English High Court strikes out bad faith ‘Revolax’ TM

A Warrington-based distributor of aesthetic and cosmetic products has lost its UK trademark for a dermal filler brand after the English High Court found it to have registered the brand in bad faith.

In a judgment handed down yesterday, June 23, the court found that Fox Group International had threatened wholesaler Teleta Pharma with trademark infringement action, despite knowing it didn’t own exclusive rights for the ‘Revolax’ brand.

Fox became the exclusive UK distributor of dermal filler Revolax in 2017, having signed an agreement with manufacturer Across, based in South Korea.

The UK company subsequently registered a UK trademark for ‘Revolax’ in 2018, despite a clause in the distribution agreement which explicitly designated Across as the owner of all IP rights for the brand.

Fox later sued Teleta for trademark infringement, after Teleta sourced genuine Revolax dermal fillers sold in the EU with the consent of Across, and resold them in the UK.

Fox dropped its infringement claims in 2019 but had to face a Teleta counterclaim arguing that the UK trademark for ‘Revolax’ was invalid. In yesterday’s judgment, the court ruled in Teleta’s favour after finding that Revolax did not have the consent of Across to register the mark in the first place.

According to Judge Melissa Clark, Fox didn’t present credible evidence of any agreement with Across other than the distribution agreement which assigned all IP rights for Revolax to the South Korean manufacturer.

In her ruling, Clark described the case as a “cautionary tale” for potential litigants in trademark infringement proceedings.

“The moral of this particular story is, like that of many cautionary tales, simple and seemingly obvious,” Clark wrote, advising potential litigants to check that the allegedly infringing goods were not genuine branded products and whether they actually owned the rights for the brand in question.

“Had [Fox Group] taken those steps, it would not have had to discontinue its claim against [Teleta] for trademark infringement with the costs consequences that follow. Nor would it find itself defending the defendant's counterclaim for trademark revocation on the grounds of bad faith, and for damages for groundless threats,” Clark added.

Costs will be determined at trial unless the parties strike an agreement.

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