December 6, 2021
This case relates to conflicting claims to rights in STEALTH for audio headsets for video games, including rights acquired after the disputes arose, which are asserted to give backdated rights to one of the parties. ABP Technology Ltd, which sells computer gaming accessories, including audio headsets for use on gaming platforms, owns UK registered word mark STEALTH (registered on 6 February 2017) and a UK registered device mark for STEALTH VR (registered on 24 March 2020) in relation to “audio headsets for playing video games”. Voyetra Turtle Beach, Inc is a global gaming accessory manufacturer headquartered in New York state. It designs, manufactures, markets and sells gaming headsets for multiple platforms. As of 2017, it claimed to have around 42% of the world market share in gaming headsets. In 2018, Voyetra failed in an attempt to register STEALTH as a trade mark in respect of, inter alia, “headsets for use with computers; headphones”, and for a declaration that ABP’s registration of STEALTH VR was invalid. The IPO found that the first actionable UK use by ABP’s predecessor in title of the STEALTH mark in relation to headphones was in early to mid-2014, which pre-dated the earliest date on which Voyetra had generated any goodwill in the UK attached to the sign STEALTH.
In November 2020, ABP issued trade mark infringement proceedings against Voyetra. Voyetra relied on the defence of honest concurrent use of the STEALTH mark. On 28 January 2021, Voyetra instructed Name Creations Ltd to acquire, on its behalf, a UK trade mark registered in May 1996 by REL Acoustics Limited for STEALTH for “Hi-fi apparatus, instruments and loudspeakers; parts and fittings for all the aforesaid goods” (the REL Mark). On 15 June 2021, NCL assigned the REL Mark to Voyetra. ABP applied for summary judgment of its entire claim. In response, Voyetra applied for permission to amend its pleadings to:
- add that Voyetra’s use of the STEALTH sign was in fact use of the REL mark;
- plead acquisition of the REL Mark as part of its case on honest concurrent use; and
- add a counterclaim that ABP’s registrations were invalid as a result of the earlier registration of the REL Mark, and that ABP’s use of the STEALTH marks amounted to infringement of the REL Mark.
On the summary judgment application, Mr Justice Miles was not satisfied that Voyetra lacked a real prospect of successfully defending the claim on the basis of honest concurrent use. ABP argued that in previous cases in which the defence of honest concurrent use had succeeded the periods of concurrent use were much longer (e.g., 30 years and over 90 years). In Miles J’s view, it was arguable that the length of use was only one factor going to the ultimate question of whether the trade mark served to indicate more than a single origin of goods or services. Miles J found that this was not an appropriate case for summary judgment.
As for the application to amend, Miles J said that the fact that Voyetra had not told ABP that it planned to acquire the REL Mark was no doubt galling for ABP, but there was nothing in the legislation or the court’s processes that required a party to disclose its commercial plans. Further, since the REL Mark was on the register, it had always been possible for ABP to search for and seek to acquire it or apply to revoke it.
As for the proposed counterclaims, to succeed, Voyetra had to establish that the REL Mark had been put to genuine use within the UK by the proprietor or with its consent in relation to the registered goods within the five years before the filing dates of ABP’s registered marks, which were February 2017 for STEALTH and March 2020 for STEALTH VR. Voyetra argued that there was such genuine use as a result of Voyetra’s sales of headsets under the STEALTH sign from 2014 onwards. Miles J held that it was not arguable that the acquisition of the REL Mark in January 2021 had transformed the real world of objectively ascertainable facts, which were that, at the relevant time, REL had owned the REL Mark and had not consented to Voyetra using it.
As for Voyetra’s proposed counterclaim for infringement of the REL Mark, ABP argued that since the IPO had concluded that its registered marks could not be challenged, it had a complete and unanswerable defence to the infringement claim. Miles J disagreed. It could not be said at this summary stage that the entire counterclaim was unarguable to the necessary standard.
Finally, as for Voyetra’s application to amend in order to use the REL Mark as part of its honest concurrent use defence, Miles J held that the events from 2014 onwards had to be assessed in their proper historical context and could not be changed by Voyetra’s much later decision to acquire the REL Mark. Miles J therefore dismissed ABP’s application for summary judgment and permitted Voyetra to make some, but not all, of its proposed amendments to the defence and counterclaim. (ABP Technology Ltd v Voyetra Turtle Beach, Inc  EWHC 3096 (Ch) (19 November 2021) — to read the judgment in full, click here).