Enreach UK Ltd v Inreach Group Ltd
| Jurisdiction | England & Wales |
| Judge | Nicholas Thompsell |
| Judgment Date | 11 November 2022 |
| Neutral Citation | [2022] EWHC 2867 (Ch) |
| Docket Number | Case No: IL 2021-000086 |
| Court | Chancery Division |
[2022] EWHC 2867 (Ch)
Mr Nicholas Thompsell
sitting as a Deputy Judge of the High Court
Case No: IL 2021-000086
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Rolls Building
Fetter Lane
London, EC4A 1NL
Michael Edenborough KC and John Eldridge (instructed by Collyer Bristow LLP for the Claimants
Georgina Messenger (instructed by Murgitroyd & Company Ltd) for the Defendant
Hearing date: 14 October 2022
INTRODUCTION
This case relates to a dispute between two corporate groups holding trade marks and related intellectual property. The dispute engages questions concerning the potential effect of human rights legislation on trademark law.
In brief, the Defendant (which I will also refer to as ‘ Inreach’) has challenged the UK designation of international trade marks registered by the Second Claimant (which I will also refer to as ‘ Enreach’). Inreach's challenge is on the grounds that the Enreach's trade marks are in conflict with its earlier trade mark.
In response to this, amongst other things, the Claimants have sought to invalidate the Defendant's trade marks on the grounds that they conflict with a yet earlier registered trade mark (the ‘ Still Earlier Trade Mark’) held by Reach Digital Telecoms Ltd (‘ Reach’). Reach is not participating in any part of these proceedings.
The Claimants, however, have faced a hurdle in making this case. This results from the terms of the Trade Marks (Relative Grounds) Order 2007 (the ‘ 2007 Order’), and more particularly, Article 5 of the 2007 Order (‘ Article 5’). This provides that only “ the proprietor or a licensee of the earlier trade mark” may make an application for a declaration of invalidity of a later trade mark on the grounds of its incompatibility with the earlier trade mark. In legal terminology this could be considered as introducing into trademark law a requirement for the person making the objection on relative grounds to have standing (in Latin, ‘ locus standi’) as the proprietor or a licensee of the earlier trade mark. I will call this requirement the ‘ Locus Standi Requirement’.
The Claimants' case is that this hurdle is overcome on the grounds that the court should disapply Article 5 on the grounds that the article has the effect of infringing the Claimants' rights under the Human Rights Act 1998 (the ‘ HRA’). The HRA has created rights under English law defined by reference to the rights and fundamental freedoms set out in various parts of the European Convention on Human Rights 1953 (the “ ECHR”). These rights are referred to in the HRA as the ‘ Convention rights’. Specifically the Claimants claim that applying Article 5 would infringe the rights described in Article 1 of the First Protocol of the ECHR (the “ Article 1 Rights”).
The Defendant maintains and contends that, because of Article 5, the Claimants have no legally recognisable claim against it and that the circumstances of the case do not engage the Article 1 Rights. Accordingly the Defendant argues that the Claimants have no real prospect of succeeding on their claim and has made an application that the Claimants' claim be struck out pursuant to Civil Procedure Rule (‘ CPR’) 3.4(2)(a) or alternatively that summary judgment be entered for the Defendant against the Claimants' claim against it pursuant to CPR 24.2(a)(i).
This judgment relates to the hearing of that application, where I heard argument over a full day, and was assisted by fulsome skeleton arguments, from Ms Georgina Messenger for the Defendant (and applicant in this case) and from Mr Michael Edenborough KC, assisted by Mr John Eldridge, for the Claimants (and respondents in this case). I am obliged to counsel on both sides for their very thorough briefing and the clarity of their arguments.
RELEVANT FACTS AND PROCEDURAL HISTORY
The salient facts relevant to this matter can be briefly stated and are not in dispute.
The dispute concerns the following UK registered or designated trade marks (listed in order of their registration):
| Description of mark | Classes covered | Owner | Date of filing | Referred to in this judgment as: |
 | 38 | Reach | 28/6/2016 | The ‘Still Earlier Trade Mark’ |
| UK Trade Mark No. 3212648 for the series of figurative marks shown below  | 35, 37 and 38 | Inreach | 14/2/2017 | ‘Inreach's 648 Marks’ |
| International Registration No. 1558492 for the word mark ENREACH  | 9, 38 and 42 | Enreach | 6/1/2020 (with a claimed priority date of 11/7/2019 | ‘ Enreach's 492 Mark’ |
| UK Trade Mark No. 3 458 548 for the figurative mark shown below  | 2, 38, and 42 | Inreach | 16/1/2020 | ‘ Inreach's 548 Mark’ |
| International Registration No. 1532599 and the UK comparable right No. 801532599 for the figurative mark ENREACH shown below  | 9, 38 and 42 | Enreach | 20 January 2020 (with a claimed priority date of 25/9/2019 | ‘ Enreach's 599 Mark’ |
By a Notice of Opposition dated 22 April 2021, the Defendant filed an opposition to the United Kingdom designation of Enreach's 492 Mark. By a Notice of Cancellation dated 8 November 2021, the Defendant filed cancellation proceedings in respect of Enreach's 599 Mark. In each case, the Defendant was relying upon, amongst other things, Inreach's 648 Marks.
The First Claimant issued High Court proceedings on 9 December 2021. It contended (and contends) that it has used the indicium ENREACH (the ‘ ENREACH Indicium’) extensively in the UK in the course of its business. It contends that, resulting from this use, it has protectable goodwill associated with that indicium. In its Claim Form it sought a declaration of invalidity in respect of Inreach's 648 Marks. It clarified, in its Particulars of Claim, that the basis for this was that it relied on the Still Earlier Trade Mark and sought a declaration of invalidity in respect of both Inreach's 648 Marks and Inreach's 599 Mark in each case pursuant to sections 5(2)(b) and 47(2) of the Trade Marks Act 1994 (the ‘ TMA’).
The First Claimant's initial Particulars of Claim acknowledged that the 2007 Order applied (or rather, in its view, purported to apply) to the proceedings and that, pursuant to that Order, an application for a declaration of invalidity could only be brought by the proprietor or a licensee of an earlier trade mark. However, it averred that “ this purported fetter on who may apply to invalidate a registered trade mark is ultra vires, and so of no effect” and accordingly that it was entitled to rely on the Still Earlier Trade Mark despite not being the proprietor or a licensee.
In response to this claim, the Defendant did three things:
i) first, on 19 January 2022, it issued a Part 20 claim against Enreach Holding BV (which thereby become the Part 20 Defendant);
ii) secondly, on 21 January 2022, it filed and served a defence and counterclaim in which:
a) it asserted that the Claimant's Particulars of Claim did not disclose any legally recognisable claim against it and were liable to be struck out; and
b) it counterclaimed for trade mark infringement of Inreach's 648 Marks and for passing off; and
iii) thirdly, on 24 January 2022, it issued the application for strike out and/or summary judgment.
By an application notice dated 31 March 2022, the First Claimant and Enreach Holding BV sought permission to amend the Claim Form and its Particulars of Claim and to join Enreach Holding BV as the Second Claimant. The proposed amendment to the Particulars of Claim had the effect of narrowing the Claimants' argument as regards the applicability of the 2007 Order. Rather than claiming the order was ultra vires, the Claimants now argued that the Court should not apply the 2007 Order in the present case, as doing so would occasion an unjustified infringement of the Claimants' Article 1 Rights.
The Defendant consented to this application, but maintained its contention that, even as amended, the Claimants' Particulars of Claim were still flawed.
A consent order in respect of the amendment application was sealed on 11 May 2022 and the Amended Claim Form and Amended Particulars of Claim were thereafter served on the Defendant. The Defendant subsequently filed and served an Amended Defence and Counterclaim and the Claimants filed and served a Reply.
Following further correspondence, a further consent order was sealed on 31 May 2022 setting directions for the hearing of the Defendant's application, staying the Counterclaim until determination of that application and transferring the Defendant's application for cancellation from the UK Intellectual Property Office. It was later identified that the 31 May 2022 order erroneously referred to the cancellation proceedings being “consolidated” with the High Court proceedings but this error was rectified by a further consent order sealed on 13 September 2022 which stated that the cancellation action be transferred, case managed and tried with the High Court claim.
The result of these various procedural developments is that this court is now asked to rule upon the Defendant's application for summary judgment or striking out of the Claimants' claim challenging the Defendant's trade marks.
The Defendant argues this on the basis that the Claimants have no legally recognisable claim against the Defendant and/or that they have no real prospect of succeeding on their claim.
RELEVANT LAW
To determine this matter, the court will need to have regard to three areas of law and practice:
i) the principles governing summary judgment and striking out applications;
ii) the relevant trademark law;
iii) the nature and application of the Article 1 Rights
It is convenient to lay out the general principles...
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