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Tuesday, 28 July 2015

Gama v Pal: court disposes of wet wipe application

Gama Healthcare Ltd v Pal International Ltd, an extempore decision last Friday from Judge Richard Hacon in the Intellectual Property Enterprise Court (IPEC), England and Wales, and noted only on the subscription-only Lawtel service, is one of those small and -- to some -- insignificant -- procedural cases that form part of the very fabric of judicial dispute resolution. At the heart of it was Gama's application to amend its particulars of claim in an action for passing off in relation to its packaging for clinical wet wipes used in the healthcare industry.

Gama produces the Clinell range of wipes
Gama, who alleged passing off in relation to the similarity between its packaging and that used by Pal for its wet wipe products, wanted to amend its particulars of claim in order to allege that there would be post-sale confusion when its products were reordered and that, given the visual similarity of the products, Pal's product code would be mistakenly taken for its own, or mistakenly taken from Pal's marketing materials, by consumers who intended to order Gama's product. On that basis, Gama argued, Pal's products were instruments of deception calculated to deceive end users, giving rise to damage to its product range.

A selection of Pal products
Said Gama, the amendments were no more than particulars of arguments that had already been raised. They required no further evidence or disclosure from it, and only a limited disclosure from Pal --who would still have plenty of time to deal with the new arguments before trial, one of which was the alleged misapplication of Pal's wet wipe training guidance to its own products. Not fair, said Pal: there's a costs cap in the IPEC and its costs were unlikely to be recovered; the cost-benefit test applicable in the IPEC weighed against amendment and there were no exceptional circumstances to permit amendment under the Civil Procedure Rules, CPR r.63.23(2) [Katnote: Part 63 of the CPR deals with intellectual property claims].

Judge Hacon gave a thoughtful appraisal of the issues involved and, on balance, allowed the amendments to the particulars of claim.

* Part.63 of the CPR had three aims: (i) to require the parties to work out the totality of the case by the time of the case management conference at the latest; (ii) the provision of all evidence for a full understanding of the case by the time of the exchange of evidence at the case management conference in order to promote settlement before trial and accurate offers to settle under Part 36 of the CPR, and (iii) to minimise applications between the case management conference and trial prompted by late ideas of what might be argued at trial.

* Rule 63.23(2) of the CPR provided that "save in exceptional circumstances, the court will not permit a party to submit material in addition" to that ordered following the case management conference. While amendments to pleadings did not constitute additional "material", they would not be allowed if they required the submission of further evidence -- which was only permitted in exceptional circumstances.

* In the IPEC [being a relatively cheap, cheerful and informal forum for the determination of IP claims] it was always to a degree a judgment call whether particular aspects of an argument should be in a pleading, or whether it was sufficient to leave those to be dealt with in evidence or in the parties' skeleton arguments.

Hmm.The Kats are not amused ...
* The amendments Gama sought here passed the test in r.63.23(2), but also needed to meet the cost-benefit test in the IPEC. None of the amendments were key or central matters that were self-evidently going to be highly material at trial. In relation to one proposed amendment, the matters had already been dealt with in Gama's evidence and substantially dealt with by Pal: if that amendment were allowed, not much would be generated in additional costs. However, if Pal had to deal with the issue of training in relation to the wet wipes, that issue could lead to more substantial evidence or cross-examination at trial and its effect on the trial outcome could not now be known.

* On balance, the amendments were permitted, subject to one aspect of alleged post-sale confusion -- that alleged deficiencies in Pal's product would be attributed to Gama -- a point that had been taken at the case management conference and could not be raised again.

* Pal was permitted to adduce evidence in relation to wet wipe training in National Health Service hospitals and any further evidence thought appropriate, and, after trial, might want to make further submissions in relation to costs incurred by that evidence.

This Kat thinks the decision must be right. It's not as if the amendments would introduce some completely fresh issue or send Pal scurrying off in all directions in search of relevant material of its own in order to defend some previously uncontemplated claim.  Merpel agrees, but with this caveat: amendments of this sort are more likely to be sought and granted, she thinks, in respect of a tort such as passing off, since this is a legal wrong with an open weave, in which the manifestation of the tort can often be characterised in so many different ways.  If the action were for trade mark or patent infringement, she thinks the chances of getting away with post-case-management amendments miht be slimmer.

(Non) disposal of wet wipes here, here and here

The Lawtel note does not show the parties' respective wipe packaging and the illustrations above were the closest to similar packaging that this Kat could lay his paws on via a Google Image search. If anyone has more confusingly similar images, do please share them.

2 comments:

Michael Factor said...

Jeremy,

I think the problem is that you are looking at the packaging. Clearly the correct perspective is the look and feel of the wipes themselves and the likelihood of confusion they cause.

Apart from industrial wipes for removing solvents, it is very difficult to tell them apart merely by wiping.

Surely the test is whether a black cat using the wipe in a coal cellar would know the difference.

Jeremy said...

Michael -- just to clarify: the reference to the packaging rather than to the wipes themselves isn't my invention; it's mentioned explicitly in the Lawtel note.

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