Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co, Ltd & Ors
[2023] EWHC 411 (IPEC)
Wise Payments Limited v With Wise Limited & Ors
9 February 2024
[2024] EWHC 234 (IPEC)
High Court
A company sued another for using its name. The sued company wanted to sue the first company's founders and lawyer. The judge let them sue the founders because they might have been involved in the name change, but not the lawyer, as there wasn't enough proof he did anything wrong beyond his job.
Key Facts
- •Wise Payments Limited (Claimant) sued With Wise Limited (First Defendant) for trademark infringement and passing off.
- •The First Defendant counterclaimed for passing off, alleging the Claimant's rebranding to 'Wise' was infringing.
- •The First Defendant applied to add four new parties to the counterclaim: Wise plc, Kristo Käärmann, Taavet Hinrikus, and Dean Nash.
- •Wise plc was joined by consent. The Claimant opposed adding the other three.
- •The application concerned whether adding these individuals was justified under CPR 20.5 and CPR 17.1(2)(b), considering IPEC's cost-benefit test and the prospect of success at trial.
Legal Principles
Adding a party under CPR 20.5 requires an exercise of discretion, mirroring the approach under CPR 19.2(2).
CPR 20.5, CPR 19.2(2)
The test for adding a party is analogous to the tests under CPR 3.4(2)(a), (b) (applications to strike out) and CPR 24(2)(a) (applications for summary judgment). The case must have a real, not fanciful, prospect of success; the pleading must be coherent, properly particularised, and supported by sufficient evidential material.
CPR 3.4(2)(a), (b); CPR 24(2)(a); *Kawasaki Kisen Kaisha Ltd v James Kemball Limited* [2021] EWCA Civ 33
Amendments to statements of case are generally allowed to adjudicate the real dispute, but prejudice can be compensated for in costs. In IPEC, the likely benefit of the amendment must justify its cost.
*Temple Island v New English Teas* [2011] EWPCC 19; *Vimage v Data Candy* [2022] EWHC 606 (IPEC)
To establish accessory liability in tort, the defendant must have acted to further the commission of the tort by the claimant, in pursuance of a common design.
*Fish & Fish Ltd v Sea Shepherd UK* [2015] UKSC 10
A director, officer, or shareholder may be a joint tortfeasor, but personal involvement in the tort is required; merely carrying out a constitutional role is insufficient.
*Lifestyle Equities CV v Ahmed* [2021] EWCA Civ 675; *MCA Records Inc v Charly Records Ltd* [2001] EWCA Civ 1441
Outcomes
Application to add Mr. Käärmann and Mr. Hinrikus as counterclaim defendants granted.
No substantive argument against their inclusion; the court can manage the increased complexity within IPEC's three-day trial limit.
Application to add Mr. Nash as a counterclaim defendant dismissed.
Insufficient evidence to establish a real prospect of success against Mr. Nash for joint tortfeasorship; the evidence showed only facilitation, not a common design or personal involvement. Also, adding Mr. Nash would significantly increase costs and complexity, outweighing the benefit.
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