Nutrimedical B.v v Nualtra Ltd

• Jurisdiction: Ireland
• Judge: Mr. Justice Twomey
• Judgment Date: 02 May 2017
• Neutral Citation: [2017] IEHC 253
• Court: High Court
• Docket Number: [2015 No. 3905P]
• Date: 02 May 2017

[2017] IEHC 253

THE HIGH COURT

COMMERCIAL

Twomey J.

[2015 No. 3905P]

BETWEEN:

NUTRIMEDICAL B.V.

AND BY ORDER

AYMES INTERNATIONAL LIMITED

PLAINTIFFS

-AND-

NUALTRA LIMITED

DEFENDANT

Intellectual Property – Infringement of Trademark – Art. 9 of Regulation 2015/2424 – Injunction – Likelihood of confusion – Damages – Account of profits

Facts:-The second plaintiff, being the assignee of the registered European trade mark "Nutriplete," sought an injunction against the defendant for preventing it from using the offending sign "Nutriplen" on the products. The second plaintiff argued that the offending sign used by the defendant on the category of oral nutritional supplements had created a likelihood of confusion on the part of the public between the second plaintiff's trade mark and the defendant's offending sign.

Mr. Justice Twomey granted an injunction to the second plaintiff. The Court, however, did not allow the plaintiffs to elect for an account of profits and awarded damages to the plaintiffs in the alternative. The Court held that in assessing the degree of similarity between the two marks, the Court must determine the degree of visual, aural and conceptual similarity between them, which in turn must be assessed by taking into account the overall impressions created by the marks. The Court held that the plaintiffs had failed to give any evidence of suffering any actual loss as a result of the defendant's action. The Court held that the account of profits was an equitable remedy and the plaintiffs were not entitled to avail that remedy as they, too were guilty of defaming the defendant by issuing a poison pen letter. The Court found that there was no evidence of the defendant earning any profit during the relevant period by the use of the offending sign and thus, it was not appropriate to elect for an account of profits. The Court considered the estimated amount of the notional licence fee, which a third party would pay to the plaintiffs, for the use of the plaintiffs' registered trade mark during the relevant period for assessing the damages.

JUDGMENT of Mr. Justice Twomey delivered on 2nd May, 2017

Introduction

1 The hearing in this case lasted for 10 days and it concerned a claim that the use by Nualtra Limited ('Nualtra') of the mark NUTRIPLEN infringes the rights of the owner of the registered trade mark NUTRIPLETE. While the key issue in this case is whether there is a likelihood of confusion on the part of the public between the registered trade mark NUTRIPLETE and the alleged offending sign, NUTRIPLEN, this judgment also considers the effect, if any, on that claim, of the conduct by the second-named plaintiff, which has been described by the High Court in earlier proceedings as "reprehensible". This judgment also considers the consequences, if any, of the extraordinary fact that it can cost more to defend a claim than the claim is worth, since evidence was provided to this Court that it cost the defendant €1.3 million to defend a claim against it for damages of €260,000.

Background

2 The proceedings were instituted against Nualtra on the 20th May, 2015, by the first named plaintiff, Nutrimedical B.V. ('Nutrimedical'), which was the owner at that time of the NUTRIPLEN trade mark. However, the case is now being pursued primarily by the second named plaintiff, Aymes International Limited ('Aymes'). This is because on the 17th June, 2015, Nutrimedical assigned the NUTRIPLETE trade mark to Aymes.

3 The core issue in this case is whether there has been a breach by Nualtra of Article 9 of Regulation 2015/2424 (the 'European Trade Mark Regulation') which amends Regulation 207/2009. The 2015 Regulation was passed into law on the 16th December, 2015, after the proceedings were issued in this case, but none of the amendments to the 2009 Regulation are significant to the circumstances of this case and so reference is made in this judgment to Article 9 of the European Trade Mark Regulation, as amended.

4 The alleged breach by Nualtra of Article 9 of the European Trade Mark Regulation is founded on the claim that there exists a likelihood of confusion on the part of the public between Nualtra's NUTRIPLEN mark and the NUTRIPLETE trade mark, such that the rights of Aymes as the owner of the NUTRIPLETE trade mark are being infringed by Nualtra. For this reason, this Court is being asked to grant an injunction to the plaintiffs prohibiting Nualtra from using the mark NUTRIPLEN.

5 Nutrimedical, an entity incorporated in the Netherlands, is a manufacturer of medical nutritional supplement products. NUTRIPLETE was registered by Nutrimedical as a Community Trade Mark (now known as an EU Trade Mark) on the 5th December, 2012. The mark was registered in respect of Category 5 and Category 32 of the Nice Classification System. Category 5 covers:-

'diatetic preparations adapted for medical use; Nutritional supplements for medical use; The aforesaid goods as tube feeding and liquid food; The aforesaid for medical supervision'.

Category 32 covers:-

'mineral and soda water and other non-alcoholic beverages, fruit drinks and juices, syrups and other preparations for making beverages'.

6 The defendant, Nualtra, began supplying and distributing oral nutritional supplements bearing the signs "NUTRIPLEN", "NUTRIPLEN PROTEIN" and "NUTRIPLEN SMOOTHIE" in November 2012. These products, being oral nutrition supplements ('ONS'), can only be purchased under medical supervision, which means that they must either be purchased using a prescription, or if they are purchased without a prescription, they can only be purchased as an over the counter product (an "over the counter" product) from a pharmacy, which means that they must be requested from a pharmacist who stocks the products behind the dispensing counter.

7 As outlined in detail below, after Nutrimedical had registered NUTRIPLETE as an EU Trade Mark on the 5th December, 2012, Nualtra unsuccessfully applied to register NUTRIPLEN as an EU Trade Mark.

OHIM decision that NUTRIPLEN too similar to NUTRIPLETE

8 On the 21st February, 2013, Nualtra applied to the Office for Harmonization of the Internal Market ('OIHM'), now known as the European Intellectual Property Office ('EUIPO') to register three Community Trade Marks in respect of "NUTRIPLEN", "NUTRIPLEN PROTEIN" and "NUTRIPLEN SMOOTHIE" under the same category as NUTRIPLETE, i.e. Categories 5 and 32. Nutrimedical, as the owner of the NUTRIPLETE trade mark, opposed these three applications. The three applications by Nualtra were rejected by OIHM as it found that Nutrimedical's opposition was well founded, since it held that there was a likelihood of confusion on the part of the public in relation to NUTRIPLEN on the one hand and NUTRIPLETE on the other hand.

9 On the 10th October, 2014, Nualtra lodged notices of appeal to the Boards of Appeal of OIHM in respect of each of its three applications, which had been rejected by OHIM. On the 24th April, 2015, the Board of Appeal dealt with Nualtra's appeal in relation to NUTRIPLEN, which it rejected as it was filed out of time.

Appeal of OHIM decision-NUTRIPLEN PROTEIN & NUTRIPLEN SMOOTHIE

10 On the 14th July, 2015 and the 17th July, 2015, the Board of Appeal dealt with Nualtra's appeal in relation to NUTRIPLEN PROTEIN and NUTRIPLEN SMOOTHIE. The grounds relied upon in the appeals in relation to both NUTRIPLEN PROTEIN and NUTRIPLEN SMOOTHIE were the same. Nualtra's arguments were summarised by the Board of Appeal at para 5 of its decision dated 17th July, 2005 (Case R 2467/2014-2) in relation to NUTRIPLEN PROTEIN as follows:-

'The goods are only marketed to healthcare professionals. They are only sold in regulated pharmacies; There is no likelihood of confusion between the marks, given that highly trained professionals would not confuse the marks, because they are dissimilar when the generic term "nutri" is taken into account.'

11 The appeals in relation to both marks were rejected by the Board of Appeal, which upheld OHIM's decision that the NUTIRPLEN marks were confusingly similar with NUTRIPLETE. No appeal was taken by Nualtra to the decisions of the Board of Appeal.

Undertaking sought from Nualtra not to use NUTRIPLEN

12 After these appeals were rejected, solicitors for Nutrimedical wrote on the 20th May, 2015, to the solicitors for Nualtra seeking an undertaking that it would withdraw products, bearing the mark NUTRIPLEN and falling within Category 5 and 32, from the market and undertake not to sell any such products under the NUTRIPLEN mark in the EU. No such undertaking was forthcoming. It is relevant to note the plaintiff had not launched any ONS products under the NUTRIPLETE range when it sought the undertaking from Nualtra or when it commenced these proceedings. Evidence was provided to the Court by Mr. Erault (the Chairman of Aymes) that this was because Aymes did not wish to launch ONS products in the absence of an undertaking from Nualtra that it would not sell ONS products under the name NUTRIPLEN.

13 While Nualtra did not give the undertaking, it is the case that in September of 2015, Nualtra commenced the process of re-branding the products it was selling under the NUTRIPLEN brand. In part, this appears to have been because the plaintiff had disrupted Nualtra's business by threatening to sue its bottler/manufacturer for infringement of trade marks, which had led to that company ceasing to supply Nualtra. By April of 2016, Nualtra had completed its re-branding of its oral nutritional supplements under the name Altraplen in the UK and in May of 2016, it completed the re-branding exercise in Ireland. Even though it had re-branded, Nualtra did not give an undertaking to Nutrimedical, not to use the name NUTRIPLEN, and as of the date of the hearing before this Court, it had failed to give any such undertaking. Indeed, the Chairman of Nualtra, Mr. Dan Byrne, in his...