The High Court delivered its judgment in a trade mark infringement action brought by Nutrimedical B.V. & Aymes International Limited against Nualtra Limited in early May. The Court found that Nualtra's use of the various NUTRIPLEN marks amounted to an infringement of Nutrimedical/Aymes' European Trade Mark for the word mark NUTRIPLETE (the "Nutriplete EUTM"), as the marks were confusingly similar and were being used in respect of the same goods.

Not only does the judgment set out various issues that arose in respect of the alleged trade mark infringement, it also considers the costs implications of such a case.

Trade Mark Infringement

The Plaintiffs claimed infringement under Article 9(1)(b) of the Community Trade Mark Regulations on the basis that the NUTRIPLEN marks being used by the Defendant on its oral nutritional supplements were confusingly similar to the Plaintiffs' Nutriplete EUTM.

The Court held that there was little doubt that the goods being sold under the Nutriplen marks were similar to the goods for which the Nutriplete EUTM was registered. While the Plaintiffs had not yet placed any goods for sale under the Nutriplete EUTM, the Court confirmed that a trade mark can be infringed, even if the owner of the trade mark has not yet traded under that mark. The Court found that the marks were visually, aurally and conceptually similar and found that the use by the Defendant of the NUTRIPLEN mark amounted to trade mark infringement.

Who are the public for products sold under medical supervision?

The Court also considered the meaning of "on the part of the public" in circumstances where the products were required to be sold under medical supervision, with the vast majority of products being sold on prescription, a smaller percentage of sale being made by GPs and a small percentage of sales made without a prescription by pharmacists.

The Court held that the relevant public would be made up not only of healthcare professionals but also the end users since those end users would be in a position to make their healthcare professionals aware of their preferences. Confusion amongst the end user is relevant to the assessment of the marks notwithstanding that either a pharmacist or GP would also be involved in the selection of the product.

The Award to the Plaintiffs & the Costs of the Proceedings

The Court used its discretion to decline to allow a hearing to take place in respect of whether the Plaintiffs were entitled to an account of profits or damages. Instead, the Court held that the Plaintiffs were entitled to damages, in the amount of €35,000, which were calculated by a notional licence fee.

In relation to costs the Court noted that there was "something perverse" about an action that lead to an award of €35,000 costing over €2,000,000 in legal fees. Expressing its concern about the costs in the case to date and that the hearing itself had taken ten days before the Commercial Court, the Court noted it was for this reason that it was pre-empting any election by the Plaintiffs to seek an account of profits, awarding it damages instead. Further submissions are due on liability for costs and an update will provided in due course.

In his commentary Twomey J. referred to the position in England and Wales where the Review of Civil Litigation Costs: Final Report recommended that in certain intellectual property disputes that trials would be limited to two days, costs would be limited to £50,000 and there would be a cap on awards of £500,000. Whilst this proposal seems to be in line with the establishment of the Commercial Court here as a means to have disputes case managed and progressed expeditiously, it is difficult to envisage such a hard fought dispute, with a number of experts being required, being heard in under two days.

In light of Mr Justice Twomey's comments in this case about cost and the length of certain intellectual property trials, it will be interesting to watch for further judicial commentary on this point.

Nutrimedical B.V., Aymes International Limited and Nualtra Limited [2017] IEHC 253.