JBC Distributors Inc. & JBC Distributors UK Limited vs Peter Mudahy & Tanvir Hussain

This case concerned a trademark infringement and passing off dispute between JBC Distributors and Peter Mudahy & Tanvir Hussain, involving issues of counterfeit goods and summary judgment applications.

TLDR:

• JBC Distributors filed a lawsuit against Peter Mudahy and Tanvir Hussain for trademark infringement and passing off.
• The court had to determine whether the goods sold by the defendants were counterfeit.
• The court dismissed the application for summary judgment and strike out of the defense.

The claimants, JBC Distributors Inc. and JBC Distributors UK Limited, filed a lawsuit against Peter Mudahy and Tanvir Hussain, trading as Pak Cosmetic Centre, for trademark infringement and passing off. JBC alleged that the defendants sold counterfeit goods bearing JBC's trademarks.

JBC manufactures and distributes products made from Jamaican black castor oil under the brand 'SUNNY ISLE'. They hold trademark registrations for these products and claim to have a reputation and goodwill in the UK. JBC alleged that the defendants sold counterfeit goods, infringing their trademarks and passing off these goods as genuine.

The defendants denied the allegations, asserting that all goods sold were purchased from JBC or its authorized suppliers. They argued that any differences in the goods were due to JBC's variations in packaging. The defendants also filed counterclaims for unjustified threats and compensation for unsold stock.

JBC sought summary judgment on the claim and/or strike out of the defense and counterclaim. They argued that the counterfeit nature of the goods was evident and did not require a full trial. The defendants contended that there were genuine disputes of fact that necessitated a trial with full disclosure and witness evidence.

During the hearing, both parties presented sample bottles for examination. JBC highlighted differences between the genuine and alleged counterfeit products, while the defendants maintained that the goods were genuine and purchased from JBC.

The court considered the legal tests for summary judgment and striking out a defense. It concluded that the defendants' case had a realistic prospect of success and that the factual disputes required a full trial. The court dismissed JBC's application for summary judgment and strike out of the defense.

Regarding the counterclaims, the court found that the claim for unjustified threats was sufficiently clear to proceed. However, it struck out the claims for lost profit on stock and compensation for returned stock due to lack of particularization and legal basis.

The court encouraged the parties to consider alternative dispute resolution to avoid the costs and uncertainty of a full trial.

Legal representatives: Jamie Muir Wood (instructed by Reed Smith) for the Claimants, Denise McFarland (instructed by in-house solicitor at Pak Cosmetic Centre) for the Defendants.

Judicial Panel: Ms. Pat Treacy (sitting as a Deputy High Court Judge)

Case Citation Reference: [2023] EWHC 1480 (IPEC)