Wednesday 23 March 2022
The Claimant appeals the Order of Mr Justice Miles dated 24th November 2021 which allows the Defendants permission to amend their Defence so as to introduce a defence based upon section 11(1B) of the Trade Marks Act 1994 and a counterclaim for infringement of the First Defendant’s recently acquired trade mark.
This is a trade mark claim. The companies on both sides sell computer gaming accessories, including audio headsets for use on gaming platforms. The claimant is the registered proprietor of two UK registered trade marks for STEALTH and STEALTH VR, both registered in relation to “audio headsets for playing video games”. The defendants have also used the sign STEALTH in the UK in relation to video game headsets. In November 2020 the claimant brought proceedings against the defendants for infringement under ss. 10(1) and 10(2) of the Trade Marks Act 1994. The defendants relied on the defence of honest concurrent use of the STEALTH mark. Two applications came before Mr Justice Miles. Firstly, the claimant applied for summary judgment for the entire claim and secondly, the defendants sought to amend their pleadings to plead that the first defendant had acquired an earlier registered trade mark for the word STEALTH (pre-dating the claimant’s marks) from a third party. They sought to use the earlier trade mark as a defence to the claimant’s claim for infringement and also to contend that the claimant had in fact infringed the earlier mark and that the claimant’s trade marks are invalid.
Mr Justice Miles dismissed the application for summary judgment with consequential costs and permitted the amendment of the Defence and the new Counterclaim.