Where in a passing off and infringement action the same claimant had brought successive actions arising out of the same set of facts against separate defendants, it was not in the circumstances an abuse of process.Action by the claimant ('Coca-Cola') against the defendants ('Ray Senior' and 'Ray Junior') by reason of their alleged participation in the infringement of Coca-Cola's registered trade marks and passing off. Coca-Cola was a manufacturer and supplier in the UK of a well-known range of soft drinks. The marks "Coca-Cola", "COKE" and "Diet COKE" were household names and valuable goodwill accrued to Coca-Cola by reason of them. In August 2001, Coca-Cola discovered what they thought was a counterfeiting operation. The operation was said to have involved the importation by Capella Food & Drinks Ltd ('C Ltd') from Turkey of large quantities of cola contained in unlabelled bottles which Coca-Cola asserted were confusingly similar to their bottles. The labelling took place at an industrial estate which was raided by Trading Standards Officers following a tip-off. A first trade mark and passing off action was commenced by Coca-Cola in 2001 against, inter alia, C Ltd and one of its directors, ('Mr X'). In a judgment given in 2002 the defendants were found liable for trade mark infringement and passing off. Ray Junior and Ray Senior had given evidence at the first trial and it was the revelations that arose in their cross-examination that convinced Coca-Cola that they had been major players in the operation. Ray Senior denied any involvement in the operation and Ray Junior denied any material involvement in the operation. Ray Junior submitted that the action against him was an abuse of the process of the court and should be dismissed. He contended that if Coca-Cola had been minded to sue him at all, they should have sued him in the first action, as Coca-Cola had known from an early date that Ray Junior had been at the counterfeiting premises on at least two occasions and that he had owned fifty per cent of C Ltd's shares and was a director and a partner of Mr X.HELD: (1) The bringing of the action against Ray Junior could not in the circumstances amount to an abuse of process. (2) Ray Junior was not being harassed by successive litigation and there was no justice in the proposition that the bringing by Coca-Cola of a successful action against other defendants automatically precluded the later bringing of an action against him. (3) In any event it was too late for Ray Junior to take the point that the action against him had been an abuse of process. If it was ever an abuse it had to have been an abuse from the moment the claim form had been issued and that would have been the time that Ray Junior could and should have sought to strike the action out. Instead he had put in a defence and had defended the claim on its merits. His defence had raised no allegation that the action had been an abuse of process and it was now too late to take the point. (4) A defendant was thought to know whether the proceedings against him were oppressive. If he defended on the merits, this was to be taken as acquiescence (see Johnson v Gore Wood (2001) 2 WLR 72). Ray Junior had acquiesced in the bringing of the action against him. That did not preclude him from defending it on the merits but it did preclude him from saying at trial that the action should be dismissed on the ground that its commencement had been an abuse of process and that it should never have been brought at all. (5) The purpose of the operation was to create a product which the innocent purchaser would assume was a genuine "Coca-Cola" product whereas it was a counterfeit product. The operation was directed at perpetrating a fraud both on Coca-Cola and on the consuming members of the public. Those personally participating in the operation had to be answerable accordingly. (6) The evidence indicated that Ray Junior had been directly and personally involved in the conspiracy sufficiently to make him liable for the torts committed or threatened in the course of carrying out the operations.(7) The claim could not be made out against Ray Senior and therefore the claim against him would be dismissed.Judgment accordingly.

[2003] EWHC 2488 (Ch)