“the English court has no jurisdiction to try the claims brought against each of the Defendants, alternatively [it] should not exercise any jurisdiction which it may have.”
“Wolf is essentially an animal that represents intelligence, self-control, courage and teamwork…the 1st Defendant’s working team and I chose the Wolfoo character, who is close to nature and is easily associated with Scout’s qualities such as courage, strength and solidarity, intelligence, curiosity, inquisitiveness and nature exploration.”
“On the basis that service is defective and the Defendants do not target the UK market, I submit that English courts do not have (or otherwise should not exercise) the jurisdiction over the First, Second, Third and Fourth Defendants.”
“The Claim was duly served by email upon the two named individuals on24 January 2022 …The Claim Form and Particulars of Claim were attached to the service email along with a Response Pack. The Annexes to the Particulars of Claim were attached to the service email. Those annexes contained certain links to a Google Drive cloud storage site at which downloads of videos of the Defendants’ publicly available YouTube videos could be found, along with links to the videos on YouTube. EP Legal confirmed receipt 2 days later. The videos were put on the cloud to be in one, readily accessible, place for those involved in the litigation, and to ensure that everyone concerned was working on the same material.”
“Indeed, in many years of practising IP litigation, I do not recall many (if any) instances where firms serving documents by email have made any reference to the specific practice direction. Typically, a sensible approach is taken whereby confirmation that email service is (or is not) acceptable is given and, where it is acceptable, the usual requirement is that specific email addresses and/or fee earners must be included. That is particularly the case given that firms (from my experience) use standard email servers, email programmes and almost exclusively documents which are in a standard format i.e. PDF, Word etc”
“We confirm that EP Legal Ltd acts for Sconnect Limited (Vietnam); Sconnect Media LLC; SCNMedia Ltd. We confirm that we are instructed to accept service of any proceedings on behalf of above-mentioned clients.”
“I refer to the above matter and to your letter of the24 January 2022 . Following the links set up in the Schedule 4, we have an issue accessing the Cloud Storage. The system requires the following: - “Additional permissions required to list objects in this bucket. Ask a bucket owner to grant you ‘storage.objects.list’ permission”
“The email account Tony.nguyen@eplegal.uk should now have access to the Cloud Drive. Please confirm. We understand from our clients that the email account zhanna.akkurt@eplegal.uk will need to create a Google account before access can be granted.”
“burden of dealing with documents you sent via links and the complete unfair position in accepting service in this manner, we have been instructed by our client that they request the services (sic) of the claim to be made directly to them.”
“no longer instructed to deal with the documents sent by you at 19:04 hrs dated24 January 2022 until further instruction by our Clients.”
“On27 January 2021 via email, we received the following documents from the Claimants’ solicitors … (the total size of the email and its attachments are 14 MB)…in your email of27 January 2021 , it also states that “the documents referred to in the Initial Disclosure List can be accessed here.”
“fax or other means of electronic communication in accordance withPractice Direction 6A ”
“4.1 Subject to the provisions of rule 6.23(5) and (6), where a document is to be served by fax or other electronic means— (1) the party who is to be served or the solicitor acting for that party must previously have indicated in writing to the party serving— (a) that the party to be served or the solicitor is willing to accept service by fax or other electronic means; and (b) the…e-mail address…to which it must be sent… 4.2 Where a party intends to serve a document by electronic means (other than by fax) that party must first ask the party who is to be served whether there are any limitations to the recipient’s agreement to accept service by such means (for example, the format in which documents are to be sent and the maximum size of attachments that may be received).”
“Indeed, the longer that these points were the subject of submissions, the more convinced I became that all of these myriad issues are precisely why the Rules Committee themselves have, very clearly, set out exactly what is required for service of proceedings upon solicitors; and for service by electronic means. If the requirements of the relevant parts ofCPR Part 6 , and thePractice Direction 6A , had been followed, there would have been no difficulty”
“The question is whether emailing the claim form to Mr Sheikh, but not to the new proceedings email address, constituted good service”
“Counsel informed me that they had not found any authorities that had considered the requirements ofPD 6A para 4 in this regard. The terms ofPD 6A para 4.1 refer to “email address” in the singular. Ms Clement accepted that the singular can be read as including the plural where the context so admits, but she submitted that it did not do so here. She pointed out that the authorities I have cited earlier emphasise the importance of clarity and certainty in respect of service; whereas permitting a party to require that for electronic service to be valid the communication had to be sent to more than one, and potentially several, email addresses would be a recipe for confusion. I accept the force of this point. Service of the Claim Form under the rules is generally a single event. Accordingly, I agree thatPD6A para 4.1 contemplates that the party who agrees to accept electronic service will provide one fax number, email address or other electronic identification at which they may be served. Plainly the situation would become absurd if parties could submit multiple email addresses to which documents were to be sent before good service had been effected.”
“In my judgement the consequence of the other party failing to provide a single email address (or fax number or other electronic identification) is not to give rise to a right to elect between two or more addresses that have been provided, as Ms Clement suggests. The purpose ofPD 6A para 4.1 is not to mandate a form of service (by fax or other electronic means), rather it is to provide an option of effecting service in this way if the stipulated information is provided. Where the other party gives more than one email address for service, para 4.1 has not been complied with, in that the stipulated information has not been properly provided. In these circumstances the serving party cannot, as matters stand, undertake good service by electronic means. They have two options: either they can serve the Claim Form by one of the prescribed means inCPR Part 6 or they can ask the other party to clarify which is the one email address that they may use to effect service, so that para 4.1 is then satisfied. No clarification of that kind was sought in this case.”
“given current Government restrictions regarding office working, in respect of court documents that may be served, we confirm that we will accept service of documents via email…”
“We confirm that we will accept service of proceedings…we confirm that we will accept service of documents on behalf of our clients via email to the following email addresses.”
“”practice directions” means directions as to the practice and procedure of any court within the scope of Civil Procedure Rules.”
“In matters of statutory construction, the statutory purpose and the general scheme by which it is to be put into effect are of central importance…In this area, as in the area of contractual construction, ‘the notion of words having a natural meaning’ is not always very helpful (Charter Reinsurance Co Ltd v Fagan[1997] AC 313 , 391C, per Lord Hoffmann) and certainly not as a starting point, before identifying the legislative purpose.”
“When looking at the detailed rules under all of the different procedures, the reader should consider whether, and in what way, they are designed to assist the parties and the court in achieving the aims set out above. By focusing on the “end” they are trying to achieve, this will help to provide a universal approach to understanding them.”
“in the drafting of statutes is that Parliament casts its commands in imperative form without expressly spelling out the consequences of a failure to comply. It has been the source of a great deal of litigation. In the course of the last 130 years a distinction evolved between mandatory and directory requirements. The view was taken that where the requirement is mandatory, a failure to comply with it invalidates the act in question. Where it is merely directory, a failure to comply does not invalidate what follows. There were refinements. For example, a distinction was made between two types of directory requirements, namely (1) requirements of a purely regulatory character where a failure to comply would never invalidate the act, and (2) requirements where a failure to comply would not invalidate an act provided that there was substantial compliance.”
“The third particular purpose behind the specific provisions in paragraph 4 ofPractice Direction 6A regulating service by e-mail, namely to ensure that recipients or their solicitors have the opportunity to put in place administrative arrangements for monitoring and dealing with what was then a new mode of service before being exposed to its consequences. Paragraph 4.1(2)(b) permits service by e-mail on the recipient's solicitors once they advertise their readiness on their headed paper. Paragraph 4.2 requires a prior inquiry of the intended recipient whether there are any relevant technical constraints. Now that issue and filing is required to be carried out online, by legally represented parties in the Business and Property Courts in London…it may be questioned for how long these constraints upon service upon solicitors by e-mail will continue to serve a useful purpose, but any relaxation of them is of course a matter for the Civil Procedure Rule Committee.”
“In the interests of proportionality, these Particulars of Claim only refer to a sample of 91 Wolfoo episodes selected from the seven English-language Wolfoo channels and to the Peppa Pig works from which they have been copied. All such Wolfoo episodes are listed in Schedule 4, where the sampling process is explained.”
“Targeting is the criterion which the law has adopted for determining whether a foreign website which is accessible from the state in which the trade mark is protected should be treated as using a sign in the course of trade in relation to goods or services in that state”
“The internet is global. Users in the UK and the EU can, in the absence of geo-restriction, access websites hosted, and content posted on such websites, from anywhere in the world. Intellectual property rights, however, are territorial. At least in the case of copyright (and similar rights) and trade marks, the CJEU has held that mere accessibility of a website from a Member State of the EU is not sufficient to give rise to an infringement of rights conferred by the law of that State or of the EU, and that the relevant act must be "directed" or "targeted" at that State or at the EU: seeCase C-324/09 L'Oréal SA v eBay International AG[2011] ECR I-6011 (trade marks), Case 5-/11 Donner [EU:C:2012:370] (copyright) andCase C-173/11 Football Dataco Ltd v Sportradar GmbH [EU:C:2012:642] (database right).”
“The law has twice been reviewed by this Court in the trade mark context: Merck KGaA v Merck Sharp & Dohme Corp[2017] EWCA Civ 1834 , [2018] ETMR 10 and Argos Ltd v Argos Systems Inc[2018] EWCA Civ 2211 , [2019] Bus LR 1728. In Merck v Merck Kitchin LJ, with whom Patten and Floyd LJJ agreed, summarised the relevant principles by reference to an advertisement of goods as follows”
“First, in determining whether an advertisement of goods bearing a trade mark on the website of a foreign trader constitutes use of the trade mark in the UK, it is necessary to assess whether the advertisement is targeted at consumers in the UK and in that way constitutes use of the mark in relation to goods in the course of trade in the UK. Secondly, the mere fact that a website is accessible from the UK is not a sufficient basis for concluding that an advertisement displayed there is targeted at consumers in the UK. Thirdly, the issue of targeting is to be considered objectively from the perspective of average consumers in the UK. The question is whether those average consumers would consider that the advertisement is targeted at them. Conversely, however, evidence that a trader does in fact intend to target consumers in the UK may be relevant in assessing whether its advertisement has that effect. Fourthly, the court must carry out an evaluation of all the relevant circumstances. These may include any clear expressions of an intention to solicit custom in the UK by, for example, in the case of a website promoting trade-marked products, including the UK in a list or map of the geographic areas to which the trader is willing to dispatch its products. But a finding that an advertisement is directed at consumers in the UK does not depend upon there being any such clear evidence. The court may decide that an advertisement is directed at the UK in light of some of the non-exhaustive list of matters referred to by the Court of Justice in Pammer at paragraph [93]. Obviously the appearance and content of the website will be of particular significance, including whether it is possible to buy goods or services from it. However, the relevant circumstances may extend beyond the website itself and include, for example, the nature and size of the trader's business, the characteristics of the goods or services in issue and the number of visits made to the website by consumers in the UK.”
“The following matters, the list of which is not exhaustive, are capable of constituting evidence from which it may be concluded that the trader's activity is directed to the Member State of the consumer's domicile, namely the international nature of the activity, mention of itineraries from other Member States for going to the place where the trader is established, use of a language or a currency other than the language or currency generally used in the Member State in which the trader is established with the possibility of making and confirming the reservation in that other language, mention of telephone numbers with an international code, outlay of expenditure on an internet referencing service in order to facilitate access to the trader's site or that of its intermediary by consumers domiciled in other Member States, use of a top-level domain name other than that of the Member State in which the trader is established, and mention of an international clientele composed of customers domiciled in various Member States. It is for the national courts to ascertain whether such evidence exists.”
“…I agree that if, viewed objectively from the perspective of the average consumer, a foreign trader’s internet activity istargeted at consumers in the UK, the fact that, viewedsubjectively, the trader did not intend this result will not prevent the impugned use from occurring in the UK. But that is not to say that the actual intention of the website operator is irrelevant. If the foreign trader does intend to target its internet activity at consumers in the UK then it seems to me that this is a matter which the court may properly take into account. After all, a trader may be expected to have some understanding of the market it intends to penetrate and it may not be difficult to infer that this intention has been or is likely to be effective…”
“The issue is whether there is “use” of the sign in the relevant jurisdiction. In making that assessment, it is important not to be distracted by the label of “targeting””
“images of the UK landscape and attractions are very famous and spread all over the world. And Wolfoo's videos are not the only one using such themes. Britain also promotes its image of these places all over the world. Children's books with pictures of the London bridge are easy to find in [different sources].
“the protection of the Claimants’ UK goodwill can only realistically be accomplished within the UK. The same applies to the Claimants’ UK copyright and trade mark claims. In respect of the claims concerning the EU27, the law that this court applies to its corresponding domestic rights, is either the same or substantially the same given the large degree of harmonisation across the EU (including the UK when it was a member until recently) of copyright and trade mark law that took place over a number of decades and which the retained UK law continues to apply.”
“i) There are two limbs to the test set out in Spiliada. Under limb 1 of the test, the Defendant must establish that the courts of Cyprus are both (i) "available" and (ii) are clearly or distinctly more appropriate than the English courts as a forum for determining the dispute. ii) The burden of proof on limb 1 of Spiliada lies with the Defendant. It is not enough for him just to show that England is not the natural or appropriate forum for the trial. He must also establish that the courts of Cyprus are clearly or distinctly more appropriate. This involves something more than an examination of "mere practical convenience". iii) If limb 1 of Spiliada is not satisfied, then the enquiry should stop there. Lord Goff found it difficult to imagine circumstances in which a stay would be granted without another available forum, which is clearly or distinctly more appropriate, being identified and it is not suggested that any such circumstances are present in these proceedings. iv) If the Defendant can establish that limb 1 of Spiliada is satisfied, it becomes necessary to consider limb 2. Limb 2 requires a consideration of whether, even if the courts of Cyprus are an available forum that is clearly or distinctly more appropriate for the trial of the action than the courts of England, justice nevertheless requires that a stay of the English proceedings should not be granted. One factor that might support such a conclusion is if it is established objectively, by cogent evidence, that there is a real risk that the Claimants would not obtain justice in Cyprus. (In his formulation of limb 2 in Spiliada itself, Lord Goff framed the question at 478D of the reported judgment as being whether "the plaintiff will not obtain justice in the foreign jurisdiction". However, in the later case of Altimo Holdings and Investment Ltd and others v Kyrgyz Mobil Tel Ltd[2011] UKPC 7 , Lord Collins spoke of a "real risk that justice will not be obtained" and the parties were agreed that I should follow the latter formulation of the test). v) The burden of proof on limb 2 of Spiliada lies with the Claimant.”