Vertical Leisure Ltd v Poleplus Ltd
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Intellectual Property Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
Vertical Leisure Limited sought summary judgment for trade mark infringement and passing off against the defendants for registering domain names related to its 'X-Pole' and 'SILKii' products. The court granted summary judgment against Mr. Bowley but allowed Poleplus Limited to defend itself. The case refers to key principles around trade mark infringement, passing off, and the granting of summary judgment.
Judgment
JUDGE HACON: This is an application for summary judgment in an action for infringement of trade marks and passing off. The claimant, Vertical Leisure Limited, makes and sells pole exercise dance equipment, in particular poles used by pole dancers. The claimant is the proprietor of a number of United Kingdom community and international marks, consisting of or including the words “X-Pole”. As currently pleaded, the relief is sought only in relation to the United Kingdom marks, but at the start of the hearing I gave permission to amend to plead international and Community trade marks.
The claimant has supplied poles under the X-Pole name since 2004. These have been advertised and marketed throughout Europe, particularly in the UK, and significant sums have been spent on marketing, in particular since 2010.
In 2013 a new type of pole was developed which was given the name SILKii. This new pole received publicity at the Blackpool Winter Gardens at an exhibition known as the International Fitness Showcase held there at the Blackpool Winter Gardens between 20 and 24 March 2013. SILKii poles were not offered for sale at that exhibition. Several pole athletes sponsored by the claimant, known as the X-Pole athletes, attended the event with members of the claimant’s sales and marketing team. This comes from the evidence of Mr Stoughton, who is the head of finance operations for the claimant. Mr Stoughton says that the X-Pole athletes were keen to try out the SILKii as soon as possible, and he also says that the marketing team brought the SILKii product to the event, where the X-Pole athletes both used and demonstrated it. Mr Stoughton goes on: “During the course of the three days ( inaudible ) 2013 the claimant’s representatives explained the SILKii product to consumers using the name SILKii; they also told visitors to understand that the SILKii product would be officially launched at the FIBO exhibition in Cologne in Germany on 11 and 12 April 2013, and indeed the official launch of the SILKii launch did happen at FIBO in Cologne on 11 and 12 April.” There, according to Mr Stoughton, the pole received a good deal of publicity amongst prospective buyers, including prospective buyers from England and Wales.
There is a third witness statement from Mr Stoughton put in just before this hearing in which he says that the claimant took orders from SILKii at FIBO. However, as pointed out on behalf of the defendants, there is no evidence that any of these orders