Mark Capital Management Limited v Ares Management LLC & Ors

Facts

The claimant, Mark Capital Management Limited, is the registered proprietor of a UK trade mark for the word MARK in relation to various services relating to real estate investment and management. It brought a claim against the defendants, Ares Management LLC, Ares Management Limited, Ares Management Corporation and Ares MF UK Management Limited, for trade mark infringement under section 10(2) of the Trade Marks Act 1994 and section 10(3) of the Trade Marks Act 1994, and for passing off. The defendants have used a number of signs, including MARQ, MARQ LOGISTICS, and two device marks consisting of the word MARQ or the words MARQ LOGISTICS surrounded by a broken rectangular blue border. The parties agreed that the matter should proceed in the Flexible Trials Scheme in the Intellectual Property List of the Business and Property Division of the High Court. The matter came before Mr Justice Tappin on questions about the scope of disclosure, in particular disclosure by the defendants. The claimant sought disclosure of documents showing the rationale for the defendants' adoption of the signs MARQ and the MARQ composite sign, relying on paragraphs 39(e) and 41 of its Amended Particulars of Claim, which form part of the section 10(3) of the Trade Marks Act 1994 allegation. It also sought disclosure of documents going to a likelihood of confusion, not only to actual instances of confusion.