The High Court has refused an application by Steadfast Capital Management LP for further details of the defence filed by Steadfast Financial Consulting Limited and its two co-defendants in a trade mark and passing off action.
Mr Justice David Keane delivered the judgment on 18 September 2020. The application concerned three requests for particulars of the defence and counterclaim. The court considered whether the additional information was needed to let Capital Management understand, in broad outline, the case it would face at trial.
Capital Management alleges that Financial Consulting infringed its registered STEADFAST trade mark and committed passing off and other wrongs. It seeks injunctions and financial relief. Financial Consulting denies the allegations, disputes that the mark had goodwill or reputation in Ireland, and says its use of its own name caused no confusion. It also counterclaims for revocation of the mark based on alleged non-use. Those claims and denials were not decided by this application.
The first request concerned the abbreviations Financial Consulting had used for its name. The company had identified “steadfastfinancial.ie” as a domain name and email address. Capital Management wanted confirmation that this list was exhaustive. The judge held that the existing particulars sufficiently outlined the defence: Financial Consulting said its use of its name and an abbreviation had not caused confusion. Whether the abbreviation had been used in a domain name and email address, and whether “Steadfast” appeared on the website, were matters for evidence at trial.
The second request asked whether Financial Consulting had searched for STEADFAST trade marks before adopting its name and, if not, why. The judge said the defence had broadly identified a descriptive use in accordance with honest practices defence. Whether a search had been reasonable was one factor for evidence and argument at trial, not a fact required to outline the defence. He also considered the request an interrogatory, for which Capital Management had not sought or received leave.
The final request concerned a potential passing off claim mentioned in Financial Consulting’s reply to a request for particulars. Financial Consulting had said it might have a claim if Capital Management later used the mark in Ireland in a way that caused confusion. The judge ruled that this possible future claim was extraneous to the current proceedings; if brought separately, it would have to be properly particularised there.
The court refused the application. It did not determine the underlying trade mark, passing off or revocation claims. The judge directed the parties to correspond about any issues arising from the judgment, including costs, and said that if they could not agree, short written submissions should be filed within 14 days.