ABP Technology v Voyetra Turtle Beach [2021] EWHC 3096 (Ch)
This was an interim hearing in a trade mark infringement claim. Both sides use the mark STEALTH in relation to headphones for computer gaming. The Claimant, ABP Technology, claims infringement of two UK trade marks for STEALTH and STEALTH VR. The only defence pleaded in the original Defence was that of honest concurrent use. The Claimant applied for summary judgment on the unamended Defence and the Defendants applied to amend the Defence and add a counterclaim.
Miles J dismissed the summary judgment application and partially allowed the amendment application. On the former, while there had only been a maximum of two years side-by-side use before the Claimant’s earliest infringement claim fell to be assessed, none of the cases on honest concurrent use define or stipulate a minimum period of use and it was arguable that length of use is only one factor to take into account when determining whether it applies.
The amendments sought by the Defendants each relied on their acquisition of a trade mark for STEALTH that pre-dated the Claimant’s registrations. Relying on that mark, they sought to add a defence under s. 11(1B) of the Trade Marks Act 1994, a counterclaim for a declaration that the Claimant’s registrations were invalid and a counterclaim for infringement of the earlier mark. The Claimant objected to the amendments on discretionary grounds, namely that the amendments could and should have been made earlier, and on the grounds that they had no real prospect of success. Miles J refused the amendment to introduce the counterclaim for a declaration that the Claimant’s marks were invalid on the ground that it had no real prospect of success, but allowed the other amendments. On the discretionary grounds, the Judge held that this was not a case of a late amendment and that the Defendants were entitled to wait until the First Defendant became the legal proprietor of the earlier STEALTH mark before seeking to amend their case.
Chris Aikens appeared for the Claimant and Benet Brandreth QC appeared for the Defendants.