The Coca-Cola Company and Beverage Services Limited t/a Coca-Cola Great Britain v Raymond Ketteridge, Raymond Joseph Ketteridge, Marlene Rose Ketteridge

Date

31 October 2003

Legislation

Trade Marks Act 1994, s.10(1)

Keywords

counterfeiting; trade mark infringement; reputation; Norwich Pharmacal orders; standard of proof; fraud; abuse of process; successive infringement actions

Counsel

Peter Leaver QC, Philip Roberts, John Fitzgerald, Robert Levy, the third defendant was not represented

Solicitors

Willoughby & Partners; Stunt Palmer & Robinson; Feltons; the third defendant was not represented.

Judge

Rimer J.

Court

High Court (Chancery Division)

Reported

[2004] FSR 29

Summary

Coca-Cola have very large sales of their soft drink in the UK both in glass bottles and in 500ml PET contoured plastic bottles. The distinctive features of the get-up of the plastic bottles included that they were clear, had a red plastic cap and a red label.

Large quantities of cola in unlabelled 500ml PET bottles was imported from Turkey by Capella Food and Drinks Limited. These bottles were then labelled using counterfeit Coca-Cola labels and the bottles printed up with the Coca-Cola bottle top logo.

Coca-Cola had various difficulties determining the correct defendants, and eventually obtained a freezing order against the three defendants in this action. The defendants' activities first attracted attention when a labelling machine salesman whom they had asked to demonstrate a product became suspicious that a counterfeiting operation was underway and alerted Coca-Cola Enterprises Limited. The security officer posed as an assistant of the salesman in order to inspect the operation for himself.

Coca-Cola subsequently obtained a Norwich Pharmacal order against Lloyds Bank who had been telephoned by one of the defendants and who had recorded the resulting conversation. At trial, however, this evidence did not establish that the defendant in question had been involved in the counterfeiting.

The second defendant ran a defence on the basis of an abuse of process – his argument being that, had the claimants intended to sue him, they should have joined him in their first infringement action on these facts and not waited until this subsequent action.

Decision

Rimer J concluded in connection with this argument that:

• it was wrong to conclude that in no circumstances would it be an abuse of process for the same claimant to bring successive actions arising out of the same facts against separate defendants; however,
• in the facts of this case, not only could the second defendant have been sued in the first action, but he was actually summonsed to give evidence in it (with no privilege against self-incrimination). Hence the subsequent bringing of this action was not an abuse of process - he was not being harassed by successive litigation.

In relation to the counterfeiting which was pleaded as various infringements under s.10 of the Trade Marks Act 1994, Rimer J. concluded that:

• there was no doubt that the defendants were involved in a large-scale counterfeiting operation relating to Coca-Cola;
• the allegations against the first and second defendants were that they participated in the perpetration of a deliberately dishonest counterfeiting operation. The upshot of this was that they the defendants were alleged to be participants in a serious fraud on the public;
• the standard of proof required against them was therefore not just proof on the balance of probabilities but a standard closer to the criminal standard in that the evidence presented against them must be particularly cogent;
• the operations constituted infringements of the various Coca-cola registered trade marks and on the facts it was clear that the second defendant was closely involved with the fraud; however,
• in relation to the first defendant the only evidence presented by the claimant related to his lifestyle and his unexplained income. There was considerable suspicion about the nature of his business activities, but none of this in itself proved that he participated in the counterfeiting of the bottles. Consequently the case against the first defendant was not made out and the claim against him dismissed.