because Mr Thakrar said that Aroma would not ship them to an EU port, that they were onshipped to Rotterdam and then to the UK for sale onto the market, and that the original intention was that they would be marketed in the UK by a company called Celebrity World Limited, which was a joint venture company between himself and Mr Thakrar. He says that Mr Thakrar made all the decisions and was responsible for all the arrangements in relation to this transaction although he accepted that it was a joint transaction carried out by himself (through one of his companies) and Mr Thakrar together.
There is a striking difference between the evidence of Mr Somani and Mr Thakrar and counsel accepted that it was not possible for them both to be truthful witnesses.
Mr Somani was the first of the two to give evidence. I got the impression from Mr Somani when he was giving evidence that he was doing his best to assist the court and that the evidence he was giving was truthful. He answered questions clearly and carefully, and did not seem to me to be evasive or otherwise attempt to avoid issues put to him. He is a man who makes notes of his meetings and, accordingly, with the help of his notes, was able to give what seemed to me to be clear evidence about one crucial meeting, that of the 1 st July 2008. His evidence was supported by a number of documents and none of them contradicted it. I will come to these documents in due course.
I did not get a similar impression when Mr Thakrar gave evidence. My impression of Mr Thakrar was that when he was giving evidence he was attempting whenever he could to distance himself as much as possible from the importation into and sale of the Unauthorised Goods in the UK. On many occasions, instead of answering a question directly, he was evasive. On many occasions he made excuses instead of answering the question, excuses which were simply unsatisfactory. Moreover, it became clear from cross examination...
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IP Snapshot June 2011
...in class 5. For the full text of the decision, click here Jean Christian Perfumes and another v Sanjay Thakrar, High Court, [2011] EWHC 1383 (Ch), 27 May The High Court has held that an oral licensee of a Community trade mark has locus to sue for infringement (in contrast to the position fo......
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CAN EXCLUSIVE LICENSEES SUE FOR INFRINGEMENT OF LICENSED IP RIGHTS? A CASE STUDY CONFIRMING THE NEED TO CREATE GLOBAL IP LICENSING RULES.
...Welle Vertriebs GmbH, 2016 EUR-Lex CELEX 62015CJ0419 (June 22, 2016). (66.) See, e.g., Jean Christian Perfumes Ltd. v. Sanjay Thakrar [2011] EWHC (Ch) 1383 (UK) (discussing whether an oral licensee of a Community trade mark has standing to sue for infringement); Cour de cassation [Cass.] [s......