Appeal court deprecates “act of deliberate concealment” by party

Trade mark: Defendants tried to take advantage of process of civil justice itself

Civil litigation should be conducted “with cards on the table – face up” and the courts should not “sanction an act of deliberate concealment” by one of the parties, appeal judges have ruled.

Lord Justice Birss said the defendant had “attempted to take advantage of the process of civil justice itself” by delaying an application to amend a defence and denying the claimant the benefit of the three-month revocation window under the Trade Marks Act 1994.

“Parties are required to spell out their case to their opponents not least because opposing parties are entitled to know what case they have to meet.

“The system permits parties to amend their statements of case, which is for the benefit of all parties, always subject to the overriding objective of enabling the court to deal with cases justly.”

Under section 46 of the Act, registered trade marks that have not been used for five years or more are subject to revocation applications. The Act provides for a three-month window for applications after the five-year period ends.

Birss LJ said ABP Technology, the claimant, was a UK company selling computer game accessories and the owner of trademarks for STEALTH and STEALTH VR, both relating to headsets.

The defendants, Voyetra, were a US-based global gaming accessory manufacturer and its UK distributor. ABP brought a trade mark infringement claim against Voyetra in November 2020.

The judge said a “major plank” of Voyetra’s defence, filed in February 2021, was “a plea of honest concurrent use”.

ABP applied for summary judgment the following month but, before it was resolved, Voyetra gave notice that it intended to amend its defence and introduce a counterclaim in July 2021.

Unbeknown to ABP, Voyetra had obtained an exclusive licence to use an earlier registered trade mark for the word STEALTH in June 2021, which had not been used for more than five years.

The amendment to Voyetra’s case included a counterclaim that ABP had infringed this trademark.

Mr Justice Miles dismissed ABP’s application for summary judgment in November last year and gave permission for Voyetra to amend its defence and counterclaim on the basis of the older trade mark.

Birss LJ said ABP argued that the trial judge had failed to apply the principle that an amendment was late if it could have been made earlier and did not “examine any explanation” for the delay.

ABP argued that the amendments “could and should have been made” when it still had the ability to apply for revocation of the earlier trade mark for non-use.

Birss LJ said Voyetra “did not produce any evidence to explain the lateness of the amendments” and the trial judge did not seem to question it, “on the basis I think that the tactic employed by Voyetra was not prohibited by the Trade Marks Act”.

However, the fact that Voyetra’s conduct “can be taken to be legitimate” under the Act did not absolve it, as a litigant in civil proceedings, from addressing the timing of the step taken in the litigation.

It was “no excuse” that the defendants accepted in counsel’s submissions that “their objective in not telling ABP Tech about the amendment until they did, was to avoid tipping off ABP Tech to bring a revocation action”. The absence of a justification ought to have been “fatal” to their application.

“In this case Voyetra have attempted to take advantage of the process of civil justice itself.

“To permit this application to amend, both the defence and to add the counterclaim, would be to sanction an act of deliberate concealment by the party seeking to be permitted to amend.”

Birss LJ concluded that Miles J was wrong to permit the amendments and allowed ABP’s appeal. Lady Justice Nicola Davies and Lord Justice Coulson agreed.

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