BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| WIREX LIMITED
|- and -
|(1) CRYPTOCARBON GLOBAL LIMITED
(2) CRYPTOCARBON UK LIMITED
(3) SUBASH GEORGE MANUEL
(4) BEE-ONE UK LIMITED
- and -
|(2) WIREX (GIBRALTAR) LIMITED
(3) DMITRY LAZARICHEV
(4) PAVEL MATVEEV
|Further Defendants to Counterclaim
Jonathan Hill (instructed by Franklins Solicitors LLP) for the Defendants
Hearing date: 26 January 2021
Crown Copyright ©
Covid-19 Protocol: This judgment was handed down remotely by circulation to the parties' representatives by email and release to BAILII. The date and time for hand-down is deemed to be 10.30 a.m. on Tuesday 16th March 2021
Judge Hacon :
The statutory bases for the declaration of invalidity
"47 Grounds for invalidity of registration.
(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration).
(2) … the registration of a trade mark may be declared invalid on the ground—
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied"
3 Absolute grounds for refusal of registration.
(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.
5 Relative grounds for refusal of registration.
(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, where the condition in subsection (4A) is met,
(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application."
Mr Matveev and Mr Lazarichev
" … the Plaintiffs have alleged, and Mr. Walton has sworn, that having invented a new substance, namely, the solidified or oxidised oil, he gave to it the name of 'Linoleum' and it does not appear that any other name has ever been given to this substance. It appears that the Defendants are now minded to make, as it is admitted they may make, that substance. I want to know what they are to call it. That is a question I have asked, but I have received no answer; and for this simple reason, that no answer could be given, except that they must invent a new name. I do not take that to be the law. I think that if 'Linoleum' means a substance which may be made by the Defendants, the Defendants may sell it by the name which that substance bears.
But then it is said that although the substance bears this name, the name has always meant the manufacture of the Plaintiffs. In a certain sense that is true. Anybody who knew the substance, and knew that the Plaintiffs were the only makers of this substance, would, in using the word, know he was speaking of a substance made by the Plaintiffs. But, nevertheless, the word directly or primarily means solidified oil. It only secondarily means the manufacture of the Plaintiffs, and has that meaning only so long as the Plaintiffs are the sole manufacturers. In my opinion, it would be extremely difficult for a person who has been by right of some monopoly the sole manufacturer of a new article, and has given a new name to the new article, meaning that new article and nothing more, to claim that the name is to be attributed to his manufacture alone after his competitors are at liberty to make the same article."
Uses of "cryptoback" before 28 April 2018
"Shopping is Mining" Article
"This is where CCRB's Shopping is Mining concept is so radically different."
"But of course the key difference is that we have set up a reward program where you receive 25% of the value of whatever you purchase on the affiliate site in CCRB cryptocurrency, according to the High Internet Value – and this is what we like to term 'Cryptoback' – the rewards for the consumer are that they get immediate and risk-free entry into a sure-fire way to mine cryptocurrency, without any equipment or technical knowledge required whatsoever – they simply shop and mine."
"8. Materials evidencing the foregoing assertions [of use of "cryptoback"] are annexed hereto at Annex 1. This collection of materials is not comprehensive and further materials will be adduced in evidence."
Global Invoice to Bee-One
Shop & Mine
A different word for the Defendants' cryptocurrency cashback
"The platform enables users to mine cryptocurrency by receiving 'CcrbBack', a unique alternative to cashback programs where users receive cryptocurrency rewards rather than Fiat payments."
"The new version of the platform is scheduled to be live on their website on 1st May 2018 …"
Conclusion on Trade Mark Infringement
Liability of Mr Manuel for the acts of Bee-One
" The judge observed, at para. 12 of his judgment, that:
'It has … long been recognised that a director or other officer of a company may in certain circumstances be personally liable for the company's torts, although he will not be liable merely because he is an officer: he must be personally involved in the commission of the tort to an extent sufficient to render him liable. Whether he is sufficiently involved is a question of fact, requiring an examination of the particular role played by him in the commission of the tort.'
 With the qualification that, if he is liable for the company's tort, it is because he is liable with the company as a joint tortfeasor – so that the relevant enquiry is whether he has been personally involved in the commission of the tort to an extent sufficient to render him liable as a joint tortfeasor – I would accept that as a correct statement of the law."
" In the light of the authorities which I have reviewed I am satisfied that no criticism can be made of the test which the judge applied. But, in my view, the test can, perhaps, be expressed more accurately in these terms: in order to hold Mr Young liable as a joint tortfeasor for acts of copying, and of issuing to the public, in respect of which CRL was the primary infringer and in circumstances in which he was not himself a person who committed or participated directly in those acts, it was necessary and sufficient to find that he procured or induced those acts to be done by CRL or that, in some other way, he and CRL joined together in concerted action to secure that those acts were done."
"46. I do not accept that at all material times I have been the controlling mind of Bee-One. Bee-One's key business decisions have at all material times been taken collectively by the individuals who have been members of its management team at the relevant time. That team has always included not only me but others, including, after his arrival in June 2017, RF [Roger Ferguson] who was also a company director from 9 November 2018 to 27 January 2020. The others in the team were Akhil Antony and David Mclean, as mentioned above.
47. RF was engaged by Bee-One through a recruitment specialist, Thomas Brown, in June 2017. He started on a salary of £50,000 and Bee-One paid £10,800 in respect of his recruitment (being 18% of his base salary plus value added tax). At a salary of £50,000, he was an important employee (being referred to as 'National Sales Director') and later on, in November 2018, he was appointed as a de jure director of Bee-One.
48. Throughout his time with Bee-One, RF assisted me and the rest of the management team in making key business decisions. One of his roles was in respect of the marketing and promotion of Bee-One, tasks which involved the expansion of the mark to the Bee-One Website and other platforms and websites."