“i) The duty of an applicant for a without notice injunction is to make full and accurate disclosure of all material facts and to draw the court's attention to significant factual, legal and procedural aspects of the case; ii) It is a high duty and of the first importance to ensure the integrity of the court's process. It is the necessary corollary of the court being prepared to depart from the principle that it will hear both sides before reaching a decision, a basic principle of fairness. Derogation from that principle is an exceptional course adopted in cases of extreme urgency or the need for secrecy. The court must be able to rely on the party who appears alone to present the argument in a way which is not merely designed to promote its own interests but in a fair and even-handed manner, drawing attention to evidence and arguments which it can reasonably anticipate the absent party would wish to make; iii) Full disclosure must be linked with fair presentation. The judge must be able to have complete confidence in the thoroughness and objectivity of those presenting the case for the applicant. Thus, for example, it is not sufficient merely to exhibit numerous documents; iv) An applicant must make proper enquiries before making the application. He must investigate the cause of action asserted and the facts relied on before identifying and addressing any likely defences. The duty to disclose extends to matters of which the applicant would have been aware had reasonable enquiries been made. The urgency of a particular case may make it necessary for evidence to be in a less tidy or complete form than is desirable. But no amount of urgency or practical difficulty can justify a failure to identify the relevant cause of action and principal facts to be relied on; v) Material facts are those which it is material for the judge to know in dealing with the application as made. The duty requires an applicant to make the court aware of the issues likely to arise and the possible difficulties in the claim, but need not extend to a detailed analysis of every possible point which may arise. It extends to matters of intention and for example to disclosure of related proceedings in another jurisdiction; vi) Where facts are material in the broad sense, there will be degrees of relevance and a due sense of proportion must be kept. Sensible limits have to be drawn, particularly in more complex and heavy commercial cases where the opportunity to raise arguments about non-disclosure will be all the greater. The question is not whether the evidence in support could have been improved (or one to be approached with the benefit of hindsight). The primary question is whether in all the circumstances its effect was such as to mislead the court in any material respect; vii) A defendant must identify clearly the alleged failures, rather than adopt a scatter gun approach. A dispute about full and frank disclosure should not be allowed to turn into a mini-trial of the merits; viii) In general terms it is inappropriate to seek to set aside a freezing order for non-disclosure where proof of non-disclosure depends on proof of facts which are themselves in issue in the action, unless the facts are truly so plain that they can be readily and summarily established, otherwise the application to set aside the freezing order is liable to become a form of preliminary trial in which the judge is asked to make findings (albeit provisionally) on issues which should be more properly reserved for the trial itself; ix) If material non-disclosure is established, the court will be astute to ensure that a claimant who obtains injunctive relief without full disclosure is deprived of any advantage he may thereby have derived; x) Whether or not the non-disclosure was innocent is an important consideration, but not necessarily decisive. Immediate discharge (without renewal) is likely to be the court's starting point, at least when the failure is substantial or deliberate. It has been said on more than one occasion that it will only be in exceptional circumstances in cases of deliberate non-disclosure or misrepresentation that an order would not be discharged; xi) The court will discharge the order even if the order would still have been made had the relevant matter(s) been brought to its attention at the without notice hearing. This is a penal approach and intentionally so, by way of deterrent to ensure that applicants in future abide by their duties; xii) The court nevertheless has a discretion to continue the injunction (or impose a fresh injunction) despite a failure to disclose. Although the discretion should be exercised sparingly, the overriding consideration will always be the interests of justice. Such consideration will include examination of i) the importance of the facts not disclosed to the issues before the judge ii) the need to encourage proper compliance with the duty of full and frank disclosure and to deter non-compliance iii) whether or not and to what extent the failure was culpable iv) the injustice to a claimant which may occur if an order is discharged leaving a defendant free to dissipate assets, although a strong case on the merits will never be a good excuse for a failure to disclose material facts; xiii) The interests of justice may sometimes require that a freezing order be continued and that a failure of disclosure can be marked in some other way, for example by a suitable costs order. The court thus has at its disposal a range of options in the event of non-disclosure.”
“Applications for without notice freezing orders, whether domestic or worldwide, are now a routine part of the business of the Chancery Division and the Commercial Court. It is easy therefore to regard them as "normal", but any hearing where only one side of the case is heard should be regarded as exceptional. Further, freezing orders that are broad in their reach are capable of having very serious consequences for a respondent. The price of obtaining such relief without notice to the respondent is a heavy responsibility to ensure that the matter is fairly presented to the court, not slanted or partial, and that the points that the respondent would wish to make were they present, so far as able to be anticipated, are fairly put before the court for consideration. That is particularly so when serious allegations are made against the absent parties.”
“Judge: The second [housekeeping] point is that this hearing should obviously be in private so I will order that. That is in the interests of the administration of justice. The application is likely to be frustrated if it is in public, hence it has already been listed I think in terms of anonymity. So I will make that order. I have had the revised hearing bundle, your skeleton, for which thank you, and the authorities bundle. Mr Handley: As another housekeeping matter, my Lord’s availability for today given the late start ……”
“… I turn to the orders that are sought in this case. Before I do so, I should make clear that this is an interim hearing on an ex parte (without notice) basis at which Mr Peters and his company have not had an opportunity to make representations. Such a hearing is necessary in the particular circumstances of this case given the relief being sought. Nevertheless, I am not making final findings in relation to any of the matters that I have referred to. I simply have to consider, as it were, the evidence put before me at this stage, assume that (unless there are grounds to consider it untrue) factually what is put forward is correct and draw appropriate inferences from it.”
“I may have got this wrong on the day, I had understood the judge, almost the very first things he seemed to be saying, obviously this is ex parte, that is in the interests of the administration of justice, likely to be frustrated if it is in public, and moved on, thinking that the evidence that was in the skeleton had secured agreement from the court that ex parte was appropriate in this instance. The discussion that I had with the judge about the drafting of the imaging order, which goes on for quite a few pages, I would recommend my Lord read that, if you have a chance later on. He is very concerned about the tipping off of Mark Peters, that the imaging order be drafted in a way to make sure he does not get advance notice, which again, I apologise if I have misunderstood where the court was on the day, but I had understood that he was entirely with me on ex parte and was willing to craft the orders in a way that reflected that.”
“Understanding the need to avoid a mini-trial, the Claimants particularly rely upon the incontrovertible evidence supporting the Phase 1 Claims.”
“While it is recognised that the threshold of “strong prima facie” case (or the slightly lower “high degree of assurance”) that the Claimants will be able to establish their claims (as per Nix v Emerdata Ltd[2024] EWHC 125 (Comm) … at [31] to [32]) is notably higher than a “good arguable case”, nonetheless the evidence here of trade mark infringement, passing off and unjust enrichment is more than enough to satisfy this requirement.”
“We say, as my Lord has summarised, we sail over the good arguable case threshold and even the higher threshold for an imaging order, an extremely strong prima facie case or high degree of assurance that we would succeed at trial. There are different formulations of the same test. But we passed that as well. We rely in particular on the phase one claim at this interlocutory stage, obviously without in any way conceding that the phase two claims are weaker, but we recognise that under the Trade Marks Act for the phase two claims, we need to show things like confusion and damage to the goodwill and trademark of Slush Puppie, which is harder to do at this stage, so we place particular reliance on the phase one claims for the merits test that we need to meet.”
“Judge: Anyway, it does not matter. I think here I am satisfied whatever the test is you meet it so let’s move on. Mr Handley: I think that is absolutely our submission and, in particular, at this interlocutory stage we relying on the Phase 1 claims. The best part of two years of continued use without the authority of the trade marks.”
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; (b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components; (f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it; (i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and (k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
“A proprietor of a registered trade mark alleging infringement under Article 9(2)(c) of the EUTM Regulation, Article 10(2)(c) of Directive 2015/2436 and section 10(3) of the 1994 Act must show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.”
“To further add to the confusion, the design of the Slushy Jack’s logo was very similar to the Claimants’ registered trade marks and other non-registered devices in which they had acquired goodwill. Indeed, as illustrated below, the Slushy Jack’s devices used, among other things, similar colours and depicted characters in a similar stance, each holding outright a drinking container featuring a miniature version of the character.”
“Judge: … at the point at which it looks like the fraudulent documents are all coming to light as being fraudulent, they move to what is described effectively as a rebrand into a new product they say called Slushy Jack’s but which seems to be the same product or at least it is being sold to the public as being the same product full stop. Mr Handley: we take issue with the phrase rebrand because it suggests that they have any power over the slush puppy brand, but yes, they create a new trade mark, a new brand, which we say bears rather striking similarities --- Judge: striking similarity, and in fact it is all your product and recipes and everything else, probably. Mr Handley: yes, they may have changed the recipes since, but certainly at the initial change of brand, they are advertising it to the retailers as the same recipe that people always loved. Judge: they are selling them both side-by-side at one point as well? Mr Handley: yes, because there are thousands of these machines out there at retailers and it does take a while to change the covers of those machines and it takes a while, the retailers are allowed to keep using slush puppy cups and things like that even after the Slushy Jack’s brand is launched, so yes, there is a period of transition where the two brands are being portrayed as twins. Judge: on the face of it, you produce quite convincing and large quantities of evidence about the way in which the trading has carried on in those two periods to justify the case. And you say in terms of the slightly different test for the merits of the claim, you certainly obviously passed, you say, the arguable test of the real prospect of success for a freezing injunction but you also pass the higher test for an imaging order. Mr Handley: yes, those are absolutely my submissions …”
“So what we have assumed, which may be wrong, but we have assumed that the proportion the UK EU sales that is generic across RPSL would apply to Slushy Jacks. That may be wrong but we have made that assumption and we have taken the sales figures that are have been disclosed in the Ohio proceedings and then without allowing for inflation, without allowing for any sort of growth we have just said those 3½ years have produced that level of sales. The next 3½ years from 2022, so we are already 2 years into that, would produce an exactly flat level of sales in the future…. So it is rough and ready. It absolutely is, of necessity, and that is why we have not tried to go to the upper limit or even the average. The information on the gross profits is also a bit rough and ready. The account show just below 50% gross profit. There is an interim document which I can take you to potentially which shows a 64% gross profit on syrup sales. So there are some – and if they come back to us with evidence to say actually, applying your methodology, we get to a different number then that is fine. We can do that and maybe the order would need to be varied. But at this stage, on our best calculation, we wanted to come in quite a bit south of where the number has got to because the uncertainty, which is why we say 10 million.”
“A person infringes a registered trade mark if he uses in the course of trade a sign….[in relation to goods or services]”
“For the purposes of this section a person uses a sign if, in particular, he – (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; (ca) uses the sign as a trade or company name or part of a trade or company name; (d) uses the sign on business papers and in advertising; or (e) uses the sign in comparative advertising …….” (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) imports or exports goods under the sign; (ca) uses the sign as a trade or company name or part of a trade or company name; (d) uses the sign on business papers and in advertising; or (e) uses the sign in comparative advertising …….”
“68. In the premises, in [Phase 1] the Defendants acting together, and/or as accessories with FBL, have in the course of trade and without authority: 68.1 affixed the UK Trade Marks to goods and packaging; 68.2 advertised and offered for sale products bearing the UK Trade Marks 68.3 imported and/or exported products bearing the UK Trade Marks; 68.4 used the UK Trade Marks in company names; and 68.5 used the UK Trade Marks on business papers.” 68.1 affixed the UK Trade Marks to goods and packaging; 68.2 advertised and offered for sale products bearing the UK Trade Marks 68.3 imported and/or exported products bearing the UK Trade Marks; 68.4 used the UK Trade Marks in company names; and 68.5 used the UK Trade Marks on business papers.”
“It is not an accident that we did not join Frozen Brothers Limited as a defendant because it is the claimant in the Ohio proceedings and we did not want to invite accusations of an abuse of process unnecessarily. We think RPSL and Mark Peters is where the decision-making, is where the control is. We say we get to liability for those two companies even though it is FBL that is trading in such a way as to infringe the trade marks through accessory liability.”
“… for the accessory liability of Mark Peters and RPSL in relation to FBL’s infringement, it is in authorities bundle, tab 20, it is Lifestyle Equities v Ahmed from earlier this year in the Supreme Court which was the case to do with alleged trade mark infringement and the extent to which a director could be liable for the trade mark infringement of a company that was trading. The conclusion is helpfully summarised at page 28, paragraphs 135 to 137 … So we say the infringement was absolutely procured by Mark Peters. He was after all, we say, the forger of the documents. He is the driving force behind the entire group with RPSL procured but also assistance as per paragraph 136. It is the shareholder that could have voted to change the company names of Slush Puppie and so on sooner. And as the ultimate parent when it is shipping SLUSH PUPPIE products, which we understand are all manufactured in the UK, when it is shipping them across Europe, it is also assisting in the tort of passing off by the export of instruments of deception. Now what paragraph 137 of Lifestyle Equities also shows where you are going for accessory liability, you need to show knowledge. We would not need to show that for FBL. We accept that, but as to Mark Peters’s knowledge the e-mail correspondence where they are negotiating the contract shows a pretty good working knowledge of trade mark law. It is talking about confusion for members of the public, talking about registrations in the trade mark registry of particular classes of goods and so on. So we say that he is fully aware that what he is doing is trade mark infringement so the knowledge requirement under Lifestyle Equities would be more than met.”
“It is wrong, however, to equate a person who trades in goods and whose income consists of the proceeds of sale of goods with a person who is paid for their labour. A sole trader whose income is earned by selling goods herself may make a greater profit than if she employs an assistant to sell the goods for her because she has no labour cost to deduct. But that is a consequence of how she chooses to conduct her business. It does not mean that if someone is employed by a trader to sell goods on her behalf and is paid a salary or wage in return for his labour, the employee’s remuneration is a profit. The two situations are not alike.”
“The judge seems to have thought that non-disclosure is only material as a basis for discharging the injunction if it affects some point which it is necessary for the applicant for the injunction to establish if he is to succeed in his claim. Therefore he said that the failure to disclose that the defendants knew about the company was not material, because it would have been no defence for the third party to say in answer to the charge of fraud: ‘it was not I, it was my tame company who did it’. With all respect, I do not agree with the judge that the duty of disclosure is so limited. The applicant owes a duty of full and frank disclosure: if he puts in matters of prejudice he must put them in as fully as is necessary to be fair. He cannot pile on the prejudice and then when it is pointed out that he is told only half the story and is left out matters which give a quite different complexion, say ‘Oh, well, it is not material. It is only prejudice, and so, on a strict analysis of the pleadings, does not have to be regarded’.”
“The court will look back at what has happened and examine whether, and if so, to what extent, it was not fully informed, and why, in order to decide what sanction to impose inconsequence. The obligation of full disclosure, an obligation owed to the court itself, exists in order to secure the integrity of the court’s process and to protect the interests of those potentially affected by whatever order the court is invited to make. The court's ability to set its order aside, and to refuse to renew it, is the sanction by which that obligation is enforced and others are deterred from breaking it. Such is the importance of the duty that, in the event of any substantial breach, the court strongly inclines towards setting its order aside and not renewing it, so as to deprive the defaulting party of any advantage that the order may have given him. This is particularly so in the case of freezing and seizure orders.”