CITMA Review July 2025: Freeze frame

This article was first published by The Chartered Institute of Trade Marks Attorney.

Key points

The High Court discharged a freezing injunction and an access and imaging order due to the failure of the Applicants to comply with the duty of full and frank disclosure

The judgment reinforces the high bar for these equitable remedies and highlights the need for candour in IP enforcement strategies

Interim relief should be carefully considered for proportionality and must be supported by solid evidence to avoid being seen as excessive or intrusive

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In a decision handed down in February 2025, the High Court discharged a worldwide freezing injunction and an imaging and access order against the Defendants – Ralph Peters & Sons Ltd (RPSL) and Mark Jeffrey Peters – in respect of a claim for alleged trade mark infringement, passing off and unjust enrichment. While not on appeal at the time of writing, the decision raises salient issues around procedural integrity, the evidentiary burden for interim equitable relief and the limits of aggressive trade mark enforcement strategies in IP disputes.

Background

The Claimants, J&J Snack Foods Corporation and ICEE Corporation, are both US-based entities that own and distribute frozen beverages under the long-standing SLUSH PUPPIE trade mark, first registered in the UK in 1974. The Defendants, RPSL and its director Mr Peters, had previously acted as UK distributors under that brand until their distribution rights were revoked in 2019. The dispute concerns Phase 1 and Phase 2 claims (described below) in relation to the alleged unauthorised distribution and sale of products after the revocation of RPSL’s rights, with the Claimants alleging that Frozen Brothers Ltd (FBL), a subsidiary of RPSL, exploited the SLUSH PUPPIE brand.

On 3rd December 2024, the Claimants obtained a worldwide freezing injunction, covering £20m of assets, and an imaging and access order without notice to the Defendants. The Defendants applied to discharge the orders on grounds of the failure of full and frank disclosure (fair presentation) at the without-notice hearing, and the matter came before Mr Justice Fancourt in February 2025.

Fair presentation

Fancourt J reaffirmed the well-established principle that parties seeking relief on a without-notice basis must act in good faith and present their cases fairly. The Court justified the immediate discharge of the orders on the basis of the Claimants’ failure to explain why a without-notice hearing was required, and the failure of full and frank disclosure and fair presentation.

The Claimants were criticised for failing to present the foreseeable defence that the Defendants had continued use of the SLUSH PUPPIE brand under an implicit licence or commercial understanding. The Court also held that the Claimants had failed to provide sufficient evidence of the risk of dissipation or the loss or destruction of documents, having relied upon merely speculative evidence of Mr Peters’ dishonesty, including an allegation that Mr Peters had fabricated commercial documents/communications relating to a 2000 agreement between FBL and ICEE. This aligns with Thane Investments Ltd and others v Tomlinson and others, in which the Court of Appeal held that applicants must demonstrate a real, not merely speculative, risk of dissipation.⁽¹⁾

Fancourt J also found that the Claimants failed to clearly distinguish which facts and claims applied to Phase 1 versus Phase 2, noting that the legal tests differed between the two phases. Phase 1 concerned the Claimants’ allegation that the Defendants and FBL had used an identical sign to their trade mark on the basis of an allegedly fraudulent agreement (between 2019 and 2021). Phase 2 concerned the allegation that FBL’s use since 2021 of a similar sign for SLUSHY JACK’S amounted to trade mark infringement and passing off. For Phase 1, therefore, the legal test required proof of knowledge and intent, as well as infringement under s10(1) of the Trade Marks Act 1994. For Phase 2, the test was for infringement under ss10(2) and 10(3), including the need to demonstrate a likelihood of confusion and unfair advantage/detriment to the distinctive character or repute of the SLUSH PUPPIE trade mark.

The Court found that the claim for interim relief was based on the merits of the Phase 1 claims and the Claimant had made no argument to address the Phase 2 claims under ss10(2) and 10(3), or a passing off claim, for Phase 2. Additionally, the figures relied on for the quantum of the freezing injunction were the estimated infringing gross profits of FBL for Phase 2, and not those of Mr Peters and RPSL (ie, the Defendants). Fancourt J found that there was no good arguable case for the liability of Mr Peters (and RPSL) as principal tortfeasor rather than an accessory to wrongdoing by FBL. In accordance with the Lifestyle Equities decision,⁽²⁾ FBL’s estimated infringing gross profits were not the proper basis for assessing quantum. As accessories, Mr Peters and RPSL could only be liable for the profits they received.

Proportionality and discretion

In deciding whether to maintain, vary or discharge the orders, Fancourt J evaluated the intrusiveness and severity of the relief granted. The access order permitted entry into the private business premises of FBL, a non-party, with minimal notice, which the Court found disproportionate in the absence of compelling evidence of the risk of dissipation or the loss or destruction of documents. Ultimately, Fancourt J found that procedural deficiencies in the application justified the discharge of the orders. Although a fresh application on notice was not ruled out, the Court stressed that the breaches of duty of fair presentation were so serious that it would be inappropriate to regrant a freezing injunction.

Broader significance

This case is a stark reminder of the fundamental issues of implied licences and acquiescence within trade mark law, as well as of the ethical and legal rigour demanded by ex parte applications, demonstrating that interim measures must be deployed with precision, transparency and due regard to the rights of absent parties. It serves as a warning for IP rights holders seeking aggressive interim remedies without having first ensured that their case is procedurally robust and proportionate.

⁽¹⁾ [2003] EWCA Civ 1272
⁽²⁾ Lifestyle Equities CV and another v Ahmed and another [2024] UKSC 17; [2025] AC 1