[2023] EWHC 1480 (IPEC)

During the hearing, both parties provided sample bottles for examination. This had been agreed in advance between the parties and the samples were described at Tabs 42 and 43 of the Bundle for the hearing.

JBC produced one example of a bottle of 4fl oz Jamaican Black Castor Oil bearing its trade marks, supplied by it and accepted by it as authentic. It also produced one bottle of the alleged infringing product said to have been purchased from a store connected to the Defendants by an agent acting on behalf of JBC. Mr Muir Wood explained that these two bottles were the bottles (or the same as the bottles) used to prepare Annex 5 to the Particulars of Claim which sets out the differences identified by JBC between the genuine product and the alleged infringing product.

The Defendants produced seven bottles in assorted sizes and for various products as well as two magazines.

During the process of producing and inspecting these products, it was said that there was a misapprehension on the part of the Defendants, based on paragraphs 11 and 12 of the Particulars of Claim, as to the scope of JBC’s allegation of infringement.

Mr Muir Wood confirmed that infringement is alleged only in respect of the goods described as ‘infringing goods’ in Annex 5 to the Particulars of Claim (4fl oz bottles of Jamaican Black Castor Oil) and not any other goods that may have been purchased by its private investigator in March 2022. While it appears from paragraph 45 of the first witness statement given by Mr Mudahy that he understood the products in issue to be only the 4fl oz 118 ml Sunny Isle Jamaican Black Castor Oil product, it was useful to have this issue clarified, for the avoidance of doubt.

As the purpose of the hearing was an application for summary judgment or strike out, rather than a mini trial, Mr Muir Wood invited me to make a brief examination of the bottles produced by JBC. That examination confirmed that there were differences between the two bottles relating to, for example, the shape, neck length and cap. Ms McFarland did not suggest otherwise.