Whether the defendants have no real prospect of successfully defending the claim
14.Although the Application Notice seeks summary judgment in respect of the entirety of the claim, the written submissions from the claimants’ counsel only presses the claim in relation the 042 Mark and the 317 Mark, the two SLIM SAUCES marks.15.The issue on infringement is whether the similarity between the SLIM SAUCES trade mark and the SLIM SAUCE sign is such that there is a risk that the average consumer might believe that the goods of KBF come from the same undertaking as the goods of the claimants or come from an undertaking economically linked to the claimants, see Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, at [31]-[32], discussed in Urbanbubble Ltd v Urban Evolution Property Management Ltd [2022] EWHC 134 (IPEC) at [53]-[54]. KBF’s sign “Slim Sauce” is almost identical to the SLIM SAUCES trade mark and is used in relation to goods identical to those in respect of which those trade marks are registered.16.Obviously the word “sauce” is entirely descriptive when used for sauces. The word “slim” is not descriptive of a sauce according to any usual use of either word. It may allude to low calorie content of the sauce. But I believe it to be unlikely that the defendants will be able to establish on the evidence that SLIM SAUCES has no distinctive quality at all such that it is incapable of serving as a badge of origin for sauces and that by extension there is no risk that the average consumer might believe that the goods of KBF come from the same undertaking as the goods of the claimants or come from an undertaking economically linked to the claimants17.One limb of the Counterclaim is the allegation of non-use. In response to the allegation raised against the other trade marks, the Defence to Counterclaim pleads instances of use of the contested trade marks with exhibits of orders from Holland & Barrett and spreadsheets demonstrating sales. On their face, these exhibits establish genuine use of the SLIM SAUCES trade marks within the relevant periods.18.There is no pleaded response to this evidence of genuine use. Mr Wood says this in his written submissions:“This Court will be aware that the test for genuine use is not simply whether the mark has been ‘used’, and whether it fulfils the legal tests to be classed as genuine use according to the fairly complex legal tests (including whether the scale and manner of use is warranted in the relevant sector) is a matter which cannot be resolved on the basis of the evidence presented to date;”19.That in my view is not enough. No positive reason is given to raise a doubt either that the claimants’ evidence is what it purports to be, or that the use of the trade mark apparently evidenced was genuine. It is not even suggested that the 317 Mark should be revoked for non-use.20.That leaves the allegation that the SLIM SAUCES trade marks lack distinctive character under s.3(1)(b) and/or are descriptive under s.3(1)(c) of the 1994 Act.21.The claimants take a pleading point. In paragraphs 10 to 12 of the Reply and Defence to Counterclaim they allege in relation to the SLIM SAUCES marks that “slim” in relation to food is not descriptive but aspirational – it invites the average consumer to see themselves as slim. They further allege that the use made of the SLIM SAUCES trade marks means that those marks have acquired distinctiveness. In counsel’s written submissions it is pointed out that no Reply to Defence to Counterclaim has been filed and argued that the foregoing allegations stand unchallenged. Failure to serve a Reply is not taken to admit matters raised in the Defence, see CPR 16.7(1). The allegations raised in paragraphs 10 to 12 of the Reply and Defence to Counterclaim remain in dispute.22.The principal issue raised under s.3(1)(b) and (c) of the 1994 Act is whether the SLIM SAUCES trade marks are devoid of any distinctive character. The claimants say that I can dismiss such a possibility without evidence. I certainly believe it to be unlikely that their case under either s.3(1)(b) or s.3(1)(c) will succeed. But I am not prepared to say without evidence that there is no real prospect of the defendants succeeding under either head of the Counterclaim. There is just enough doubt for me to believe the prospect is better than fanciful, though not by much.23.I am reluctant to do no more than let this claim go forward with the necessary expenditure of time and money it would impose on the claimants. The rules provide for the possibility of a conditional order, see Practice Direction 24, paragraph 5. However, I do not believe that I should make a conditional order without hearing further from the parties.24.I invite the parties’ representatives to make short submissions in writing within 7 days of this judgment as to whether a conditional order would be appropriate, if so the nature of the conditions and any relevant circumstances they may wish to draw to my attention. Each side should also provide a draft order.