Reckitt Benkiser UK v Home Pairfum Ltd and Others
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE LADDIE |
| Judgment Date | 13 February 2004 |
| Neutral Citation | [2004] EWHC 302 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: 1HC35803 |
| Date | 13 February 2004 |
[2004] EWHC 302 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
The Strand, London, WC2A 2LL
The Honourable Mr Justice Laddie
Case No: 1HC35803
Mr Michael Edenborough (instructed by Messrs Laytons) appeared on behalf of the Claimant.
Mr Jonathan Hill (instructed by Messrs Lewinson Gray) Appeared on behalf of the Defendants.
Approved Judgment
The Claimant in this action is Reckitt Benkiser UK Limited ("Reckitt"). It is engaged in the business of designing, manufacturing and selling consumer products, including air fresheners, which are sold in specially designed containers. Before me, it is represented by Mr Edenborough. It is part of the group which includes Reckitt & Colman.
There are three Defendants. All are represented before me by Mr Jonathan Hill. The first is Home Pairfum Limited ("HPL"). It also is engaged in selling air fresheners. Until very recently, it imported its products or the contents of its retail packaging from a source in Germany. Recently the latter company was sued successfully in Germany. I understand that HPL now has a UK source.
The Second Defendant is Mr Hubert Willem Maat. He was an employee of a business partner of the Claimant. He left and set up HPL. It is not suggested that, in doing so, he broke any restrictive covenants. He is the managing director of HPL and is the beneficial owner of all its issued share capital.
The Third Defendant is Josephine Bernadette McCarthy. She is HPL's company secretary. As a result of discussions during the course of the applications before me, Miss McCarthy has been released from the action on agreed terms, which are not relevant to anything I have to decide.
In this action, which was commenced by a claim form dated 4 June 2003, Reckitt alleges infringement of nine United Kingdom registered trade marks, three Community trade marks, five registered designs and design right as well as passing-off and breach of confidence. It seeks injunctive relief, certain disclosure and an enquiry as to damages or an account of profits.
By a Defence and Counterclaim, dated 1 August 2003, the Defendants not only denied that they breached any of the claimed rights, but they went onto the offensive. They seek to invalidate all the trade marks pleaded against them, and they also seek declaratory injunctive and compensatory relief against Reckitt in respect of unjustified threats allegedly made by Reckitt in relation to its UK and Community trade marks and its registered designs. It has also intimated that it wishes to join the Claimant's solicitors, Messrs Laytons, as Part 20 Defendants, it being alleged that they are as liable as Reckitt because they wrote and sent the threatening letters of which complaint is made.
There are two applications before me. The first is brought by Reckitt. It seeks to have the counterclaim, in so far as it relates to threats, struck out. The second is brought by the Defendants. They seek to join Laytons as Part 20 Defendants to their threats counterclaim. Many of the issues which arise in the two applications are the same. Reckitt argued that the reasons which justify the striking out of the threats allegations also justify refusing to allow Laytons to be joined as parties.
It advanced two core arguments. First it said that the threats counterclaim and the joinder are abuses of the court's process or are otherwise likely to obstruct the just disposal of these proceedings. In this regard, it relied on the provisions of CPR 3.4(2)(b). Second, it says that the threats counterclaim and joinder are breaches of the court's case management powers under CPR 3.1(2)(e), (f), (i), (j), (k), (l) and (m). Mr Edenborough expressed the latter point rather differently during his submissions: the court's case management powers are of such a width that they can and should be exercised to strike out the threats claim and to prohibit the joinder of Laytons.
In support of its application, Reckitt has served and relies on a witness statement of Simon John Chapman, a partner in the IP, Technology and Media Group of Laytons, who has responsibility in the latter firm for this litigation. The Defendants rely upon a very short witness statement in reply from Mr Maat.
Before considering the facts in this case, I should say something about the threats legislation. Threats provisions were first introduced into the Patents Designs & Trade Marks Act 1883. This was in response to a perception that owners of patent rights were in the habit of threatening infringement proceedings against competitors without any bona fide intention of following them up with proceedings. The cost and complexity of patent infringement proceedings were thought to be so high that the issue of such threats might drive competitors from the market. For this reason, unscrupulous patentees with weak cases might be tempted to issue threats even when they had no intention to litigate. To overcome this, the 1883 Act made it actionable to threaten another with patent infringement proceedings. Under that legislation, the proprietor could avoid liability if he commenced and pursued patent infringement proceedings with due diligence; thus under that legislation, a patentee could still utter as blood curdling threats as he liked as long as he followed them through. The legislation was subsequently changed. It was no longer a defence to follow up the threats with proceedings. A threat was actionable even if the proprietor had every intention of commencing and pursuing the infringement proceedings and did so.
Over time, the threats provisions were extended to cover registered designs and, most recently, registered trade marks. Although there are minor differences between the statutory provisions in relation to different intellectual property rights, those differences are not argued to have any impact on the issues to be decided on these applications. For that reason, it is sufficient to set out the relevant provision in the Trade Marks Act 1994. Section 21:-
"21(1) Where a person threatens another with proceedings for infringement of a registered trade mark other than -
(a) the application of the mark to goods or their packaging,
(b) the importation of goods to which, or to the packaging of which, the mark has been applied, or
(c) the supply of services under the mark,
any person aggrieved may bring proceedings for relief under this section.
(2) The relief which may be applied for is any of the following -
(a) a declaration that the threats are unjustifiable,
(b) an injunction against the continuance of the threats,
(c) damages in respect of any loss he has sustained by the threats;
and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.
(3) If that is shown by the defendant, the plaintiff is nevertheless entitled to relief if he shows that the registration of the trade mark is invalid or liable be revoked in a relevant respect.
(4) The mere notification that a trade mark is registered, or that an application for registration has been made, does not constitute a threat of proceedings for the purposes of this section."
A considerable body of case law exists in relation to the threats legislation, particularly in the patent field. A number of points arise out of that jurisprudence which are relevant to these applications.
First, it is well established that threats need not be expressed openly or directly to be actionable. Wherever a statement is made, whether orally or in writing, to another which would convey to a reasonable recipient that proceedings for infringement will be commenced against a particular person, or will be unless certain conditions are met, it is treated as a threat. The only exception to this is the statutory exception contained, for example, in section 21(4) of the Trade Marks Act. In commerce, the receipt of a letter bringing the addressee's attention to the existence of an intellectual property right would be construed reasonably as a none too subtle indication that the right's owner is contemplating enforcing it against the recipient. Were it not for the statutory exception, such a notification would amount to an actionable threat in most cases.
The second point worth noting is that threats can be made directly or indirectly. There is no limitation that the person issuing the threat has to own or claim to own the intellectual property rights in question. In particular, it is now well established that where a professional, for example, a solicitor, patent agent or trade mark agent, writes a threatening letter on behalf of a client to a competitor, not only is the client liable for the actions of his agent, but the professional will be liable also.
The combined effect of these provisions is that it is risky for the owner of one of the relevant intellectual property rights or his legal adviser to communicate with a competitor in advance of litigation in a way that conveys that litigation is being contemplated. Once negotiations have commenced, the without prejudice privilege may protect the rights owner and his advisers (see: Unilever plc v The Proctor & Gamble Co [2000] FSR 344). But save in this respect, trying to bring home to a competitor in advance of litigation the seriousness of one's claims is likely to be construed as issuing threats. The result is that the safest way to proceed is to commence proceedings...
To continue reading
Request your trial
-
TNS Group Holdings Ltd v Nielsen Media Research Inc.
...the CPR.” 10 Counsel for the defendant also prayed in aid the judgment of Laddie J. in Reckitt Benkiser (UK) v. Home Pairfum Ltd [2004] EWHC 302 (Pat), [2004] F.S.R 37. In his judgment, Laddie J. referred to Broxton v. McClelland and Wallis v. Valentine. That case was, of course, prior to t......
-
David A. Penn v Registrar of Corporate Affairs
...costs in the sum of $500.00. Vicki Ann Ellis High Court Judge By the Court Registrar 1 Reckitt Benckiser (UK) Ltd v Home Pairfum Ltd [2004] EWHC 302 (Pat); Biguzzi v Rank Leisure Plc [1999] 4 ALL ER 934 2 [2001] 1 Ch 291 3 [1978] AC 297 4 [2017] EWHC 3206 (QB) 5 [2010] EWCA Civ 1170 6 S......
-
Devon and Cornwall Autistic Community Trust v The Cornwall Council
...[2001] EWCA Civ 1462; Miller v Cawley [2002] EWCA Civ 1100; Richards v Hughes [2004] EWCA Civ 266; Reckitt Benkiser v Home Pairfum [2004] EWHC 302 (Pat); Asiansky Television v Bayer-Rosin [2001] EWCA Civ 1792. 16 The propositions he put forward were as follows: • As a general rule summary d......
-
David A. Penn v Registrar of Corporate Affairs
...costs in the sum of $500.00. Vicki Ann Ellis High Court Judge By the Court Registrar 1 Reckitt Benckiser (UK) Ltd v Home Pairfum Ltd [2004] EWHC 302 (Pat); Biguzzi v Rank Leisure Plc [1999] 4 ALL ER 934 2 [2001] 1 Ch 291 3 [1978] AC 297 4 [2017] EWHC 3206 (QB) 5 [2010] EWCA Civ 1170 6 S......