Wirex Ltd v Cryptocarbon Global Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 16 May 2022 |
| Neutral Citation | [2022] EWHC 1161 (IPEC) |
| Docket Number | Case No: IP-2019-000188 |
| Year | 2022 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 1161 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2019-000188
Brown Rudnick LLP for the Claimant
The Third Defendant acting in person and acting for the Fifth Defendant
Judgment on the papers
Approved Judgment
This judgment was handed down remotely by circulation to the parties' representatives by email and release to The National Archives Transfer Digital Records. The date and time for hand-down is deemed to be 10.30 a.m. on Monday 16th May 2022 .
HIS HONOUR JUDGE Hacon
Introduction
This is a judgment made on the papers in respect of three applications, one by the Claimant (“Wirex”) and the other two by the Third and Fifth Defendants (“Mr Manuel” and “Techbank” respectively).
Background
On 16 March 2021 I handed down judgment on liability in these proceedings. I found that the First to Fourth Defendants had infringed Wirex's registered trade mark CRYPTOBACK and that the Mr Manuel was jointly liable for the infringing acts of the First and Second Defendants.
Wirex elected for an inquiry as to damages and served its Points of Claim on 14 July 2021. Damages are sought by reference to a notional royalty for the use of its trade mark, including an annual usage fee, plus a sum for moral damage said to have been suffered.
There was a case management conference in the inquiry on 12 October 2021. I found that the Defendants had acted unreasonably in failing to serve Points of Defence in due time, thereby causing an adjournment of the CMC. I dismissed an application by the Defendants to stay the inquiry and pursuant to CPR 63.26(2) ordered the Defendants to pay Wirex's costs of the application, summarily assessed in the sum of £3000.
There was a further hearing on 8 December 2021 at which directions in the inquiry were given. The Defendants had failed to pay the £3000 ordered at the previous hearing and I also made an order that unless that sum plus interest was paid by 4pm on 22 December 2021, the Points of Defence in the inquiry would be struck out and the Defendants would not be permitted to serve evidence in the inquiry.
Mr Manuel applied to the Court of Appeal to appeal the order of 8 December 2021. As it turned out, the order made was overtaken by events.
By an order dated 17 January 2022 I gave permission to join Techbank as the Fifth Defendant. I found that Mr Manuel's conduct in seeking to avoid the joinder of Techbank had been an abuse of the court process. Pursuant to CPR 45.30(2)(a), I ordered that the Defendants pay Wirex's costs of the application without the costs caps which usually apply in this court, summarily assessed in the sum of £30,000.
In February Mr Manuel and Techbank applied to the Court of Appeal for permission to appeal the order of 17 January 2022.
The costs ordered on 17 January 2022 were not paid. There was a further application on 17 February 2022. This is paragraph 1 of the order made on that date (“the January Order” meant the order of 17 January 2022; “the February 2022 Appeal” meant the application to the Court of Appeal for permission to appeal that order):
“Unless the Defendants on or before 24 February 2022 pay the costs as ordered in paragraph 8 of the January Order, the Defendants' Defences in the Damages Inquiry shall without further order be struck out and Judgment be entered in favour of the Claimant PROVIDED THAT this Order shall not come into force until after the final resolution of the February 2022 Appeal.”
The costs in the sum of £30,000 ordered on 17 January 2022 were not paid by the deadline stated.
On 12 April 2022 the Court of Appeal dismissed the application for permission to appeal both the order of 8 December 2021 and the order of 17 January 2021.
The Applications
Wirex now applies by an Application Notice dated 25 April 2022 for payment of the sums claimed in its Points of Claim, together with interest and costs.
Mr Manuel and Techbank filed an Application Notice dated 18 April 2022 seeking (i) permission to appeal to the Supreme Court under s.13.2(c) of the Administration of Justice Act 1960 and (ii) a stay of the inquiry until (a) judgment is given by the Supreme Court and (b) IPO proceedings are finalised.
Mr Manuel and Techbank also filed an Application Notice dated 29 April 2022 seeking (i) an order that a Part 36 offer made by Wirex is enforced under CPR 36.14(8)(b) and (ii) relief from the sanction for breach of the unless order of 17 February 2022 pursuant to CPR 3.9.
Claimant's Application Notice dated 25 April 2022
Since the defendants were in breach of the unless order of 17 February 2022 (and that of 8 December 2021) Wirex is entitled to have its claim for damages assessed on the unchallenged assertions contained in its Points of Claim.
The first head of claim is the loss of an upfront fee of £50,000 per year from April 2018 to April 2021, a total loss of £200,000. The second head is the loss of £2 per retailer or UK account holder registered to the defendants' cryptocurrency rewards scheme, to which Wirex says it would have been entitled, a total of £36,766. These figures are surprisingly high. But I have no basis on which to modify them since they flow from unchallenged assertions.
The third head of claim is for £20,000 by way of damage in the form of moral prejudice. It is supported by paragraphs 47 to 52 in the Points of Claim, in particular paragraph 50:
“50. The Claimant has suffered moral prejudice as a consequence of the Defendants' acts of infringement, in particular for the following reasons:
a. For the reasons set out above, the infringements were carried out in circumstances where the Defendant knew, or had reasonable grounds for knowing, that their acts infringed the Claimant's rights in the Mark. This includes the First to Fourth Defendants' initial agreement to cease use of the Mark following the Claimant's letter before action and then starting again after a few months.
b. The Defendants continued use following judgment.
c. The Defendants' use was during what it knew to be during the Claimant's initial launch and growth phase of its own business under the Mark.
d. In a letter dated 11 December 2018 (sent around the time the Defendants decided to re-commence use of the Mark) the Defendants' solicitors stated that the Claimant's case in passing off is ‘doomed to fail’, rejected the Claimant's claims for joint liability in respect of Mr Manuel...
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