Shorts International Ltd v Google LLC [2024] EWHC 2565 (Ch) (08 October 2024)

Shorts International Ltd v Google LLC [2024] EWHC 2565 (Ch) (08 October 2024)

SIL is not required to apply to amend its pleadings to narrow the specifications of goods and services in response to the invalidity and non-use attacks; the court will determine the appropriate scope based on the evidence and submissions. Google's application to amend its pleadings to add grounds of deceptiveness and to expand the non-use attack is allowed, despite being late, as there is no material prejudice to SIL and the issues can be addressed without disrupting the trial.

Citation
[2024] EWHC 2565 (Ch)
Parties
Claimant: Shorts International Limited; Defendant: Google LLC
Jurisdiction
England and Wales
Judgment Date
08 October 2024
Procedural Posture
Trade Mark Invalidity and Revocation Proceedings / Interlocutory Judgment on Pleadings and Amendment Applications
Outcome
Application to amend pleadings granted; no requirement for claimant to amend pleadings to narrow specifications.
Legal Topics
Trade Mark Validity, Descriptiveness, Distinctiveness, Revocation for Non Use, Pleading Amendments, Deceptiveness
Intellectual Property Trade Marks Trade Mark Validity Descriptiveness Distinctiveness Revocation for Non Use Pleading Amendments Deceptiveness

Case Brief

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Parties

Shorts International Limited

Claimant

Google LLC

Defendant

Procedural Posture

Trade Mark Invalidity and Revocation Proceedings / Interlocutory Judgment on Pleadings and Amendment Applications

Legal Issues

  1. 1 Whether the claimant must amend its pleadings to narrow trade mark specifications in response to invalidity and non-use attacks
  2. 2 Whether the defendant may amend its pleadings to add grounds of deceptiveness and expand non-use claims at a late stage

Ratio Decidendi

SIL is not required to apply to amend its pleadings to narrow the specifications of goods and services in response to the invalidity and non-use attacks; the court will determine the appropriate scope based on the evidence and submissions. Google's application to amend its pleadings to add grounds of deceptiveness and to expand the non-use attack is allowed, despite being late, as there is no material prejudice to SIL and the issues can be addressed without disrupting the trial.

Court Disposition

Application to amend pleadings granted; no requirement for claimant to amend pleadings to narrow specifications.

Orders

  • Google is permitted to amend its pleadings to add grounds of deceptiveness and expand the non-use attack.
  • SIL is not required to apply to amend its pleadings to narrow the specifications of goods and services.