Rxworks Ltd v Hunter (Dr Paul)
| Jurisdiction | England & Wales |
| Judgment Date | 20 December 2007 |
| Neutral Citation | [2007] EWHC 3061 (Ch) |
| Docket Number | Case No:HC07C01250 |
| Court | Chancery Division |
| Date | 20 December 2007 |
[2007] EWHC 3061 (Ch)
Mr Daniel Alexander O.c. Sitting as a Deputy High Court Judge
Case No:HC07C01250
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand. London. WC2A 2LL
HTML VERSION OF JUDGMENT
Hearing date: 30th November 2007
DANIEL ALEXANDER QC:
INTRODUCTION AND BACKGROUND
Outline
The issue at the heart of this dispute is whether the presence and appearance of the term “vet.local” in certain aspects of the Claimant's computer systems infringes the Defendant's registered trade mark No. 2397695 VET.LOCAL registered in classes 9, 16, 41 and 42, inter alia, for computer software, hardware and firmware.
The Claimant (“RxWorks”) seeks to have that issue resolved by means of an application for summary judgment on its claim for unjustified threats of trade mark infringement. That is a vehicle for attempting to obtain a judgment that the use in question is non-infringing and to stop any further allegations by the Defendant (“Dr Hunter”) that the use infringes. As Mr Hicks put it in his skeleton argument for Dr Turner, the real question on this application is whether the counterclaim for infringement has real prospects of success. It is common ground that if RxWorks is to succeed, the court must be satisfied that the case for infringement has no real prospects of success. I consider below briefly how that issue should be approached under CPR 24.2 in the context of a case of this kind.
More specifically, the central issue on this application is whether the uses alleged by Dr Hunter to infringe are arguably infringing, under sections 10(1) and 10(2)(a) of the Trade Marks Act 1994. RxWorks contends that it is possible for the court to determine summarily that they are not (as was done, for example, in Trebor Bassett v. Football Association [1997] FSR 211, Rattee J) and that relief giving effect to that determination should be granted at this stage. Dr Hunter contends that the uses are infringing or are at least arguably infringing and that, if not held to infringe, there is a need for further factual investigation at a full trial. The issue therefore resolves into two key aspects. First, what the requirements of the law are and what factual determination needs to be made, given those requirements and, secondly, whether the court is in as good a position to make that determination, as the trial judge would be and, if so, what the result of doing so is.
Evidence
There is evidence on this application as follows:
Evidence for RxWorks
(a) Two statements from Mr Philip Scanlan, a director and CEO of RxWorks. These statements explain the background to the dispute and outline the uses in question, setting out the reasons for them. There is some history to this case in that an earlier dispute over other matters was resolved by a confidential Settlement Agreement. None of the aspects of earlier dispute are alleged to be relevant to the issues on this application.
Evidence for Dr Hunter
(b) (i) Statements from Mr John Hirst, a computer consultant from Cybis instructed by Dr Hunter. His first statement exhibits an expert report, based on examination of the RxWorks system explaining the uses in issue and, in particular, how users and administrators of the RxWorks system may come across them. The systems in question are specialist computer systems involving both hardware and software for the administration of veterinary practices. His second statement comments on certain screenshots exhibited to Mr Scanlan's second statement and how users (administrative and non-adminstrative) of the system may encounter the term “vet. local”.
(ii) A comparatively brief statement from Dr Hunter commenting on certain aspects of Mr Scanlan's statement in so far as relevant.
For the purpose of this application, RxWorks accepts that the evidence served on behalf of Dr Hunter must be taken to be correct or arguably correct. That said, I was unable to detect any area of significant factual dispute as to the nature of the uses in question (which are described in more detail below and are shown in Annexes 1 to 4 of this judgment, which contain redactions of no relevance), the nature of the users of the system or the circumstances in which users of the system may come across the uses of “vet.local”.
Communications giving rise to the claim
RxWorks relies, for its threats claim, on two written communications from Dr Hunter. The first is an e-mail, dated 2 nd March 2006, from Dr Hunter to Greg Robinson of RxWorks, entitled “Illegal Use of Registered Trade Mark” in its subject line, which said:
“Dear Greg
It has come to my attention that you are illegally using and continue to use a registered trade mark of ours in your supplied computer systems.
This trade mark is the word mark vet.local and the trade mark registration number is: 2397695.
Please immediately cease and desist from using our trade mark in all new systems you currently have in production and any future system and remove any reference to the trade mark from any existing systems.
You have until Friday 10 March 2006 before we take further action.
I reserve the right to draw this email to the attention of the courts as to costs.
Sincerely,”
The second is an e-mail, dated 19 th February 2007, from Dr Hunter to Mr Mark Picton of the Avenue Veterinary Centre, a customer or potential customer for RxWorks' specialist systems for veterinary practices. That e-mail refers to the earlier e-mail of 2 nd March 2006. The relevant parts, so far as the claim for unjustified threats is concerned, are as follows (emphasis in original).
“Misuse of Our Trade Marks
We have a registered Trade Mark, which we are aware that RxWorks may allegedly be using in systems they are selling or have been selling since [REDACTION] October 2005 [REDACTION]. This is contrary to our wishes and the Trade Marks Act and we are currently investigating how widespread this usage is and the damages that flow from it. The trade mark in question is VET.LOCAL (Word Mark).
I would draw to your attention to the fact that any system you may be purchasing from RxWorks may reference our Trade Mark VET.LOCAL illegally and that we will take action against anyone using our Trade Mark VET.LOCAL or any other trade mark without our express prior written permission which for the complete avoidance of doubt—we do not give.
Mark, as I have expressly brought this matter to your attention, it is clearly important that you ensure that you will not be illegally using our trade marks in any new computer system you are purchasing from RxWorks. The trade mark VET.LOCAL we believe is being used in RxWorks Fileservers. You should insist on an administrative inspection of your new fileserver to ensure that the words VET.LOCAL to [sic] not appear in the system, any file within the system, including the Windows Registry or user hive.
Furthermore, RxWorks should provide you with a written statement to the fact that none of our Trade Marks are being used in any part of any system they sell or in fact the one that they are supplying you. I would ask you for a copy of that written statement please that will show your due diligence.
Again, for the complete avoidance of doubt, we will pursue anyone legally to prevent the illegal and unauthorized use of any of our trade marks and we will do this in a most public manner. Clearly we do not wish to be at odds with our clients past or present but we will continue to vigorously defend our property from any company attempting to misuse it whether for commercial profit, passing off or for any other reason.
Thank you for your assistance in this matter Mark and I look forward to hearing from you with a copy of the written statement from RxWorks.”
That e-mail prompted a letter from RxWorks' solicitors, Field Seymour Parkes, to Mr Picton, dated 4 th April 2007, which, so far as material, said as follows:
“”vet.local” Trade Mark
We note that Dr Hunter has alleged that our client has infringed the trade mark “vet.local”.
Our client vehemently denies that it has infringed the “vet.local” mark or that any system that it has supplied or might in future supply infringes that mark
This does not, however, amount to a representation and you may wish to obtain your own advice to confirm the position.”
The letter went on to deal with an issue of confidentiality concerning the Settlement Agreement, which is not of relevance to the present application. Mr Picton responded on 11 th April 2007, thanking Field Seymour Parkes for their letter which he there treated as “confirming that RxWorks do not use the trade mark “vet.local”.”
Procedural history
These proceedings in respect of unjustified threats and related relief were issued on 11 th May 2007, i.e. after Dr Hunter's e-mail to Mr Picton. They were met by a counterclaim from Dr Hunter for infringement of trade mark under section 10(1) and 10(2) of the Act. This application was launched and directions were made by Nicholas Strauss QC including provision for inspection, under certain conditions, by Dr Hunter's independent expert of a computer loaded with RxWorks' system as it was being shipped and installed at RxWorks' veterinary practice customers premises at or around 2 nd March 2006. The purpose of that inspection was to identify fully the uses in question.
The inspection went ahead, with a minor dispute which was resolved, following discussion, as to precisely what Mr Hirst was entitled to see. Mr Hirst says in his report that RxWorks was not as helpful as he believes they should have been at the inspection. However, from that report and the annexes to it, it is, in my judgment clear, that sufficient access was provided to...
To continue reading
Request your trial