High Court: €35k and injunction granted in trademark dispute costing over €2m in legal fees

About this case:

• Judgment:
  External link

Granting the injunction sought, Mr Justice Michael Twomey concluded that there had an infringement of trade marks, as there was a likelihood of confusion on the part of the public between the registered trade mark and the alleged offending sign.

Background

The proceedings were instituted against Nualtra Ltd in May 2015, by Nutrimedical B.V. which was the owner at that time of the NUTRIPLEN trade mark. However, in June 2015, Nutrimedical assigned the NUTRIPLETE trade mark to Aymes International Ltd – therefore the case before Mr Justice Twomey was pursued primarily by Aymes.

Breach of European Trade Mark Regulation

The core issue in this case was whether there was a breach by Nualtra of Article 9 of Regulation 2015/2424 (the European Trade Mark Regulation). Aymes and Nutrimedical therefore asked the Court to grant an injunction to prohibiting Nualtra from using the mark NUTRIPLEN.

The alleged breach by Nualtra of Article 9 of the European Trade Mark Regulation was founded on the claim that there existed a likelihood of confusion on the part of the public between Nualtra’s NUTRIPLEN mark and the NUTRIPLETE trade mark, such that the rights of Aymes as the owner of the NUTRIPLETE trade mark are being infringed by Nualtra.

Having considered the two marks under the three headings of visual, aural and conceptual similarity, Justice Twomey concluded that the two marks were very similar visually, very similar aurally and that there was a limited conceptual similarity between them.

Furthermore, the Court noted that the marks covered identical goods in the form of oral nutrition supplements (ONS), which can only be purchased under medical supervision.

Considering Alcon v. OHIM ECR I-03569, ONS as products consumed under medical supervision, the relevant public for the purposes of determining whether there is a likelihood of confusion, is made up of, not only healthcare professionals who prescribe the product, but also the end-users.

In all the circumstances, Justice Twomey was satisfied that Aymes, as the owner of EU Trade Mark 10876381 (NUTRIPLETE), was entitled to the injunction sought, pursuant to Article 9 and Article 102 of the European Trade Mark Regulation, preventing Nualtra from using the mark NUTRIPLEN in the course of trade in dietetic food and substances adapted for medical use.

Reprehensible behaviour by Aymes

Justice Twomey’s judgment also considered the effect of the conduct by Aymes International Ltd, which was described by the High Court in earlier proceedings as ‘reprehensible’.

In July 2015 Aymes sent an anonymous ‘poison pen letter’ to 848 GPs in the UK about Nutriplen products and about Nualtra, in which it made false and defamatory allegations about Nualtra e.g. that: Nualtra did not have insurance, that it was not registered for data protection in the UK, that it only had an international telephone number on its products etc.

In addition, in November 2014 Aymes sent an email which purported to, but did not, emanate from the NHS, to NHS employees containing similar false and defamatory claims about Nualtra.

Aymes initially denied any involvement in the poison pen letter and the fake NHS email, until ‘it became pointless in denying the allegations, in light of the evidence which had been obtained by Nualtra’.

These actions were then the basis for a counterclaim by Nualtra for defamation and unlawful interference with its business and in which it sought damages, including aggravated damages, from the plaintiffs. This counterclaim was compromised by way of a lodgement made by the plaintiffs and accepted by Nualtra. As a result, Nualtra has received a settlement sum of €101,000 in respect of its claim for damages for the defamation, as well as the payment of its legal costs.

Equitable Remedies

Justice Twomey explained that at the end of the trial, Aymes sought to reserve their position as regards electing for an account of profits.

In finding that it would be more appropriate for the Court to award damages, rather than an account of profits, Justice Twomey set out the following reasons for exercising his discretion to refuse an account of profits:

As per Aldi Stores v. Dunnes Stores IEHC 256; a refusal by the High Court to grant an account of profits would not leave the plaintiffs without a remedy, since they would be entitled to damages.

As such, Justice Twomey granted damages of €35,000 to the plaintiffs for the trade mark infringement in this case.