Brand Interchange

Category: English Courts

  • Crystal Clear or Just Smoke? The Vape Wars

    Crystal Clear or Just Smoke? The Vape Wars

    Case Name: Bargain Busting Ltd v Shenzhen SKE Technology Co Ltd & Ors

    Citation: [2025] EWHC 1239 (Ch)

    Court: High Court of Justice, Chancery Division, Intellectual Property List

    Judge: Mr Justice Miles

    Judgment: Here

    Trade Marks:

    Summary

    In Bargain Busting Ltd v Shenzhen SKE Technology Co Ltd & Ors, Miles J has granted an interim injunction preventing Bargain Busting from making threats against third parties for trade mark infringement. It serves as a cautionary tale to rights holders when making allegations.

    Background

    Bargain Busting owns several trade marks involving the word “CRYSTAL”. SKE is a Chinese manufacturer of e-cigarettes and vaping devices, marketed under the brand “CRYSTAL BAR”. Bargain Busting initiated multiple proceedings against SKE and others for trade mark infringement. SKE denies infringement and counterclaims that the trade marks are invalid.

    The claim was commenced in September 2024. During the course of proceedings, in December 2024, Bargain Busting sent letters to eleven distributors and retailers of SKE’s products, alleging infringement and demanding undertakings to cease sales. SKE argued these letters were actionable threats (sometimes referred to as groundless or unjustified threats) and sought an interim injunction to prevent further such threats.

    The law

    The law of actionable threats was developed to address the practice whereby rights holders made spurious threats of proceedings against retailers as a result of them selling allegedly infringing products. Typically, rather than defend the threat, the retailer would withdraw the allegedly infringing product from the shelves, in the knowledge that it could stock an alternative (non-infringing) product. This would cause the supplier of the allegedly infringing product to suffer loss, without any recourse against the rights holder making the spurious allegations.

    As a result, legislation was introduced (for trade marks, currently section 21 of the Trade Marks Act 1994) which entitles an ‘aggrieved party’ (for example, the supplier of the allegedly infringing product) to bring a claim for actionable threats, seeking an injunction preventing such threats and recovery of its loss.

    To obtain an interim injunction, the applicant must show that there is a serious issue to be tried and that the balance of convenience favours the applicant. Typically, this is a high threshold to meet with the courts favouring the status quo unless it can be shown that the applicant is likely to suffer irreparable harm. If an interim injunction is to be granted, the applicant must provide a cross-undertaking to address any loss which the respondent suffers as a result of the interim injunction being incorrectly granted.

    In this instance, Bargain Busting also asserted that Art. 10 of Schedule 1 (freedom of expression) of the Human Rights Act 1998 was engaged and raised objections under section 12 of the Human Rights Act 1998, which states that “[n]o such relief is to be granted so as to restrain publication before trial unless the court is satisfied that the applicant is likely to establish that publication should not be allowed”.

    Decision

    Considering the issues, Miles J concluded as follows:

    • Bargain Busting’s letter constituted a threat of proceedings.

    • SKE was an aggrieved party.

    • SKE raised serious issues to be tried regarding the validity of Bargain Busting’s trade marks.

    • SKE would not be adequately compensated in damages. In particular, Miles J reasoned that any damages would be difficult to quantify:

    “I am also satisfied that if further threats were to lead to threatened parties to cease taking goods from SKE damages would be difficult to assess. While SKE would have information about its levels of sales to distributors or retailers, it would not readily be able to determine whether a falling off of sales through particular channels was the result of threats or of other market conditions. Other suppliers may gain market share through ordinary competition. The evidence shows that the vape market is very large and highly competitive. Unless customers who had been threatened by [Bargain Busting] told SKE why they had decided to cease or reduce their purchasers from SKE, it would find it hard to establish their claim for damages. Still more basically, SKE might not even learn that [Bargain Busting] had threatened particular customers with infringement proceedings. For these reasons it is likely to struggle to find evidence of the link between threats and losses.”

    • Further, he noted that any damages could be substantial (SKE’s turnover in the UK had grown from $40.8m in 2022 to $405.6m in 2024). Bargain Busting, however, did not advance any evidence of its ability to pay damages.

    • In turn, Bargain Busting could be adequately compensated by a cross-undertaking from SKE. In particular, the only potential loss which Bargain Busting was able to identify was a potential liability for costs for bringing infringement proceedings against parties without having been able to write a letter before claim in accordance with the pre-action protocol. SKE offered to pay £100,000 in to court, which would be adequate.

    • The court accepted that Bargain Busting’s freedom of expression was engaged but found the interference minimal and proportionate. Bargain Busting could still make permitted communications and bring actual proceedings.

    Comment

    Actionable threats is a powerful (but often overlooked) tool. This is demonstrated in the case at hand. However, it has a wider role to play in relation to online takedowns. In particular, it has become increasingly common for rights holders to enforce their rights through online platforms (such as eBay and Amazon) using routes provided by the Digital Millennium Copyright Act (DCMA) or equivalent. Here, the allegations will often be questionable, but the recipient does not have adequate recourse via the online platform to redress this. A claim for actionable threats may be the answer.

  • Momofuku: A Noodle Bar Drama

    Momofuku: A Noodle Bar Drama

    Case Name: Nissin Foods Holdings Co., Limited v MomoIP LLC

    Citation: [2025] EWHC 561 (Ch)

    Judge: Iain Purvis KC, sitting as a Deputy Judge of the Chancery Division

    Decision: Here

    Trade Marks

    Nissin Foods Trade MarksMomo IP’s Trade Marks
    NoPriority / Filing DateCNoPriority / Filing DateC
    ITM 141809126 Oct. 201729, 30UKTM 906646558 (‘558)6 Feb. 200843
    UKTM 80141809126 Oct. 201729, 30UKTM 357544506 Jan. 202143
    UKTM 378100025 April 202229, 30ITM 162417122 Sept. 202143

    Summary

    In an appeal from the Hearing Officer to the High Court, Mr Purvis KC (sitting as a Deputy Judge) has held that MomoIP’s UK trade mark ‘558 for MOMOFUKU was not put to genuine use, providing useful guidance on the application of the law of genuine use in the United Kingdom.

    Background

    Nissin Foods is a food company founded by Momofuku Ando in 1948 in Osaka, Japan, known for the development of the world’s first instant noodles chicken ramen.

    MomoIP is the holding company for the MOMOFUKU culinary brand, which was established by chef David Chang in 2004 in New York, USA. Mr Chang’s steamed bao and ‘meaty’ tasting vegetarian chickpea hozon ramen were the cuisine du jour in the 2010s. Bar a pop-up in Shoreditch, it does not have any UK restaurants.

    Nissin Foods and MomoIP registered (and applied for) trade marks in the United Kingdom for MOMOFUKU in classes 29 and 30 and class 43 respectively. Nissin Foods subsequently brought three actions challenging the validity of some of MomoIP’s trade marks and MomoIP in turn brought three actions challenging the validity of some of Nissin Foods’ trade marks and applications.

    On appeal only one issue remained, namely whether MomoIP’s trade UKTM ‘558 (the original registration of the six subject to the proceedings) had been put to genuine use within the United Kingdom during the relevant period. 

    Law

    In easyGroup Ltd v Nuclei Ltd & Ors [2023] EWCA Civ 1247, Arnold LJ summarised the law relating to genuine use:

    106.  … the principles may be summarised as follows:

    (1)  Genuine use means actual use of the trade mark by the proprietor or by a third party with authority to use the mark…

    (2)  The use must be more than merely token, that is to say, serving solely to preserve the rights conferred by the registration of the mark …

    (3)  The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end user by enabling him to distinguish the goods or services from others which have another origin …

    (4)  Use of the mark must relate to goods or services which are already marketed or which are about to be marketed and for which preparations to secure customers are under way, particularly in the form of advertising campaigns … Internal use by the proprietor does not suffice … Nor does the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter … But use by a non-profit making association can constitute genuine use …

    (5)  The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, that is to say, use in accordance with the commercial raison d’être of the mark, which is to create or preserve an outlet for the goods or services that bear the mark…

    (6)  All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including: (a) whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods and services in question; (b) the nature of the goods or services; (c) the characteristics of the market concerned; (d) the scale and frequency of use of the mark; (e) whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them; (f) the evidence that the proprietor is able to provide; and (g) the territorial extent of the use …

    (7)  Use of the mark need not always be quantitatively significant for it to be deemed genuine. Even minimal use may qualify as genuine use if it is deemed to be justified in the economic sector concerned for the purpose of creating or preserving market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor. Thus there is no de minimis rule …

    (8)  It is not the case that every proven commercial use of the mark may automatically be deemed to constitute genuine use …

    Hearing Officer’s Decision

    The Hearing Officer concluded that UKTM ‘558 had been put to genuine use. In doing so she relied on the following during the relevant period (21 April 2017 to 20 April 2022) to support her decision:

    • Cookbook Sales: She noted that over 2,600 copies of the MOMOFUKU cookbook had been sold via Amazon.co.uk, although this was later found to be incorrect as it referred to reviews, not sales.
    • Website Traffic: MomoIP’s US website received traffic from the UK, with varying numbers of visits over the years.
    • Pop-Up Events: MomoIP ran a 2-day MOMOFUKU pop-up restaurant in Shoreditch, London, which was sold out and served 96 customers.
    • Promotional Activities: MomoIP partnered with Nike to create a special edition trainer, although there was no evidence of sales in the UK.
    • Customer Base: The UK was the 4th largest customer base for MOMOFUKU’s restaurants in the USA, with many UK-based followers on Instagram and customers on its email distribution list 2021.

    Appeal

    Mr Purvis KC, found that the Hearing Officer’s decision was vitiated by a series of errors of fact and illogical assertions not justified by the evidence before her. He reasoned as follows:

    • The Hearing Officer misunderstood the evidence relating to the Amazon listing of the MOMOFUKU cookbook, suggesting that thousands of copies had been sold when there was no such evidence.
    • The Hearing Officer took into account three pop-up events when in fact there was only one relevant event in Shoreditch, with little or no evidence of promotion of the New York restaurant.
    • The evidence of the Nike trainers should never have been relied on, as it established effectively nothing.
    • The Hearing Officer’s attempt to link these promotional activities to the reputation of the MOMOFUKU restaurants amongst UK consumers was illogical and not justified by the evidence.

    The judge therefore concluded that the appeal succeeded and ‘558 had not been put to genuine use.

  • The “Anxious Pedant” and Trade Marks

    The “Anxious Pedant” and Trade Marks

    Case Name: Babek International Ltd v Iceland Foods Ltd

    Court: Intellectual Property Enterprise Court

    Citation: [2025] EWHC 547 (IPEC)

    Judge: His Honour Judge Hacon

    Judgment: Here

    Trade Marks: UKTM 907527963

    Summary

    In Babek International v. Iceland, HHJ Hacon has provided a useful analysis of the law on clarity and precision for trade mark filings, applying Sieckmann, Libertel and Cadbury. It is essential reading for all those filing trade marks and managing trade mark portfolios.

    Trade Mark

    Mark description/limitation: “Gold oval with embossed BABEK writing. Colour Claimed: Gold, black.”

    Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

    Background

    In March 2024, Babek International commenced proceedings against Iceland before the Intellectual Property Enterprise Court for trade mark infringement. Iceland accepted that it used an identical sign for identical goods, but asserted that it had the consent of the former proprietor or was under licence by a third party. It also counterclaimed that the trade mark was invalid.

    Application

    Iceland sought summary judgment on its counterclaim for invalidity, arguing that the registration did not satisfy the requirements of s. 1(1) and 3(1) of the Trade Marks Act 1994. In particular, it asserted that Babek International’s trade mark was ambiguous and lacked clarity and precision because of, among others, the following:

    • While the trade mark was described as a figurative mark, the description included the word ‘embossed’ which suggested that the sign to be protected was a 3D sign, so that the visual representation was just one image of the sign.
    • While the trade mark showed an ellipse, the written description indicated that the trade mark could be in any oval form.
    • The claim to the colours gold and black were not specific as to hue and many hues of gold were shown in the visual representation but black did not appear.
    • The visual representation included colours other than gold and black, namely white, yellow, orange, beige and brown.

    Decision

    HHJ Hacon provided a useful summary of the case law, concluding that the trade mark was validly registered and stating that Iceland’s arguments “assumed [a] degree of pedantry on the part of the competent authorities and the public which, if required in law, would make the trade mark system unworkable”. He reasoned:

    • There was nothing inconsistent between the trade mark’s description/limitation and the visual representation. The reader was told that it was a figurative mark and therefore a 2D mark, not a 3D mark. Accordingly, the visual representation could be and would have been understood to show a 2D mark with 3D visual effects. He saw no reason to suppose that the competent authorities and the public should be taken to consist of “anxious pedants”.
    • The complaint that the visual representation showed an ellipse, not an oval as stated in the written description, was “fairly high grade pedantry”.
    • In the instance of any colour per se mark, use of one or more pantone numbers or other means to specify hues is likely to be important. For other types of mark which feature one or more colours, it may or may not be. He gave the example of trade mark registrations for Coca-Cola and Tesco which claimed “the colours red, silver, white and yellow as an element of the mark’ and “the colours red and blue as an element of the mark” respectively, without specifying the pantone numbers. Citing J. Sainsbury’s PLC v Fromageries Bel SA [2019] EWHC 34354 he noted that “[t]he point about [the examples above] is that the precise hue is unlikely to play a significant role in making the mark capable of distinguishing. The hues could vary without affecting the mark’s capacity to distinguish”. He reasoned that the observation could equally be said to apply to Babek International’s trade mark.
    • As to Iceland’s final point was that there were colours in the visual representation which are not strictly either gold or black, he acknowledged this was true, but that to his eye the impression delivered by the visual representation is of a trade mark coloured gold with shading and the shading was an approximation of black.
  • English Cases (03.03.25 – 07.03.25)

    English Cases (03.03.25 – 07.03.25)

    A list of cases issued before the English intellectual property courts for w/c 3 March 2025:

    CourtCase NumberClaimantDefendant
    Intellectual Property CourtIL-2025-000047Soho Home LimitedNext Retail Limited
  • J&J Snack Foods v. Ralph Peters & Sons

    J&J Snack Foods v. Ralph Peters & Sons

    Court: High Court of Justice, Business & Property Courts, Intellectual Property List

    Judge: Mr Justice Fancourt

    Judgment: Here

    Trade Mark: [SLUSH PUPPIE]

    Issue: Trade Mark Infringement

    Summary

    A Slush Puppie has long been a favourite for many generations of children on a hot summer’s day. The use of the brand, however, has descended into a trade mark and passing off dispute between J&J Snack Foods and Ralph Peters & Sons, culminating in a worldwide freezing order being granted in relation to up to £10 million of the latter’s assets.

    That order has now been discharged, with the court concluding that J&J Snack Foods had not given fair presentation when obtaining the order. The judgment is a useful reminder of the heavy burden on applicants when applying for such relief. Meanwhile, the litigation continues.

    Background

    Parallel proceedings have been ongoing in Ohio, USA since 2019. Around October 2024, J&J Snack Foods commenced proceedings before the English Courts. The claim is unusual in that Ralph Peters & Sons is not alleged to be a primary tortfeasor, but a joint tortfeasor with one of its group companies (unnamed in the litigation), Frozen Brothers.

    The commencement of proceedings was followed by a without notice application on 3 December 2024 for, among other things, a worldwide freezing order. This was directed to £10 million of Ralph Peters & Sons’ assets and £10 million of its director and majority shareholder’s assets, including two of his homes. This was granted shortly before Christmas, with the return date listed after Christmas.

    On 17 January 2025, Ralph Peters & Sons sought an order discharging, among other things, the freezing order. It argued that the partner at the law firm responsible for J&J Snack Foods’ application had failed to give full and frank disclosure (sometimes referred to as fair presentation).

    Full and frank disclosure

    The burden on applicants for full and frank disclosure in applications for freezing orders was summarised in Uconinvest LLC v Jysan Holding LLC [2024] EWHC 1532 (Ch) as follows:

    “Applications for without notice freezing orders, whether domestic or worldwide, are now a routine part of the business of the Chancery Division and the Commercial Court. It is easy therefore to regard them as “normal”, but any hearing where only one side of the case is heard should be regarded as exceptional. Further, freezing orders that are broad in their reach are capable of having very serious consequences for a respondent. The price of obtaining such relief without notice to the respondent is a heavy responsibility to ensure that the matter is fairly presented to the court, not slanted or partial, and that the points that the respondent would wish to make were they present, so far as able to be anticipated, are fairly put before the court for consideration. That is particularly so when serious allegations are made against the absent parties.”

    Reasoning

    The judge concluded that the freezing order should be discharged. His reasons included, among others, as follows:

    • Failure of full and frank disclosure: J&J Snack Foods had failed to disclose several key points during the without notice hearing:
      • It did not explain why it was appropriate for the applications to be made without any notice to the Ralph Peters & Sons;
      • It failed to distinguish between the ‘Phase 1’ (the use of SLUSH PUPPIE) and ‘Phase 2’ (the use of SLUSHY JACK) claims, particularly the weakness of the ‘Phase 2’ claim and its impact on the quantum of the claim;
      • It did not provide solid evidence of a serious risk of Ralph Peters & Sons dissipating assets or making itself judgment-proof;
      • It did not address the relevance of the passing of time from 2020 to December 2024 in relation to the risk of dissipation and the need for a without notice hearing;
      • It did not explain the argument that gross profits made by Frozen Brothers was not the proper basis for the quantum of a claim against Ralph Peters & Sons
    • Lack of real risk of Ralph Peters & Sons making itself judgment-proof: The Judge was not convinced that there was a real risk of the Ralph Peters & Sons taking steps to make itself judgment-proof. J&J Snack Foods did not provide sufficient evidence to justify this risk, especially considering the long-standing litigation in Ohio and Germany without any evidence of Ralph Peters & Sons taking such steps. The dishonesty alleged against Mr Peters did not lie at the heart of J&J Snack Foods’ claim and did not of itself give rise to a strong inference of a risk of dissipation of assets.
  • English Cases (24.02.25 – 28.02.25)

    English Cases (24.02.25 – 28.02.25)

    A list of cases issued before the English intellectual property courts for w/c 24 February 2025:

    CourtCase NoClaimantDefendant
    Intellectual PropertyIL-2025-000043Phonographic Performance LtdHackney Heart Ltd
    Intellectual PropertyIL-2025-000044Phonographic Performance LtdMaloneys Gym Ltd
    Intellectual Property Enterprise CourtIP-2025-000017ITC LTdKrishna Asian Food Market Ltd
    Intellectual Property Enterprise CourtIP-2025-000018ITC LtdSCP Management Ltd
    Intellectual Property Enterprise CourtIP-2025-000019ITC LtdSabar Foods Ltd
    Intellectual Property Enterprise CourtIP-2025-000020National Tube Straightening Service LtdBrisko Scaffolding Ltd
    Intellectual Property Enterprise CourtIP-2025-000022Advance Magazine Publishers IncCornucopia Entertainment Ltd