Thom Browne Inc & Anor v Adidas AG & Ors
[2024] EWHC 257 (Ch)
JBC Distributors Inc & Anor v Peter Mudahy trading as Pak Cosmetic Centre & Anor
23 June 2023
[2023] EWHC 1480 (IPEC)
High Court
Two companies fought over fake products. A judge said there's enough doubt to need a full trial, not a quick decision. Some of the counterclaims were thrown out because they weren't properly explained.
Key Facts
- •JBC Distributors Inc. and JBC Distributors UK Limited (JBC) sued Peter Mudahy and Tanvir Hussain (Defendants) for trademark infringement and passing off.
- •JBC manufactures and distributes products made from Jamaican black castor oil under the 'SUNNY ISLE' trademark.
- •Defendants allegedly sold counterfeit 'SUNNY ISLE' products.
- •Defendants argued the products were genuine, purchased from JBC or authorized suppliers, and that differences stemmed from JBC's varying packaging.
- •Defendants counterclaimed for unjustified threats and compensation for unsold stock.
Legal Principles
CPR 3.4(2)(a): Striking out a statement of case that discloses no reasonable grounds for bringing or defending a claim.
CPR 3.4(2)(a)
CPR 24.2: Summary judgment against a party with no real prospects of succeeding.
CPR 24.2
The court must consider whether the claimant has a “realistic” as opposed to a “fanciful” prospect of success; a realistic claim is one that carries some degree of conviction, more than merely arguable; the court must not conduct a “mini-trial”.
EasyAir Ltd. v Opal Telecom Ltd. [2009] EWHC 339 (Ch) at [15], approved by AC Ward & Son Ltd. v Catlin (Five) Ltd & Ors. [2009] EWCA (Civ) 1098
A statement of case is not suitable for striking out if it raises a serious live issue of fact which can only be properly determined by hearing oral evidence.
Bridgeman v McAlpine-Brown, 19 January 2000, unrep., CA
Outcomes
JBC's application for summary judgment and/or striking out the defence was dismissed.
The court found the Defendants' defence carried a degree of conviction and that resolving the factual dispute required a fuller investigation at trial, including further evidence from both sides.
JBC's application to strike out the counterclaim for unjustified threats was dismissed.
The basis and nature of the counterclaim were sufficiently clear, despite sparse particularisation.
JBC's application to strike out the remaining counterclaims (loss of profit on stock and returned Sainsbury's stock) was granted.
These counterclaims lacked particularisation and a legal basis.
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