Alma Communications Ltd & Anor v Feedback Communications Ltd

I have before me today an application to continue an injunction in somewhat restrictive form which was originally granted by Mr Justice Lloyd on 27 April 2004, that injunction having been granted on an ex parte basis, and which was then extended by me last week in substantially identical terms to that ordered by Lloyd J.

The claimants claim to have a trade mark and passing off rights in relation to the mark used on and the get-up of a telephone card which they sell under the name “Bangla”. The telephone card, besides having the word “Bangla” depicted in very large letters on it, also has a fairly easy to identify get-up consisting in part of a map of the world.

When the matter came before Lloyd J it was supported by a witness statement of Mr Khan, who is a managing director of both the first and second claimants, Alma Communications Limited and Neutron Marketing Limited. In that witness statement, as one might expect, Mr Khan explains why it is necessary for his company to have the benefit of emergency relief without giving the defendants advance notice of the application. He points to the fact that his companies have rights in a Community Trade Mark for the word “Bangla”. He refers to the goodwill allegedly built up by the company in the mark “Bangla”. He also refers, in support of the third head of the claim made by the companies, to the get-up used by on the company’s cards, although it does not look like there is very much evidence which was filed as to the goodwill built up in that get-up. That is not surprising because the case was simple – the defendant was using the Bangla mark.

It now appears that in fact the claimants have been in correspondence with the defendant from January of this year onwards, and in particular that on 16 February 2004 their attention was drawn to the fact or assertion that there were at least four other cards on the market using or incorporating the trade mark “Bangla”. Those cards are Bangla GSM, Bangla Tiger, Bangla Mobile and Bangla Link. Furthermore, the claimants apparently sent letters to some of the proprietors of these other cards asking for undertakings not to continue using the Bangla mark and have failed to follow up that correspondence. In other words those other uses have not been further challenged.

None of this material was brought to the attention of Lloyd J or me when Lloyd J made the ex parte order that he did, or when I was asked to extend it. In my view this material goes right to the very heart of the claimants’ entitlement to relief, and is crucial to whether or not such relief should have been given on an ex parte basis. No criticism is levelled at Mr Tappin, who appears today on behalf of the claimant, and appeared both before me last week and before Lloyd J earlier, nor at his solicitors. As I understand it, he and his solicitors were not aware of this material until late on last Friday afternoon.

Nevertheless, this material was crucial. There was a profound breach of the obligation on a party seeking ex parte relief to make full and frank disclosure. There is before me no explanation provided by Mr Khan for the failure on his part to tell the court the whole story. Even if the defendants are not agitated at the prospect of a more limited injunction being granted, I do not think it would be appropriate for the court to continue the ex parte relief in any form pending the inter partes hearing.

For that reason I will not continue any of the ex parte relief granted.