AGA Rangemaster Group Ltd v UK Innovations Group Ltd

JurisdictionEngland & Wales
JudgeNicholas Caddick
Judgment Date08 July 2024
Neutral Citation[2024] EWHC 1727 (IPEC)
CourtIntellectual Property Enterprise Court
Docket NumberCLAIM NO. IP-2023-000036
Between:
AGA Rangemaster Group Limited
Claimant
and
(1) UK Innovations Group Limited
(2) Michael Patrick McGinley
Defendants

[2024] EWHC 1727 (IPEC)

Before:

Nicholas Caddick K.C.

(sitting as a Deputy High Court Judge)

CLAIM NO. IP-2023-000036

IN THE HIGH COURT OF JUSTICE

BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES

INTELLECTUAL PROPERTY LIST (CHD)

INTELLECTUAL PROPERTY ENTERPRISE COURT

Rolls Building

Fetter Lane

London, EC4A 1NL

Daniel Selmi (instructed by HGF Law LLP) for the Claimant

Simon Malynicz K.C. and Kendal Watkinson (instructed by Brandsmiths) for the Defendants

Hearing dates: 15 th and 16 th April 2024

Further written submissions on 29 th May, 5th June and 1 st July 2024

Nicholas Caddick K.C. (sitting as a Deputy High Court Judge):

Introduction

1

This is a trade mark and copyright infringement claim brought by the Claimant against the First Defendant as primary infringer and against Mr McGinley (the Second Defendant) as a joint tortfeasor on the basis of his actions as a director and the person in day to day control of the First Defendant. For convenience, I will, in general, refer to the Defendants collectively.

2

The Claimant manufactures and sells the well-known AGA range cookers (“AGA Cookers”), versions of which have been sold in the UK since 1929 and many of which are still operating after more than 50 years.

3

The First Defendant was set up in 2020 to launch a product known as the “Stone Cooker”, a range cooker with an electric control system (the “eControl System”) developed by Mr McGinley. However, the eControl System can also be fitted to AGA Cookers to convert them from running on traditional fossil fuels to running on electricity. In its skeleton argument, the Claimant makes clear that it does not object to the Defendants supplying eControl Systems to be fitted to AGA Cookers in the hands of customers. Its complaint relates to what is described in its skeleton argument as the Defendants' sale of complete retrofitted AGA Cookers fitted with the eControl System.

4

The Defendants accept that between October 2021 and June 2022 they sold 26 cookers fitted with the eControl System (some having two ovens, others having four ovens). I will refer to these cookers as the “eControl Cookers”. The Defendants say that these were all AGA Cookers that had been obtained from trade suppliers or as trade-ins from customers which they had, where necessary, refurbished and fitted with the eControl System. As sold, the eControl Cookers retained their “AGA” badges and, externally, looked the same as their AGA equivalents save that, in place of the temperature gauge fitted to the original AGA Cookers, the Defendants had fitted an “eControl System” badge. The two badges can be seen in the photographs below which are of an eControl Cooker that was the subject of a trap purchase which the Claimant made from the Defendants in April 2022.

5

The Claimant accepts that there is a legitimate aftermarket in the refurbishment and resale of AGA Cookers. 1 However, it believes that the Defendants' actions in relation to the eControl Cookers went beyond what is permissible and that the extent of the changes made by the Defendants meant that the cookers being sold were no longer the original AGA Cookers. It claims that in marketing and selling these cookers using the AGA name, the Defendants infringed its trade marks. It also claims that the control panels fitted by the Defendants to the eControl Cookers infringed the copyright in its design drawing for the control panel of its own electronically controlled AGA Cookers.

6

The Defendants deny infringement and have counterclaimed seeking to invalidate two of the six trade marks on which the Claimant relies.

The witnesses

7

The Claimant's first witness was David Carpenter. Mr Carpenter has been a Technical Director of the Claimant since 1999 and of its parent company since 2015. He gave evidence relating to the manufacture and use of AGA Cookers and about the strip down analysis that he carried out on the eControl Cooker shown in the photographs above. He explained why, in his view, the work that had been done on that cooker went beyond what he considered to be an acceptable level of refurbishment and why it might be damaging to the AGA brand. He was cross examined and, in closing, Mr Malynicz suggested that a lot of his evidence had been “highly tendentious”, that he had been “a little overzealous” in defending the Claimant's position and reluctant to accept that the eControl Cookers might have been better than the original unrefurbished AGA Cookers. I do not accept these criticisms. In my judgment, Mr Carpenter was a good witness doing his best to assist the court.

8

The Claimant also relied on the evidence of Martin Johnson. Mr Johnson was a senior product design and development engineer with the Claimant and gave evidence as to the creation of the design for the control panel on which the Claimant's copyright claim was based. He too was cross examined and I am satisfied that he was a straightforward and honest witness doing his best to assist the court.

9

Finally, the Claimant relied on the evidence of Jennifer Hyatt. As Sales and Marketing Director for the parent company of the Claimant, her role is to cultivate and enhance the reputation of the AGA brand and her evidence dealt in detail with the history of that brand and of AGA Cookers going back to 1922 and to the first sales of such cookers in the UK in 1929. In the event, the Defendants elected not to cross examine Ms Hyatt and her evidence can, therefore, be accepted as unchallenged.

10

The Defendants' sole witness was Mr McGinley. In closing, Mr Selmi questioned Mr McGinley's credibility and it is true that Mr McGinley came across as somewhat more combative than the Claimant's witnesses. However, I think it must be borne in mind that he was a personal defendant and the First Defendant is very much his company. Listening to his evidence, I formed the view that, for the most part, he engaged constructively with the cross

examination and was doing his best to assist the court. This impression was reinforced on reading the transcript of his evidence.

The trade mark claims

11

The Claimant's principal claims were that the Defendants' activities outlined above had infringed the following trade marks registered in its name:

Trade Mark

Filing date

Number

Services relied on

AGA

11 June 1931

523495

For, inter alia, “cooking apparatus” in class 11

AGA

14 July 1933

543075

For, inter alia, “oil or gas stove burners, all being made of metal or predominantly of metal” in class 11

AGA

14 March 2008

2425088

For, inter alia, “ovens, hobs, cookers, cooking ranges, stoves” in class 11

21 June 2006

2425089

For, inter alia “ovens; hobs; cookers; cooking ranges; stoves” in class 11

DO DO

17 July 1990

1433271

For “Apparatus and instruments for cooking and heating; parts and fittings for all the aforesaid goods; all included in class 11”

28 February 2015

3044627

For “Cooking, baking, warming, thawing and heating apparatus, installations and appliances namely range cookers, heat storage stoves and cookers, cast iron stoves and cookers; parts and fittings for all the aforesaid goods” in class 11

12

I will refer to these marks collectively as “the Claimant's Marks”, to the first three marks as “the AGA Word Marks”, to the fourth mark as “the AGA Badge Mark”, to the fifth mark as “the 2D AGA Mark” and to the sixth mark as “the 3D AGA Mark”.

13

The Claimant's case is that the way in which the Defendants had marketed and sold the eControl Cookers infringed the Claimant's Marks because it had involved:

(a) Use in the course of trade of signs identical to the registered marks in relation to identical goods – an infringement under s.10(1) of the Trade Marks Act 1994; and/or

(b) Use in the course of trade of signs identical or similar to the registered marks in relation to goods which are identical or similar to the goods for which the marks are registered and where there exists a likelihood of confusion on the part of the public — an infringement under s.10(2) of the Trade Marks Act 1994; and/or

(c) Use in the course of trade, in relation to goods, of a sign which is identical with or similar to the registered marks where those marks have a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of those marks – an infringement under s.10(3) of the Trade Marks Act 1994.

14

In their Defence, the Defendants put the Claimant to proof of the reputation and distinctive character of the Claimant's Marks and they denied infringement. The pleaded basis of that denial was that:

(a) As regards each of the Claimant's Marks, they have a defence under s.12 of the Trade Marks Act 1994 (the exhaustion of rights defence) because the eControl Cookers were AGA Cookers which had previously been placed on the market by the Claimant or with its consent;

(b) As regards the AGA Word Marks, they have defences under s.11(2)(b) and/or s.11(2)(c) of the Trade Marks Act 1994 because their use of the word “AGA” had been descriptive and/or to indicate that the eControl System could be used to “convert” genuine AGA Cookers;

(c) In relation to the 2D AGA Mark, there could be no infringement under s.10 of the Trade Marks Act 1994 because:

i. an image showing an eControl Cooker and/or the appearance of such a cooker is not “a sign”, does not distinguish or indicate the origin of goods and is not being used in relation to goods;

ii. there was no sufficient similarity between the image or appearance of the eControl Cookers and the 2D AGA Mark; and

iii. liability was excluded by the terms of the disclaimer to which the 2D AGA Mark is subject; and

(d) In relation to the 2D AGA...

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