Planetart, LLC and Another v Photobox Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Ms Pat Treacy |
| Judgment Date | 02 July 2019 |
| Neutral Citation | [2019] EWHC 1688 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: IL/2019/000046 |
| Date | 02 July 2019 |
Ms Pat Treacy
Sitting as a Deputy Judge of the Chancery Division
Case No: IL/2019/000046
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
7 Rolls Building
Fetter Lane
London
EC4A 1NL
Mr Campbell appeared on behalf of the Claimants
Mr Alkin appeared on behalf of the Defendants
(As Approved)
THE DEPUTY JUDGE: Today I am handing down my judgment in this interim application. The claimants applied for an interim injunction to prevent the defendants from using the words “free prints” in connection with their app to supply free photo prints. The cause of action is passing off.
For the reasons contained in my written judgment, and having considered the evidence and arguments of both parties, even if that is not specifically contained in my written judgment, the application for injunctive relief is refused. The defendants have offered undertakings to the court pending trial of the action. Those undertakings have been accepted and are recorded in the order following judgment.
Today I am also making a final order on the application. The parties have agreed that this be done without a hearing following written submissions by counsel. The court has power to deal with the matter in this way under CPR 23.8(b). As noted by Warby J in PJS v News Group Newspapers Ltd[2016] EWHC 2770 (QB), the purpose of that provision is to assist the efficient dispatch of the court's business. In line with the judgment of Warby J, however, and in the interests of maintaining the principle of open justice, I am giving this brief oral judgment.
I have carefully considered the written submissions made by counsel for both parties on the form of order, and I am grateful to counsel for their helpful submissions and for responding to one or two supplemental questions, which enabled me to deal with the matter more efficiently and expeditiously than would otherwise have been the case. Five issues arose on the form of order: the scope of the defendants' undertakings to trial; the claimant's cross-undertakings in damages; expedition; costs; and leave to appeal. I deal briefly with each of those in turn.
A. The scope of the defendants' undertakings to trial
The parties were largely agreed about the defendants' undertakings to trial. These consist broadly of undertakings as to the appearance of the defendants' app and the marketing of that app. A recital and accompanying undertaking to deal with the layout of the app on the app store as it stood before the order of Birss J on 3 May 2019 were also agreed. The principal dispute was whether the defendants should be required to give a further undertaking which would prohibit the defendants from making any substantive changes to the FREE PRINTS app or on the app store. The claimants requested this change in written submissions dated 26 June 2019. The claimants proposed that this could be achieved by excising the words “without notifying you in writing of such change” from the undertaking offered by the defendants before the hearing of the application. That wording had been present in all forms of that undertaking previously offered by the defendants, including those offered on both 2 and 24 May 2019.
Given the importance of being clear about the scope of undertakings generally, as with injunctions, and given the timing of the request, I do not regard a change to the proffered undertaking as appropriate. The undertaking originally given to Birss J and subsequently repeated before and after the application hearing gives the claimants protection from proposed changes as it entitles them to make representations to the defendants about the potential impact of such changes and, if necessary, to apply to the court in the event that a change materially affects the balance of convenience.
B. The claimants' cross-undertaking in damages
Having considered the submissions of counsel, and in particular having reviewed the entirety of paragraph 16.29 of the Chancery Guide, helpfully referred to by Mr Campbell for the claimants, the order now makes explicit the implicit undertaking given by a party applying for an injunction in favour of a party who gives undertakings to the court, avoiding...
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