Red Bull GmbH v Big Horn UK Ltd

JurisdictionEngland & Wales
CourtChancery Division
JudgeMaster Clark
Judgment Date12 November 2018
Neutral Citation[2018] EWHC 2794 (Ch)
Date12 November 2018
Docket NumberCase No: IL-2018-000022

[2018] EWHC 2794 (Ch)

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES

INTELLECTUAL PROPERTY (ChD)

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

Master Clark

Case No: IL-2018-000022

Between:
Red Bull GmbH
Claimant
and
(1) Big Horn UK Limited
(2) Voltino Eood
(3) Lyubomir Enchev
Defendants

Jacqueline Reid (instructed by Taylor Wessing LLP) for the Claimant

No attendance by the Second Defendant

The Third Defendant in person, and on behalf of The First Defendant

Hearing date: 14 September 2018

Master Clark

Applications

1

This is my judgment on two applications by the claimant, Red Bull GmbH:

(1) its application dated 8 June 2018 (“the first application”) seeking:

(i) to strike out and/or summary judgment in respect of the Defences dated 7 and 8 March 2018 of the first and third defendants;

(ii) judgment in default against the second defendant;

(2) its application dated 10 August 2018 (“the second application”) seeking to strike out and/or summary judgment in respect of the Defences dated 18 and 30 July 2018 of all 3 defendants.

Parties and the claim

2

The claimant is the manufacturer and distributor of the well known “energy drink”, Red Bull. It is the proprietor of several trade marks including the following (“the claimant's marks”):

I refer to these as the Double Bull, Blue and Silver Parallelogram, and Single Bull.

Trade Mark No.

UK/IR/EU

Mark

Goods

3629342

EU

Class 32: Non-alcoholic beverages including energy drinks.

52746

EU

Class 32: Non-alcoholic drinks.

1564301

EU

Class 32: Non-alcoholic drinks, in particular refreshment drinks, energy drinks.

3

The first defendant, Big Horn UK Limited (“D1”) carries on the business of importing into and selling in the UK energy drinks bearing the name “Big Horn”. Photographs of these products (“Ds' products”) are included in the particulars of claim:

4

The second defendant, Voltino Eood (“D2”) is a Bulgarian corporate entity described as a “single-member limited-liability company” in its certificate of registration. D2 admits that it distributes Ds' products in Bulgaria; and the claimant alleges that it distributes them in the rest of the European Union.

5

D2 is also the owner (with effect from 23 August 2016) of an EU trade mark application in respect of a mark (“D2's mark”), the figurative part of which is identical to one of the signs of which complaint is made in this claim:

The registration of this mark was unsuccessfully opposed by the claimant, who is now appealing to the EUIPO Board of Appeal. I will return to the grounds on which the opposition was rejected.

6

The third defendant, Lyubomir Enchev (“D3”), a Bulgarian citizen, is a director and sole shareholder of D1. He is also the owner of the domain name, bighornenergy.co.uk, on which Ds' products are advertised.

7

The claim is for infringement of the claimants' marks contrary to Articles 9(2)(b) (similar marks, identical goods) and 9(2)(c) (similar marks, use taking unfair advantage without due cause of the claimant's marks) of European Union Trade Marks Regulation ( Council regulation (EC) No. 2017/1001) (“the Regulation”). There is no passing off claim.

8

The defendants have acted in person throughout the claim apart from a short period (from about early July to the beginning of August 2018), when they were represented by a firm of solicitors, Briffa.

9

At the hearing, D3 appeared in person and had a very limited command of English. With my permission, he was assisted by a person who acted as his interpreter. I also permitted him to represent D1.

10

D3 was also assisted by a McKenzie friend, Dr Neli Karatsanova-Rhodes, who is a Doctor of Laws, qualified in Bulgaria, where she practises as a Bulgarian advocate; she is in the process of obtaining rights to practise as a barrister in England and Wales. I also permitted Dr Karatsanova-Rhodes to address the court on his behalf. In the course of the hearing, it became apparent that Dr Karatsanova-Rhodes was far from fluent in English; she appeared to have no knowledge of English procedural law, and some of her submissions seemed to be based on Bulgarian procedural law. The practical effect of this is that D1 and D3 were significantly disadvantaged in opposing the applications.

11

In dealing with the applications, I have in mind, therefore, that I must ensure that the parties are on an equal footing, whilst also ensuring compliance with rules, practice directions and orders: CPR 1.1.

12

D2 did not appear at the hearing and D3 confirmed to me that he did not seek to represent D2.

Factual and procedural background

13

As noted above, on 23 August 2016, D2 applied to the EUIPO for registration of its mark. This was opposed by the claimant on 7 November 2016 (opposition no. B 2798315) under Arts 8(1)(b) and 8(5) of the Regulation. It relied on 3 trade marks: 2 Austrian national marks, one UK mark and one international mark, all effectively identical figurative marks (which I refer to collectively as “the opposing mark”):

14

On 6 February 2018 the claim was issued in the Shorter Trials Scheme. On 9 February 2018 the claim form and particulars of claim (and Response Pack, including the Defence form N9D) were served on D1 and D3.

15

On 23 February 2018 D3 filed acknowledgments of service of D1 and D3, stating an intention to defend the claim.

16

On 2 March 2018, unknown to the claimant, D2 changed its registered office address from 94 Georgi Sava Rakovski, Entrance “B”, 7 th Floor, ap. 54, 6000 Star Zagora, Bulgaria (“D2's old address”) to 6058, Petrovo Village municipality of Stara Zagora, Bulgaria (“D2's new address”).

17

On 13 March 2018 D3 filed form N9D containing a statement of truth signed by D3 “in personal and as a director of [D1]”. This relevant document was not included in the bundle (although it was referred to in counsel's skeleton argument, and following provision of the draft judgment, the claimant's solicitors informed me that copies had been brought to court). It expressly refers to and incorporates a document entitled “Defence” also dated 7 March 2018, which was also signed by D3 “signing for [D1] and as a principal/director/ of [D3]” (an obvious error in confusing which defendant was first and which was third). This document did not itself contain a statement of truth. However, in my judgment, this was unnecessary since it was verified by the statement of truth in the form N9D. I refer to these documents collectively as “the D1/3 Defence”. 3 documents were annexed to it:

(1) A certificate of registration of D2 as the owner of a registered community design for a can similar to that depicted in para 3 above (on the far left);

( 2) D2's submissions in response to the claimant's opposition to the registration of its mark;

(3) the judgment of the General Court in joined cases T-101/15 and T102/15 Red Bull GmbH v EUIPO.

None of these were included in the hearing bundle.

18

On 3 April 2018 the claimant's solicitors wrote to D1 and D3 making various criticisms of the D1/D3 Defence. In apparent response, on 11 April 2018 D3 filed and served 2 separate documents also entitled “Defence”, identical in substance to each other and to the previously filed document of that title. One was signed by D3 on behalf of D1; one was signed by D3 personally. Both were dated 8 March 2018. As filed, both were accompanied by a Form N9D in which the statement of truth had been re-signed (this was also not in the bundle). I refer to these as “the re-signed D1/D3 Defences”.

19

On 16 April 2018, the claim form and particulars of claim were delivered to D2's old address. Since this was no longer its registered office address, this was not valid service. The fact that it was D2's address as at the date of issue of the claim form does not (contrary to the claimant's solicitors' position in correspondence) validate it as an address for service when, by the date of service, it was no longer its address.

20

On 25 May 2018, the opposition division of the EUIPO rejected the claimant's opposition to the registration of D2's mark.

21

On 8 June 2018, the claimant issued the first application.

22

On 19 July 2018, Briffa filed and sent to the claimant's solicitors by email (but did not serve) a document entitled “Defence” of all 3 defendants (“the Briffa Defence”). This document contained a statement of truth appropriate for a witness statement. It included a denial that D2 had been validly served. Briffa did not, however, file Notice of Change stating that they were acting for the defendants.

23

Briffa appear to have accepted that the claimant's solicitors' criticisms of the D1/3 Defence meant that no valid Defence had been filed by D1 and D3; and therefore that they were seeking to file a valid Defence for the first time – they did not seek permission to amend on behalf of D1 and D3. So far as D2 was concerned, this was the first occasion on which it had responded to the proceedings; albeit that its defence included the denial that it had been validly served.

24

On 30 July 2018 Briffa issued an application notice on behalf of the defendants seeking a stay of claim pending the outcome of the claimant's appeal in the EUIPO proceedings. On the same date, Briffa sent by email to the claimant's solicitors (but did not file or serve) a revised version of the draft amended Defence, identical in substance to it, but now with an appropriate statement of truth (“the re-verified Briffa Defence”). Again, they invited the claimant's solicitors to accept that this document was a valid Defence.

25

On 2 August 2018 Briffa filed Notice of Change for all 3 defendants stating that the firm had ceased to act for them.

26

On 3 August 2018, the claimant applied for an order in respect of service on D2. The evidence in support, the 2 nd witness statement dated 3...

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