A summary judgment hearing is not a mini-trial, affirms court

In Beiersdorf AG v Ramlort Ltd (unreported), the UK High Court has dismissed the plaintiff's application for summary judgment on its trademark infringement claim against the defendants. It rejected the plaintiff's argument that letters, purportedly showing that the alleged infringing products were first marketed in the European Economic Area (EEA) with the plaintiff's consent, were forgeries. Noting that summary judgment hearings were no place for a mini-trial, the court stated that the defendants should be given the opportunity to contest the plaintiff's assertion.

Beiersdorf, a German company that is the registered owner of the NIVEA trademark, sells its NIVEA products through various subsidiaries. The subsidiaries are only entitled to use the trademark within their territory. After finding Ramlort - a parallel importer of cosmetics based in the United Kingdom - in possession of some out-of-date NIVEA products that it intended to relabel and sell, Beiersdorf obtained an injunction restraining Ramlort from trademark infringement and passing off. Under pressure, Ramlort gave up the name of its supplier who in turn released the name of its source. Beiersdorf moved for summary judgment and both parties were added as defendants. The claim for trademark infringement hinged on whether the goods were on the market in the EEA or elsewhere with Beiersdorf's consent.

The defendants produced letters of consent from Beiersdorf and argued that its trademark rights had been exhausted since the goods had been first marketed in the EEA with Beiersdorf's consent. Beiersdorf denied consent and submitted that the letters were forged. One of the defendants admitted that it was probable that the court would find on the balance of probabilities that the letters were forged and that there was no defence, but contended that the trial at hand was not the trial of action and it could not be said that there was no real prospect of defence.

The High Court rejected Beiersdorf's application and ordered that the claim should go to a full trial. The question of whether the letters were genuine was something the defendants were entitled to contest by disclosure and cross-examination in the ordinary way. A conclusion of fact, (ie, that the documents were fake), should be decided at trial and not at a hearing for summary judgment. Even if a defendant's case is unmeritorious, there is a right to a trial where there is a reasonable prospect of defending a case.

Emma Toumi, Hammonds, London