Grenade (uk) Ltd v Grenade Energy Ltd and Another

(As Approved)

By this application, the claimant seeks summary judgment against both defendants, or alternatively an order that the defence is struck out and judgment is entered for the claimant.

The background facts are broadly these. The claimant markets food and drinks, specialising in those supplied to a sports market and which offer energy and improved performance. They are sold under two trademarks, one is the word mark "Grenade", the other is a logo which has an image of a grenade firearm in place of the letter A within an overall image of the word Grenade in a particular font.

The claimant has been trading on a substantial scale using these marks since 2010. It has acquired goodwill in its business associated with these marks. It has also acquired two European Union trademarks. One is a word mark in the form of the word Grenade, and the other is a device mark in the form of the logo I have just mentioned.

The first defendant is a company incorporated in June 2013 under the name Grenade Energy Limited. It supplies drinks, including energy drinks and has a website www.grenadeenergy. com. One of the first defendant's principal products is an energy drink called Epic. This and other products have been advertised in a number of ways, including on the first defendant's website. That website also features the company name Grenade Energy Limited and the logo.

The second defendant is the sole director and sole shareholder of the first defendant. It is alleged by the claimant that the first defendant has infringed the two EUTMs and has passed off its products as being those of the claimant or as being otherwise associated in the course of business with the claimant. The second defendant, Mr Chawla, is alleged to be jointly liable with the first defendant, the acts complained of having been authorised by him or made in furtherance of a common design between the defendants.

The position today is that Mr Sampson, who appears for the defendants, concedes on their behalf that the defendants have infringed the two EU trademarks owned by the claimant. It is admitted that the acts complained of constituted a misrepresentation on the part of the defendants. It is also admitted that the claimant has goodwill in its business associated with the wordmark "Grenade" and the claimant's device mark. Nonetheless, it is said that the defendants have an arguable defence to passing off on the ground that it is arguable that the claimants have not suffered damage.

Also it is said that the second defendant has an arguable defence that he is not jointly liable with the first defendant, and that this too should go to trial. Argument today really centred on the claimant's application for summary judgment.

Pursuant to CPR 24.2, I must be satisfied that the defendant has no real prospect of successfully defending the claim, either in relation to passing off or joint tortfeasance. In their respective skeletons, counsel referred me to a number of authorities on summary judgment, but I did not detect there was any real dispute about the criteria necessary for me to make a finding of summary judgment. At the risk of over-condensing the matter, I have to be satisfied that there is an absence of reality to the defendant's case in relation to passing off and joint tortfeasance.

I take passing off first. Damage as an element of the passing off alleged is pleaded in the Particulars of Claim in paragraph 4 as follows:

"As a result of the aforesaid misrepresentations, the claimant has suffered and is in future likely to suffer damage in particular through loss of custom and/or damage to the reputation of goodwill on the claimant's business."

It is fair to say that is quite brief. It just infers damage from the existence of goodwill and misrepresentation, which of course are now admitted. Mr Sampson submits that is not enough. In particular, he submitted today that the misrepresentation which has been admitted would be dispelled by the time a member of the public bought a can of the first defendant's Epic product.

Mr Hill, who appeared for the claimant, took me to a picture of a trade show, which was one of the exhibits, and which showed a display of the first defendant's Epic drink, set out under a clear label or banner at the display in the form of the words "Grenade Energy". Mr Hill also took me to the evidence of actual confusion which has emerged, I believe, in the last few weeks to show that some customers have indeed been taken in by use of the word grenade and possibly by the device used by the first defendant, into believing that the Epic product has something to do with the course of trade with the claimant. In fact, I was also shown an email dated 26 November 2015 from James Stephens who is managing director of one of the parties who supplied to the claimant. It is apparent from the email that he had seen the first defendant's Epic product being displayed. He says this:

"I was disappointed to see that you had launched a new range of Food Matters Live and we weren't asked to quote."

Then he gives a reference to the domain name where Juliet Barrett, the officer of the claimant to whom the email was sent, could find...