Author: Andrew Lee

Brandsmiths are acting in a large trade mark dispute in respect of the CRYSTAL vape brand.

Brandsmiths represent Bargain Busting Limited in two sets of High Court proceedings which are being case-managed and tried together. The case is against Chinese company Shenzhen SKE Technology Ltd, and various other wholesalers and retailers in the UK. 

In short, the dispute is regarding who the rightful owner is of the CRYSTAL brand in the UK. 

The case value is large - in 2024 alone over $400m worth of products were sold, not accounting for further sales by retailers afterwards.

The case so far
There has already been one High Court judgment so far in the dispute. This was from Miles J granting an interim injunction to prevent threats (presently awaiting a decision from the Court of Appeal on permission to appeal).

There are numerous parallel IPO proceedings, many of which have been stayed and some transferred to the High Court claims. One IPO claim was SKE's opposition to our client's application for CRYSTAL BAR based on s5(4)(a) of the TMA i.e. prior passing off rights at the filing date. Our client had indicated it will apply to amend its High Court claim to include this mark once it proceeds to registration. SKE confirmed (in court proceedings) that if that mark proceeds to registration they would then attack it on invalidity grounds in the High Court claim.

The opposition was rejected by the IPO. SKE appealed to the High Court. In a judgment this week Michael Tappin KC dismissed the appeal. Judgment is at the end of this post - the Judge applied the appellate guidance from the Iconix v Dream Pairs SC judgment.

This raises an interesting issue for me. There is a right of appeal from the IPO to either the Appointed Person or the High Court. The decision of the AP is final with no further appeals. From the High Court it is in theory possible to appeal further to the Court of Appeal - subject to a heightened test for permission. Therefore, it allows appeals to be brought to the High Court which incur significant costs without any prior consideration of merit.

When opting for the High Court route for IPO appeals - should there be a permission test?
A section 5(4)(a) attack is a paradigm example of a multi-factorial analysis undertaken by an experienced and specialist hearing officer in the IPO. Exactly the sort of analysis the SC say should not be interfered with. Yet, the IPO appeal procedure allows a party to do just that without any prior restraint on whether the appeal has merit.

The delay, time and cost issue is compounded in this case when it has been confirmed that whatever the outcome of the costly opposition proceedings and appeal, the mark will be re-attacked in any event.

About Brandsmiths
Brandsmiths is the law firm for the world’s leading brands. With a highly skilled team of IP lawyers, the firm specialises in all matters related to trade marks, copyright, designs, patents, confidential information, and database rights.

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