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You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Azumi Ltd v Zuma's Choice Pet Products Ltd & Anor [2017] EWHC 45 (IPEC) (16 January 2017) URL: http://www.bailii.org/ew/cases/EWHC/IPEC/2017/45.html Cite as: [2017] EWHC 45 (IPEC)

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IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		The Rolls Building 7 Rolls Buildings London EC4A 1NL
		16/01/2017

MR. RECORDER DOUGLAS CAMPBELL QC:

1. The first issue I have to deal with today is an application which is made by Ms. Vanderbilt, who is the second defendant in the infringement action and the claimant in both the first and second threats actions, that I should recuse myself from this hearing.
2. I should say that at the outset of the hearing and before this application was made, I made it clear to Ms. Vanderbilt that I knew Mr. Simon Malynicz QC, who is counsel for the claimant in the infringement action, and also Mr. Sevier and Mr. Wilcox, on a personal basis. I told Ms. Vanderbilt that Mr. Malynicz was a colleague of mine in chambers and has been for some years. It has now transpired this is the basis of the application for recusal.
3. I should be precise. A number of complaints are made by Ms. Vanderbilt. The first and, in my judgment the most important, is the fact that I do have this professional connection with Mr. Malynicz. We have a professional connection in the sense that we practise from the same chambers, 3 New Square. Mr. Malynicz points out there are a limited number of chambers practising in this area. In my judgment, that fact is irrelevant.
4. Ms. Vanderbilt also relies on several other points. First, she makes the point that Mr. Malynicz, or those instructing him, inserted a letter into the hearing bundle for this hearing which she feels casts her in a bad light. She also makes the point that Mr. Malynicz, and indeed the claimant's solicitors, failed to inform her of the connection that I have with Mr. Malynicz. She is also correct that a statement made by Mr. Malynicz in argument to the effect that HHJ Hacon had recused himself from this application is not correct. He merely directed that it should be heard before me.
5. Of all these complaints, it seems to me that by far the most important so far as the application for recusal is concerned is the professional association I have with Mr. Malynicz by virtue of being barristers in the same chambers. The fact that Mr. Malynicz and those instructing him may have put a particular letter in the bundle does not, in my judgment, go to bias. It may be an attempt to influence me, but I can easily put the letter out of my mind. Judges are well used to putting things out of their minds.
6. I am concerned by the fact that the claimant does not appear to have told Ms. Vanderbilt about the connection and that she had to discover it by herself. On the other hand, the claimant points out to me that Ms. Vanderbilt gave no notice of this application for recusal until after the start of the hearing, so there are arguments both ways as to who failed to inform whom.
7. But I return to the key point. That is whether there is apparent bias in favour of Mr. Malynicz by reason of our professional connection. The phrase "apparent bias" describes the situation where circumstances which exist give rise to a reasonable apprehension that a judge may have been, or may be, biased.
8. In Porter v Magill [2001] UKHL 67 the House of Lords approved the following test: "The court must first ascertain all the circumstances which have a bearing on the suggestion that the judge was biased. It must then ask whether those circumstances would lead a fair-minded and informed observer to conclude that there was a real possibility or a real danger, the two being the same, that the tribunal was biased."
9. However, the fair-minded observer is not unduly sensitive or suspicious: see Helow v Secretary of State for the Home Department [2008] UKHL 62. I add that in Watts v Watts [2015] EWCA Civ 1297 Sales LJ, with whom Cobb J and Sir Stanley Burnton agreed, said this:

"The notional fair-minded and informed observer would know about the professional standards applicable to practising members of the Bar and to barristers who serve as part-time deputy judges and would understand that those standards are part of a legal culture in which ethical behaviour is expected and high ethical standards are achieved, reinforced by fears of severe criticism by peers and potential disciplinary action if they are departed from: Taylor v Lawrence [2001] EWCA Civ 119, [33]-[36]; Taylor v Lawrence [2002] EWCA Civ 90; [2003] QB 528, [61]-[63]."

10. I have also been directed by Ms. Vanderbilt to guidance which has been given by the UK Supreme Court in the Guide to Judicial Conduct 2009. My attention was drawn to paragraph 3.10 which sets out some sufficient reasons for not sitting on a case. These include:

"(i) personal friendship with, or personal animosity towards, a party; friendship is to be distinguished from acquaintance, which may or may not be a sufficient reason depending upon its nature and extent;

"(ii) current or recent business association with a party; this includes the Justice's own solicitor, accountant, doctor, dentist or other professional adviser; it does not normally include the Justice's insurance company, bank or a local authority to which he or she pays council tax."

11. In paragraph 3.11 the guidance states as follows:

"Reasons which are unlikely to be sufficient for a Justice not to sit on a case, but will depend upon the circumstances, include:

(i) friendship or past professional association with counsel or solicitors acting for a party;

(ii) the fact that a relative of the Justice is a partner in, or employee of, a firm of solicitors or other professional advisers involved in a case; much will depend upon the extent to which that relative is involved in or affected by the result in the case;

(iii) past professional association with a party as a client; much will depend upon how prolonged, close, or recent that association was."

12. When I look at these in detail, paragraph 3.10(ii) refers to current or recent business association with a party, and the examples given include the judge's own solicitor, accountant, doctor, dentist or other professional adviser. It does not include the position of barristers who share a chambers and practice independently at that chambers.
13. On the other hand, 3.11 does not apply either. This is the one that refers to a past professional association with counsel acting for a party. This is given as an example of reasons which are unlikely to be sufficient for a judge not to sit on a case. It therefore appears to me that the present application falls between those two.
14. I asked both Ms. Vanderbilt and Mr. Malynicz whether they were able to give me any further assistance as to the particular issue we have here, namely barristers in the same chambers. Neither was able to do so. I must therefore approach it as a matter of first principle.
15. It seems to me that if allegations had been made which involved, for instance, allegations of crime, fraud or matters of that nature, then I would have recused myself. However, as the application has been transpired, it has been put purely and simply on the basis that I share a professional chambers with Mr. Malynicz.
16. In my judgment, the approach of the Court of Appeal in Watts v Watts is one that I will apply in this case. In my judgment, the notional, fair-minded and informed observer would know about the professional standards which are applicable, both to practising members of the bar and barristers who serve as part-time deputy judges. Such a person who is, as I have said, not unduly sensitive or suspicious, would see no reason for me to recuse myself in this case. I therefore decline to do so.

[FURTHER ARGUMENT]

17. The next task I have today is an application by Ms. Vanderbilt that is described by her as an application that her McKenzie Friend, Mr. Henry Earl Ellis, be granted rights of audience for this hearing and any future hearings.
18. Rights of audience are governed by the Legal Services Act 2007. Volume 2, Part 13, of the White Book contains a useful commentary on this subject. Essentially, barristers and solicitors are entitled to rights of audience by virtue of their professional qualifications (see Part 3 of the Act). In the case of solicitors, this is governed by the Law Society. Parties acting in person also have rights of audience: see Schedule 3 paragraph 1(6).
19. The court also has power to grant a right of audience in relation to the proceedings and this is the power I am asked to exercise today. The leading case is Clarkson v Gilbert [2000] 2 FLR 839, CA. The starting point is that the request has to be justified and that all will depend in the circumstances. However, in the case where the proposed advocate is a person who has set himself up as an unqualified advocate and holds himself out as providing advocacy services, whether for reward or not, the court will make such an order only in exceptional circumstances.
20. The facts here are as follows. According to Ms. Vanderbilt's 17th statement and the submissions she has made to me in court today, Mr. Ellis has been acting as her McKenzie Friend before and has even presented her case orally before the court. However, it turns out that Mr. Ellis is a solicitor who has been suspended indefinitely from practice.
21. The claimant says, and this is not disputed by Ms. Vanderbilt, that the claimant only learned of this of the morning of 4th October 2016, which was the date of a hearing before HHJ Hacon. The claimant indicated to Mr. Ellis and Ms. Vanderbilt that it would bring this to the attention of HHJ Hacon, which it did at the end of the hearing. Mr. Ellis did not tell HHJ Hacon that he had been suspended from practice, but he did not deny the allegation when it was made. HHJ Hacon then made an order as follows:

"Mr. Henry Earl Ellis is henceforth precluded from having rights of audience at a hearing as a McKenzie Friend of Ms. Vanderbilt in these actions, unless Ms. Vanderbilt and he make an application by notice, no less than 28 days prior to the relevant hearing date, for him to be granted rights of audience as McKenzie Friend and the court does, upon that application, grant him such permission."

22. What this order says is that Mr. Ellis is precluded from having rights of audience as a McKenzie Friend and he has to make a fresh application, but the fresh application is for him to be granted rights of audience as a McKenzie Friend. The application, as it was made before me today, was not limited to being a McKenzie Friend, it was to have full rights of audience.
23. The upshot was that HHJ Hacon made the order which I have just indicated on 4th October 2016. There was no appeal against this order and, subject to one point I will now mention, there has been no change of circumstances since that hearing.
24. The claimant does not object to this application, but it has given me additional information as follows. Mr. Ellis's statement does not mention that he applied to the Solicitors Regulation Authority for his indefinite suspension to be terminated. In that application he relied on the fact that he had been acting as a McKenzie Friend in the present case. That application was heard by the Solicitors Disciplinary Tribunal on 5th February 2016. His application was refused and he was ordered to pay nearly £2,000 in costs.
25. He then appealed to the High Court on 17th March 2016. The appeal was heard by His Honour Judge Bidder QC, sitting as a Deputy Judge of the High Court, on 1st November 2016. The appeal was dismissed, with costs summarily assessed at over £4,000, to be paid by Mr. Ellis. None of this is denied by Mr. Ellis. I also note that the date of the appeal was as recently as 1st November 2016, making it most unlikely that Mr. Ellis would have forgotten about it.
26. The claimant has also suggested that Ms. Vanderbilt had paid Mr. Ellis for his work on the case on a contingency basis. I am satisfied this is not correct. Ms. Vanderbilt has told me, and I accept, she did give him a payment (I am not sure she mentioned the sum) as a thank you for his work. She was clear that it was not done on a contingency basis. I therefore reject that submission.
27. However, the upshot is that I am asked to make an application not just to allow Mr. Ellis to resume acting as a McKenzie Friend but to give Mr. Ellis full rights of audience. This is in circumstances where the facts have deteriorated since the original order was made, so far as Mr. Ellis is concerned, in that his High Court appeal was dismissed.
28. In my judgment, this is, or is at least equivalent to, a case where the proposed advocate is a person who has set himself up as an unqualified advocate and holds himself out as providing advocacy services, whether for reward or not. I can only permit that in exceptional circumstances. In my judgment, the circumstances are indeed exceptional, but the wrong way round. On the contrary, I see no good reason why I should grant Mr. Ellis rights of audience on the facts that I have mentioned.
29. Ms. Vanderbilt has pointed out, and it is not disputed by the claimant, that Mr. Ellis's suspension had nothing to do with financial irregularities. I agree, but that is irrelevant. The important point is his suspension, coupled with his failure to mention it, not why he was suspended in the first place.
30. If I am wrong on the law, I nevertheless reach the same conclusion. In other words, if I am simply applying the test, as set out in Clarkson v Gilbert, whereby a request has to be justified and all will depend on the circumstances, it seems to me that, first of all, Mr. Ellis has been indefinitely suspended from practice as a solicitor and it would be wrong in principle to grant him rights of audience since it would undermine the role of the Solicitors Disciplinary Tribunal.
31. Secondly, given Mr. Ellis's failure to mention any of the following, namely the fact of his indefinite suspension, the failure of his application for termination of that suspension and the failure of that appeal, I do not believe it would be right in the circumstances to grant him rights of audience. These reasons outweigh the reasons given by Mr. Ellis and Ms. Vanderbilt as to why this application should be allowed.
32. I am not blind to the difficulties that Ms. Vanderbilt will have if she was deprived of the assistance of Mr. Ellis. However, I would point out that it cannot be right to give Mr. Ellis rights of audience in the circumstances that I have mentioned, particularly when it would at least be open to Ms. Vanderbilt either to carry on presenting the case herself., which in my judgment she is doing a good job of doing from what I have heard so far today, or to apply for assistance perhaps of a pro bono nature.
33. I agree it is very late, since the trial is only three weeks away. But the status quo was established by the order of HHJ Hacon on 18th October 2016 and it would have been possible for Ms. Vanderbilt to find someone else to give her assistance before today. For these reasons I dismiss this application.

[FURTHER ARGUMENT]

34. These proceedings consider three separate but related actions. The application before me today is for summary judgment in two of these actions. The trial of all three actions is listed for 7th and 8th February 2017, just over three weeks away. The main parties to this dispute are Azumi Limited, the claimant in the infringement action, and Ms. Zoe Vanderbilt, who is the second defendant in the infringement action and claimant in the other two actions.
35. Azumi Limited is the proprietor of the following registered trade marks:

i) UK registered trade mark 2283791 for the mark ZUMA, registered in respect of the provision of food and drink in class 42, with effect from 24th October 2001;

ii) Community Trade Mark, number 3148392, for the mark ZUMA, registered in respect of provision of food and drink, restaurant services and bar services in class 43, with effect from 2nd August 2004 and;

iii) Community Trade Mark 10449486 for a figurative mark of text ZUMA, registered in respect of services providing food and drink, restaurant services and bar services in class 43, with effect from 3rd January 2012.

36. Ms. Zoe Vanderbilt is the sole director and shareholder of a company called Zuma's Choice Pet Products Limited, which she describes as her company. On 18th August 2014, Ms. Vanderbilt's company applied for a UK trade mark for the word DINE IN WITH ZUMA, in relation to foodstuffs for animals. That is application 3068984.
37. Ms. Vanderbilt is and has been since June 2014, also the registrant of the domain name dineinwithzuma.com, which she describes as her domain name. There is a website associated with that domain name at www.dineinwithzuma.com. It advertises and sells dog food. In keeping with the domain name, the phrase "Dine In With Zuma" is used on that website.
38. There is a complicated procedural history to this set of proceedings, which I will attempt to summarise as follows.
39. On 1st December 2014 Ms. Vanderbilt received a letter from Mr. John Wallace from Boult Wade Tennant, a firm of trade mark attorneys. On 13th February 2015, Ms. Vanderbilt received two more letters from Mr. John Wallace of Boult Wade Tennant. One was an open letter and the other was, at that time, marked "without prejudice", although without prejudice privilege has since been waived. I was shown one of these letters by Ms. Vanderbilt during the hearing.
40. The next step was the issue of an action for trade mark infringement by Azumi, against Ms. Vanderbilt and her company, on 9th June 2015. I have read the Particulars of Claim in that action carefully and I will return to them below. What I will say, at this stage, is that the Particulars of Claim appear to raise a relatively straightforward and conventional case of the claimant's said registered trade marks, all of which, as I have said, incorporate the word Zuma. It is the sort of case often seen in this court.
41. Next, Ms. Vanderbilt issued a threats action on 17th June 2015, against Mr. Wallace; his firm, Boult Wade Tennant; and Azumi. This was just over a week after she herself had been sued. This threats action was based on the open letter of 31st July2015 I have mentioned. The value of the claim was unspecified. It claimed an unspecified sum and other relief, including a publicity order to be published in various publications, including The Lawyer and Legal Week, as well as national media such as The Times, and The Telegraph, but also in Dog World.
42. Next, Ms. Vanderbilt issued a further threats action on 31st July 2015 against no less than nine defendants, again including Mr. Wallace and his firm, but also including a number of directors of Azumi and even a Turkish bank. This was based on the letters dated 1st December 2014 and 13th February 2015. The value of the claim was said to be not more than £3,000. It, again, sought a publicity order to be published in various publications, including The Lawyer and Legal Week, as well as national media such as The Times, The Telegraph and also in Dog World.
43. A defence was filed by Azumi in the first threats action, on 29th July 2015. Among other things, this admitted (in paragraph 6) that the only letter in issue in that action did contain actionable threats of proceedings under section 21 of the Trade Marks Act 1994. However it alleged that the acts in respect of which proceedings were threatened constituted or, if done, would constitute an infringement of Azumi's trade marks such that the said threats were justified. This is a reference to the defence under section 21(2) of the Act, commonly referred to as the defence of justification.
44. I am told that no defence was filed in the second threats action, but nothing turns on that.
45. It seems that both of these threats actions were commenced by Ms. Vanderbilt in the small claims track of this court, but they were transferred to the multi-track by order of District Judge Lambert on 11th September 2015 and 25th September 2015 respectively.
46. It will also be noted that in both of these actions the only threats were made to Ms. Vanderbilt and/or her company. Ms. Vanderbilt confirmed to me, during the course of the hearing this afternoon, that this was the position. In particular, there was no threat made to any third party such as a customer of Ms. Vanderbilt and/or her company.
47. It seems to me, having regard to those facts and also the statements of value given in relation to the claims, that the most important relief sought in these actions appears to be the publicity order.
48. The next step was a hearing before His Honour Judge Hacon on 8th October 2015, at which a number of applications were made.
49. The first was Ms. Vanderbilt's application in the infringement action for an order that the Claimant's claim be struck out under CPR Part 3.4(2)(c) or 3.4(5), or both. That application failed.
50. The second application was the application of the Defendants in the first threats action for that action to be stayed against Mr. Wallace and Boult Wade Tennant, until after judgment in that same action against Azumi Limited. As recorded in paragraph 8 of HHJ Hacon's judgment on that issue, he asked Ms. Vanderbilt and her McKenzie Friend Mr. Ellis what practical difference it made to have Mr. Wallace and Boult Wade Tennant in that action, and the answer was no practical difference. HHJ Hacon went on to grant the Defendant's application.
51. The third application that day was the application of the defendants in the second threats action, for that action to be struck out or stayed against them. HHJ Hacon struck out the action against most of the defendants and stayed it against a Mr. Becker. He also stayed the second threats action against Mr. Wallace and Boult Wade Tennant, for the same reasons as he had stayed the first threats action against them. For all practical purposes, the second threats action is therefore now stayed. Hence, once again, the Defendant's application succeeded.
52. The fourth application was Ms. Vanderbilt's application, in the second threats action, for a default judgment against the fifth to ninth defendants. That application failed.
53. The fifth application was Ms. Vanderbilt's application, in the second threats action, for summary judgment. At that time, that summary judgment application was put on two grounds. The first is set out in paragraphs [17]-[19] of HHJ Hacon's judgment on that issue. This all turned on Ms. Vanderbilt's application for her DINE IN WITH ZUMA trade mark, not on any actual use thereof.
54. The second ground of Ms. Vanderbilt's application for summary judgment on that occasion was that the relief sought in the threats letter was too wide. The letter had asked Ms. Vanderbilt to cease all use of any trade mark incorporating the name ZUMA in relation to dog food, and it was argued that there was no prospect of any relief so broad as that being granted.
55. HHJ Hacon rejected this application for summary judgment. He concluded, at paragraph [22] of his judgment, that "all these matters are appropriate to be considered more fully at trial".
56. Ms. Vanderbilt then served her defence to the infringement action on 3rd November 2015 accompanied by a counterclaim for threats arising out of the same letters as were already issued in the first and second threats actions. The value of this counterclaim was now said to be not more than £500, although it still sought a publicity order. The statement of value (since it was given at a relatively low sum) tends to confirm that damages in the first threats action, the second threats action, and the counterclaim, are not substantial and that the main relief sought is indeed the publicity order.
57. As I have explained, the first and second threats actions had already been stayed in part and otherwise struck out. But because the counterclaim in the infringement action now sought substantially the same relief on the same basic facts as the first and second threats actions, the first and second threats actions ceased to have any practical importance of their own.
58. The claimant then served a Reply and Defence to Counterclaim on 19th November 2015. As with the defence to the first threats action which I have mentioned, the claimant admitted that all three communications complained of constituted threats of infringement proceedings but asserted that they were justified. This was set out at paragraph [11].
59. Ms. Vanderbilt then served a Rejoinder to the Reply and Defence to Counterclaim on 1st November 2015. In response to paragraph [11], which I have just mentioned, she said as follows:

"It is denied that the threats are not actionable under s21 TMA 1994. s21 states in pertinent part".

60. Then s 21 is set out. It then says:

"The Second Defendant avers that all communications complained of are so actionable, and is entitled to the relief sought unless the Claimant can justify the threats pursuant to s21(2) TMA 1994."

61. The Rejoinder therefore referred specifically to the statutory provision for justification, even though this had not been referred to by the claimant in terms.
62. Thus far it seemed that Ms. Vanderbilt seems to have no difficulty in understanding the basis of the plea of justification. Otherwise, if there had been any such difficulty, paragraph [10] of the Rejoinder would have set it out. No application was made for summary judgment at that time. Of course one application for summary judgment had already been made and it had already been dismissed.
63. The next step was the case management conference on 9th March 2016. At that hearing HHJ Hacon considered an application by Ms. Vanderbilt dated 13th November 2015 to make an additional claim against four individuals. That was dismissed. He also considered another application by Ms. Vanderbilt dated 8th February 2016 for further information. That was also dismissed.
64. Directions were then made for trial. It seemed as if matters were back on track. However, matters subsequently became more complicated again as I shall explain.
65. The first development was an application which had been made by Ms. Vanderbilt on 28th June 2016. This sought various relief, some of which was consented to by the claimant but the rest of which was opposed. That application was heard by His Honour Judge Hacon on 4th October 2016. All of Ms. Vanderbilt's disputed applications were dismissed.
66. The order also contains an important recital as follows. It states:

"AND UPON the Court indicating that any further applications by Ms. Vanderbilt should be considered very carefully by her as there is a serious risk of adverse costs consequences against her in the making of an unmeritorious application."

67. This recital thus therefore put Ms. Vanderbilt on notice as of 4th October 2016 that there was a serious risk of adverse costs consequences against her in the future should she make an unmeritorious application. It will be borne in mind that by this stage Ms. Vanderbilt had made a large number of contested applications, all of which had failed.
68. On 10th October 2016, less than one week later, Ms. Vanderbilt made another application supported by her fourteenth and fifteenth witness statements. This application sought summary judgment in the counterclaim and in both of the threats actions. This was her second application for summary judgment, the first having failed a year earlier.
69. The fourteenth witness statement contained mainly legal submissions rather than evidence as such, but it did set out the legal basis of the application. In that statement Ms. Vanderbilt did not set out section 21 of the Trade Marks Act 1994 but referred to an extract from an Executive Summary of a Law Commission Report. In Ms. Vanderbilt's view this Executive Summary established that where threats are made, the trade mark proprietor has to sue on everything which is the subject of a threat; and that if the proprietor fails to do so, then the threats can never be justified, even if they infringe.
70. Ms. Vanderbilt combined this with an argument of fact, whereby she alleged that she had not been sued on what she described as her company name, i.e. Zuma's Choice Pet Products Limited, or on her domain name. By combining her argument of law with her argument of fact, she concluded that the threats could have no justification and that summary judgment should be given.
71. Ms. Vanderbilt requested the application be dealt with on paper. HHJ Hacon dealt with it on paper as requested and ordered that the applications were dismissed with no order as to costs. He said:

"In each of the applications the claimant in claims IP-2015-0006 and 000133 seek summary judgment in relation to her allegation of unjustified threats. In each case the defendants and the claimant in claim IP-2015-000108 have raised a defence of justification. I have no doubt that this defence has sufficient prospect of success for the claims to be heard at trial."

72. On 24th October 2016 Ms. Vanderbilt issued an appellant's notice seeking permission to appeal against the order of 18th October 2016. She subsequently served two skeleton arguments in connection with that appeal.
73. The respondent served a statement on 14th November 2016 giving reasons why it said permission to appeal should be refused. The respondent supported the judge's conclusion for a number of reasons. For instance, it stated that its pleaded case on infringement included the domain name and company name and gave reasons why in the claimant's view there was an arguable defence of justification. It also pointed out that Ms. Vanderbilt would be able to run the same arguments at trial which was then less than three months away.
74. What happened then is that the Court of Appeal wrote to Ms. Vanderbilt on 16th November 2016, pointing out that since the refusal had been done on paper, as Ms. Vanderbilt had requested, the Court of Appeal's practice was to direct that the application in question should be renewed before a judge of co-ordinate jurisdiction. That is the background as to how this application has come before me.
75. I now turn to consider the application on its merits. For the purposes of today Ms. Vanderbilt has filed a very helpful skeleton argument and has expanded on the points made in that skeleton argument in her helpful oral submissions. I have also read Ms. Vanderbilt's fourteenth, sixteenth and seventeenth witness statements. Ms. Vanderbilt's arguments before me today are essentially the same ones which were mentioned in her fourteenth witness statement which I have mentioned previously. I will now consider them in more detail.
76. S 21 of the Act, so far as material, provides as follows:

21 Remedy for groundless threats of infringement proceedings.

(1)Where a person threatens another with proceedings for infringement of a registered trade mark other than—

(a)the application of the mark to goods or their packaging,

(b)the importation of goods to which, or to the packaging of which, the mark has been applied, or

(c)the supply of services under the mark,

any person aggrieved may bring proceedings for relief under this section. (2)The relief which may be applied for is any of the following—

(a)a declaration that the threats are unjustifiable,

(b)an injunction against the continuance of the threats, (c)damages in respect of any loss he has sustained by the threats;

and the plaintiff is entitled to such relief unless the defendant shows that the acts in respect of which proceedings were threatened constitute (or if done would constitute) an infringement of the registered trade mark concerned.

77. First is the argument of law, namely the argument that the trade mark proprietor has to sue on everything which is the subject of a threat and then if the proprietor fails to do so, then the threats can never be justified, even if they infringe. It will be seen that there is nothing on the face of the statute which actually says this. In particular, there is nothing which says that the trade mark proprietor has to sue on everything which is the subject of a threat in order for it to be justified.
78. On the contrary, section 21(2) expressly says that the acts "constitute (or if done, would constitute)". So the emphasis is on whether the acts actually infringe or, if done, would infringe, not on whether a proprietor actually sues for infringement. The phrase does not impose an obligation to commence legal proceedings for every act complained of. What it does require is that if a person aggrieved brings an action under section 21(1), the proprietor has to be prepared to justify the threats they have made in accordance with section 21(2).
79. In my judgment, there is nothing unreasonable about this. For instance, a trade mark proprietor may see a clear infringement committed by somebody who in that proprietor's view is not worth suing. In that case the act certainly infringes but for commercial reasons the proprietor judges it is, as I say, not worth suing. However, if that person (or more strictly, a person aggrieved thereby) decides to sue for threats, it is open to the proprietor to say by way of defence that the threat was justified.
80. I now turn to Ms. Vanderbilt's authority to see if that makes any difference. Ms. Vanderbilt did not show me the whole of the Law Commission Report to which she refers, but only to a couple of sentences taken from the Executive Summary. I therefore took it upon myself to find the report. It turns out that the passage in question has nothing to do with the specific issue of how section 21 of the Trade Marks Act 1994 is to be interpreted. It is merely a high level Executive Summary setting out what the Law Commission thought their project was. I therefore reject Ms. Vanderbilt's arguments on the law.
81. Secondly, Ms. Vanderbilt argued that she has not been sued on her company name, i.e. Zuma's Choice Pet Products Limited, or the domain name dineinwithzuma.com. So although the claimant is suing on three registered trade marks for ZUMA, the first defendant is a company called Zuma's Choice Pet Products Limited, and the company together with Ms. Vanderbilt are selling pet products under the mark DINE IN WITH ZUMA at a website associated with the domain name dineinwithzuma.com, the claimant has in fact failed to sue either in respect of the company name which includes the mark ZUMA, or in respect of the domain name which also includes the mark ZUMA.
82. Viewed on its face, this allegation is implausible. I can see no logical reason why the claimant would have gone to the trouble of suing the defendant for infringing its ZUMA trade marks but then limited its case against the defendant in this way. I asked Ms. Vanderbilt if she felt the claimant was happy for her to carry on using the company name and she said she did not believe that.
83. However it is not correct either. As the claimant has pointed out, paragraphs 7(1) and 9 of the Particulars of Claim do in fact refer to the domain name dineinwithzuma.com. The name dineinwithzuma.com can be seen in the first line of paragraph 9 of the particulars of claim and it states in terms:

"The Defendants' use of each of the signs dineinwithzuma.com
DINE IN WITH ZUMA, ZUMA and the Dine in with Zuma Device [all are said to infringe]."

84. It is true and I do accept, that the Particulars of Claim do not expressly refer to the company name, but they do at least make it clear at paragraphs 7(4) and 9 of the Particulars of Claim that the claimant complains of the use of ZUMA in relation to dog food. The claimant submits and I agree that this complaint covers the company name. However, there is more to the point than this.
85. Mr. Malynicz for the claimant took me through the pleadings and in particular drew my attention to paragraph 4 of the Rejoinder to the Reply and Defence to Counterclaim. This arose in the context of whether the defendant was entitled to run an own name defence. It says:

"As to paragraph 4" -- this being a reference to the Reply and Defence to Counterclaim – "the first sentence is denied. The First Defendant's name is Zuma, with the company's full name being Zuma's Choice Pet Products Limited, and therefore the First Defendant claims the use of own name defence."

86. I agree with Ms. Vanderbilt that this is not conclusive, but it does at least suggest that at the time of doing the Rejoinder, the First Defendant itself believed that the company's name, i.e. Zuma's Choice Pet Products Limited, was something which was a live issue in the action.
87. Therefore I have not just dismissed the argument on the law but also on the facts. However, that is not enough. I still need to consider whether her summary judgment application succeeds. In my judgment, it does not.
88. The claimant has raised an arguable defence of justification in relation to both the company name and the domain name. This defence may or may not succeed at trial and I make absolutely no findings one way or the other as to whether it will so succeed. The reason I do not do so is that there is a trial less than three weeks away at which that question will be determined.
89. However, the application before me is one for summary judgment. CPR Part 24.2 says:

"The court may give summary judgment against a claimant or defendant on the whole of a claim or on a particular issue if –

"(a) it considers that –

"(i) that claimant has no real prospect of succeeding on the claim or issue; or

"(ii) that defendant has no real prospect of successfully defending the claim or issue ..."

90. It seems to me that the claimant's defence of justification is arguable, it has real prospects of success and it should be determined at trial. This is of course the same conclusion as HHJ Hacon reached.
91. That is sufficient to dispose of this application, but I would add that in any event the time for making a summary judgment application of this sort has long since passed. Ms. Vanderbilt should have made it at the same time as her first summary judgment application in October 2015 and certainly no later than the case management conference on 9th March 2016. Instead of doing so, she carried on preparing for trial on the basis that these issues were going to be determined at trial.
92. If the issues of the company name and domain name had been left for trial I doubt it would have significantly increased the length of the trial. They would just become (and indeed now are) two more issues to be decided along with many other similar issues. Instead of that, a substantial amount of court time which could have been used for purposes of other trials and litigants has now been spent on dealing with this application as a stand-alone issue ahead of a trial which is now only a few weeks away.
93. In conclusion I dismiss the application for a summary judgment.

[FURTHER ARGUMENT]

94. I now have to deal with the issue of costs. In this court, unlike most other courts, the court will generally reserve the costs of an application to the conclusion of the trial where they will be subject to summary assessment. That is the rule under section 63.26(1). However, this is subject to an important exception in 63.26(2) that "where a party has behaved unreasonably the court may make an order for costs at the conclusion of the hearing".
95. The application for summary judgment has failed, but that of course is not enough. The Claimant has to establish that Ms. Vanderbilt has acted unreasonably.
96. The practical effect of this is no more and no less than that I can make an order for costs at the conclusion of this hearing, rather than reserving them for a trial two or three weeks later. There is something to be said for reserving them until trial given the imminence of the trial.
97. However, Mr. Malynicz points out that this hearing has taken a substantial amount of time and of course the question will be the same one anyway. I merely decide it today (in the same way that any other court would do) if I conclude that Ms. Vanderbilt has behaved unreasonably, rather than doing so in a few weeks' time.
98. I therefore turn to the question of whether Ms. Vanderbilt has behaved unreasonably. First of all the application for summary judgment has failed. I have given a more comprehensive judgment than HHJ Hacon but I have reached the same conclusion. I will not deal with the issue of whether the application is totally without merit at this stage. These words have particular significance. I will simply say that it failed and it failed on a number of grounds.
99. One of the grounds I found was that it could, and in my judgment should, have been brought much earlier. By that I mean in perhaps 2015, or at March 2016 at the latest, not just weeks before the trial. I do regard that as unreasonable.
100. The application was also brought less than one week after Ms. Vanderbilt was given a clear warning by the court as to costs consequences of future applications. In my judgment, if these warnings are to mean anything, then they do have to be given effect.
101. As against that, I appreciate that Ms. Vanderbilt is a litigant in person dealing with perhaps one of the most stressful situations that she has ever had in her life. From what I have seen of her written material, she does have what I would say is at least a reasonable understanding of court practice and procedure and she is able to construct quite sophisticated legal arguments which require careful consideration.
102. I also bear in mind the claimant's point that after the application had failed in writing, essentially on the grounds of justification, Ms. Vanderbilt should have thought very carefully as to whether to make a fresh application, which in the end has failed. It has failed at greater length, which I have thought it appropriate to give, but it has in the end failed for the same reasons.
103. I have to be fair to both sides, not just fair to one side, and I have to take an objective view. For the reasons I have given I am satisfied that Ms. Vanderbilt has acted unreasonably. I can therefore make an order for costs at the conclusion of this hearing.

[FURTHER ARGUMENT]

104. I now come to assessment of the claimant's costs. The claimant has submitted a very substantial bill in excess of £32,000. My first reaction was that for a hearing such as the present that is a very large sum. I appreciate that as a hearing for summary judgment the claimant was obliged to and did take it seriously. But I would question whether the hearing really needed leading counsel, and whether it needed as many solicitors' hours as was spent on it. And is it just to make Ms. Vanderbilt pay for the choices which the claimant has made?
105. However, in this court the costs of an application such as this are capped at £3,000. On the material which I have seen and which I have read, including in particular the claimant's schedule of costs, I have no doubt that even if I were to make every possible allowance in Ms. Vanderbilt's favour, then the Claimant's recoverable costs would still exceed £3,000. I therefore make that order.
106. I would observe that by doing so, I am in practice disallowing over 90% of the Claimant's claimed costs, even though it has won. The claimant is getting less than 10% of the sums it has actually spent. But I would nevertheless make that order for the reasons I have just given.

[FURTHER ARGUMENT]

107. I now have an application under Part 23.12. This sets out as follows:

"If the court dismisses an application ... and it considers that the application is totally without merit –

"(a) the court's order must record that fact; and

"(b) the court must at the same time consider whether it is appropriate to make a civil restraint order."

108. I have heard Ms. Vanderbilt's application. I have dismissed it. I have also held that her conduct was unreasonable for the purposes of 63.26(2) and made an order for costs against her.
109. Consideration that the application is "totally without merit" is another thing again. It does not just mean that the application failed and it does not just mean that a party acted unreasonably. It means, as it says, that the application was totally without merit all along.
110. Having heard both sides on this, I am struck by the fact that the application was persisted with even after HHJ Hacon had given a short judgment about this. But I am not satisfied I can properly say this was totally without merit. In my judgment, it was not quite that bad. It was an application which failed. I believe it failed based on a misunderstanding of the law, but I am not satisfied and I am not going to record that the application was totally without merit.
111. However, I do think it is appropriate that the order should include a recital similar to that included by HHJ Hacon in his order on Tuesday, 4th October 2016. The recital would state as follows:

"AND UPON the Court indicating that any further applications by Ms. Vanderbilt should be considered very carefully by her as there is a serious risk of the court dismissing such application as being totally without merit."

112. If that recital is incorporated I have every confidence Ms. Vanderbilt will take that warning seriously. If it turns out that Ms. Vanderbilt does not take that warning seriously, then the next outing in court where the circumstances set out by 23.12 are satisfied will be an application which is dismissed without merit and the order will say so.
113. I therefore dismiss the Claimant's application.

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