Background
Mark Capital Management Limited owns a UK trade mark for the word MARK covering services relating to real estate investment and management. It sued Ares entities for trade mark infringement under sections 10(2) and 10(3) of the Trade Marks Act 1994 and for passing off, based on their use of signs including MARQ, MARQ LOGISTICS, and composite signs featuring those words within a broken rectangular blue border.
At this stage, the court was determining only the scope of disclosure under the Flexible Trials Scheme, not the merits of the infringement and passing-off claims. Mark Capital sought documents concerning the defendants’ rationale for adopting the MARQ signs and internal discussions about the possibility or potential for confusion with MARK.
The Court’s Holding
Mr Justice Tappin refused to order disclosure concerning the defendants’ rationale for adopting MARQ or the MARQ composite sign. The pleaded allegation that the defendants acted “in order to” benefit from the mark’s attraction, reputation, and prestige did not place their subjective intention or rationale in issue; it merely stated the requirements of the alleged section 10(3) infringement. Although the pleading also alleged an absence of due cause, the defendants had not asserted due cause in their defence, so no issue requiring such disclosure arose.
The court also refused to require disclosure of internal documents containing speculation about possible or potential confusion. Likelihood of confusion would be determined by comparing the signs, the registered mark, and the relevant services, informed by admissible evidence about the markets and the average consumer. Internal speculation unconnected to an actual instance of confusion was unlikely to be probative. The defendants would, however, disclose actual instances of confusion or matters capable of being construed as such.
Key Takeaways
- A pleading alleging unfair advantage under section 10(3) does not necessarily put a defendant’s subjective intent or brand-selection rationale in issue.
- An allegation that use lacks due cause will not justify disclosure about adoption rationale where the defendant does not rely on due cause.
- Internal speculation about potential confusion is not ordinarily probative, although actual or arguable instances of confusion remain disclosable.
Why It Matters
The decision draws a practical boundary around disclosure in trade mark litigation conducted under the Flexible Trials Scheme. Parties cannot obtain brand-development materials merely because their pleadings use statutory language associated with unfair advantage; the pleaded issues must genuinely make subjective intention relevant.
It also distinguishes evidence of actual confusion from internal predictions about what consumers might think. The latter may add little where the trial court must conduct an objective assessment of the marks, services, market, and average consumer.