EWHC 3357
Chancery Division before Judge Birss QC
Claimant made an application for an interim injunction to stop the Defendants from using the name “JERSEY COW” in relation to various beauty products pending the outcome of a dispute at trial.
The Claimant owns a number of names such as “COWSHED”, “LIPPY COW” and “KNACKERED COW”. It was said that the Claimant has substantial goodwill and reputation including about 30 other trade marks containing the word “COW”.
The Claimant argued that the interim injunction should be ordered because their potential claim is bound to succeed (a claim in passing off and trade mark infringement) and that it is necessary to prevent others from being misled by the Defendants’ use. The Defendants’ argument was that their products were for different parts of the market and that they placed emphasis on JERSEY rather than COW (this was notwithstanding the fact that he Defendants’ products were affixed with the words: “the JERSEY COW company”. In short the Defendants’ submission was that there was no likelihood of confusion on the part of the public.
The first issue was whether the American Cyanamid approach (AC) is the correct approach to the application. The AC is an investigation to see whether the claimant has a “sufficiently arguable case to merit trial” but without conducting a mini trial on the provision of affidavits.
The Judge stated that the assessment: “involves looking to see if damages would be an adequate remedy for the claimant – if so then no injunction is granted – and then asking the converse question about the defendant. Damage may be financial in nature but hard to quantify and/or may be damage of a less tangible kind which cannot readily be compensated in money such as a tarnishing of a reputation. If both sides risk uncompensatable harm then other factors are considered. It is a counsel of prudence to preserve the status quo“.
The court went on to state: “Looking for a (disputed) status quo in this case is not the answer. If I grant an injunction then it will effectively decide the action. There is a real risk that the defendants’ business will be destroyed. On the other hand if I refuse an injunction, the claimant is by no means defeated. The matter can be taken to a speedy trial within a few months. Even of the claimant is right about the merits of its claim, the damage in the meantime will be modest albeit difficult to quantify or to compensate for in damages.”
It was apparent between the parties and the court that the case could be taken to a speedy trial, April 2011 was suggested. Undertakings and cross undertakings were given by the parties, directions for a speedy trial were handed down and the interim injunctions was found not to be necessary.
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