Background
2.The First Claimant is an Italian partnership which deals in charm bracelets. These have been successfully sold in many countries, including the United Kingdom. The Second Claimant is a related Italian limited company which markets the bracelets. I will call the Claimants ‘Nomination’ where referred to collectively. 3.The First Claimant owns the following registered trade marks: (1)EU Trade Mark No. EU000456822, registered in class 14 as of 27 January 1997, being the word NOMINATION,(2)International Trade Mark No. WE00000769289, granted protection in the EU on 14 April 2010, also the word NOMINATION. (3)International Trade Mark No. WE00001069273, granted protection in the EU on 26 January 2012, a device mark in this form:
4.The EU Trade Mark is registered in class 14 in respect of ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.’ 5.The other two marks have broader registrations, in each case including the foregoing goods in class 14. I will refer to all three marks as ‘the Trade Marks’. 6.The Second Claimant is the exclusive licensee under the Trade Marks. 7.One of Nomination’s products is a ‘composable bracelet’. It consists of individual links, measuring about 10 x 9mm, which may be detached from each other and relinked in any order to the taste of the wearer. These include what were called ‘base links’, which are made of stainless steel and bear the NOMINATION device mark. Nomination also sell a wide variety of decorated links and links with charms attached, all of which may be added to the bracelet. Some of the decorated and charm links are made of precious stones, set in 18k or 9k gold or silver, and are priced accordingly. Others are less expensive. According to JSC Nomination’s links can cost as little as £10. 8.This is one of Nomination’s advertisements, showing the bracelets:
9.The First and Second Defendants are husband and wife. In December 2002 they started trading as a partnership under the name ‘JSC Jewellery’ selling body and costume jewellery online. I will call both Defendants and their business ‘JSC’. From 2004 JSC began to sell composable charm bracelets (not made by Nomination) under their trading name ‘Daisy Charm’ and under a logo. The logo was registered as a UK trade mark as of 8 October 2010 for all goods in class 14. 10.In January 2011 JSC’s listing on eBay was amended to state that JSC’s product ‘fits Nomination’. This reflected the fact that the links of JSC’s bracelets were interchangeable with those of Nomination’s bracelets; a JSC link can be fitted to a Nomination link using a similar click mechanism – or vice versa – to create a mixed bracelet. JSC sold its products as ‘Italian charms’ promoting them by reference to the Daisy Charm logo. In February 2013, due to a change of policy at eBay, JSC stopped stating ‘fits Nomination’ on its site and did not otherwise indicate compatibility with Nomination bracelets. 11.Shortly afterwards JSC started to buy Nomination ‘base bracelets’ from retailers of Nomination’s products in Germany and Italy. Base bracelets are composed of 13 or 18 base links (no decorated or charm links). The bracelets were disassembled by JSC into individual links. Between April 2013 and July 2018 JSC sold single Nomination base links bundled together with a single JSC link. The bundles either consisted of two blister packs, one for each of the Nomination and JSC links, or alternatively the JSC link was supplied in a blister pack and the Nomination base link was in a small plastic bag bearing a label ‘Manufactured by Nomination Italy Repackaged by JSC Jewellery UK’. 12.From 2015 some of the Nomination base links supplied by JSC were sourced from a UK retailer and others from an Italian retailer, in each case purchased as single links from disassembled Nomination bracelets. 13.The bundles of two links were advertised and sold by JSC on eBay. 14.JSC stopped selling these bundled links in July 2018. However, in response to the allegation in the Particulars of Claim that JSC threatens and intends to continue such sales, JSC’s Defence goes no further than a non-admission. I infer that JSC has taken the reasonable view that if their sales of bundled links are found to be lawful they will be recommenced. 15.Nomination alleges that JSC’s advertising and sales of the bundled base links infringed the Trade Marks. Nomination also alleges that such sales passed the bundles off as being goods made by, or authorised by, or otherwise associated with Nomination. 16.Chris Pearson appeared for Nomination, Ali Reza Sinai for JSC.