Thom Browne Inc & Anor v Adidas AG & Ors
[2024] EWHC 257 (Ch)
Schneider Electric IT Corporation v Northamber PLC
15 October 2024
[2024] EWHC 2552 (Ch)
High Court
A company is suing another for selling its products without permission. The judge decided the company selling the products has to prove it had permission, unless it's really hard for them to do so due to the complicated supply chain. The case will be split into two parts: one to decide if there was wrongdoing, and the other to decide the punishment. The judge also said they need more information before deciding exactly which products to focus on, and a few defenses were put off until later.
Key Facts
- •Trade mark infringement proceedings between Schneider Electric IT Corporation (Claimant) and Northamber PLC (Defendant), concerning 'parallel imports' and 'exhaustion of rights'.
- •Defendant purchased allegedly unauthorized APC UPS Products from a third party.
- •Claimant alleges Defendant traded in products bearing Claimant's trademarks intended for sale outside the EEA/UK without consent.
- •Claimant listed 23 specific infringing products as examples.
- •Defendant pleads section 12 of the Trade Marks Act 1994 as a defence (exhaustion of rights), limitation, and contributory negligence.
Legal Principles
Modern principles governing extended disclosure (PD 57AD).
Practice Direction 57AD, UTB LLC v Sheffield United Limited [2019] EWHC 914 (Ch), McParland & Partners Limited v Whitehead [2020] EWHC 298 (Ch)
Elements of a trade mark infringement claim (sections 10(1) and 10(2) of the Trade Marks Act 1994).
Trade Marks Act 1994
Exhaustion of rights defence under section 12 of the Trade Marks Act 1994.
Trade Marks Act 1994
Burden of proof in exhaustion cases: generally on the defendant to prove consent (Zino Davidoff and Levi Strauss), but may shift to claimant in specific circumstances (Van Doren, Hewlett Packard).
Zino Davidoff and Levi Strauss [2002] Ch 109 (CJEU), Van Doren (C-244/00, CJEU), Hewlett Packard v Senetic (C-367/21, CJEU)
Contributory negligence and failure to mitigate as defences in trade mark infringement.
Law Reform (Contributory Negligence) Act 1945
Outcomes
Burden of proof generally on the defendant, but the court may shift it to the claimant in specific circumstances.
Based on case law, considering the risk of market partitioning and difficulties for defendants in tracing supply chains.
A split trial on liability and quantum is appropriate.
To ensure the dispute is dealt with fairly, quickly and efficiently; addresses the complexity of the case.
Trial is not limited to the 23 specific products initially listed; further disclosure is necessary to determine appropriate sampling.
Evidence suggests defendant dealt with more products; limiting the trial to those initially listed would likely lead to satellite litigation.
Contributory negligence and failure to mitigate issues deferred to the quantum trial.
Premature to determine at this stage; addressed in the context of liability.
Specific disclosure requests modified: some granted, some rejected or deferred.
Based on reasonableness, proportionality, and relevance to the key issues in dispute.
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