[2023] EWHC 1821 (IPEC)

The Claimant company designs, manufactures and sells high visibility products which help promote the safety of horses and their riders, especially when on the road. In around February 2015 it started selling a high visibility jacket under the mark “Mercury” and then expanded its use of that mark to a variety of other high visibility goods. In June 2019, it registered MERCURY as a UK trade mark for goods in Classes 9, 18 and 25.

In late 2018 or early 2019, the First Defendant (“Battle”), which is a wholesaler of equestrian goods, started selling a range of products (a mobile phone holder, a gilet and a jacket, and then a horse’s bridle set, tail band and leg band) under the label “HyVIZ Silva Mercury Reflective” (the “HVSMR” label). There were also some uses of the name Silva Mercury, for example on the reverse side of some of the product packaging and in the Hy-Equestrian 2019 sales brochure. The goods were advertised in Battle’s catalogues and online, on two websites: www.battles.co.uk (the Battles website) and www.hy-equestrian.com (the Hy-equestrian website). I was told that the Battles website was the trading site, through which orders could be placed, and that at all material times, the Hy-equestrian website was non-trading, although goods were displayed upon it, and it was used (essentially) as an advertising show-case.

As soon as she became aware of these uses, Ms Nicola Fletcher, the Claimant's sole director, wrote to Battle to complain. In about September 2019, Battle undertook a voluntary rebranding process, aiming to reduce and then cease use of the Mercury name. Nevertheless, some infringing use continued, and the Claimant issued these proceedings against Battle and its director, Mr Dewey, on 30 October 2019, claiming trade mark infringement and passing off.

The case was transferred to the IPEC. The trial of liability was heard before Deputy Judge Nicholas Caddick KC, and in December 2021 Battle was found liable for both infringement and passing off. The claim against Mr Dewey as a joint tortfeasor was dismissed.

On 8 December 2021, an Order was made by the learned Deputy Judge granting an injunction against Battle and providing for there to be an enquiry as to damages or, at the Claimant's option, an account of profits. The Order required the provision of trade and financial information by Battle, which was filed in the form of the 4th witness statement of Mr Dewey, dated 28 January 2022. By a letter dated 11 February 2022, the Claimant elected for an account of profits. Points of Claim were filed on the 29 April 2022 and Points of Defence on 4 July 2022. A CMC was held on 9 November 2022, identifying a List of Issues for the account (annexed below). References in this judgment to infringement or infringing use relate (unless otherwise stated) both to trade mark infringements and to acts of passing off, and the sums awarded by this account relate to both trade mark infringement and passing off.

At the trial of liability, both parties were represented by counsel, and the Claimant's Points of Claim for the account were settled by the same counsel. However, between filing the Points of Claim and the hearing of the CMC on 9 November 2022, the Claimant appears to have parted company with its legal advisers, so that at the hearing of the CMC and the hearing of the trial of the account before me, the Claimant was represented by its director, Ms Fletcher. Battle was represented throughout by Sam Carter of counsel.