APT Training & Consultancy Ltd v Birmingham & Solihull Mental Health NHS Trust
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 09 January 2019 |
| Neutral Citation | [2019] EWHC 19 (IPEC) |
| Docket Number | Claim No: IP-2017-000106 |
| Court | Intellectual Property Enterprise Court |
| Date | 09 January 2019 |
[2019] EWHC 19 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Birmingham Civil Justice Centre
Priory Courts
33 Bull Street
Birmingham B4 6DS
HER HONOUR JUDGE Melissa Clarke
(sitting as a Judge of the High Court)
Claim No: IP-2017-000106
Ms Charlotte Blythe (instructed by Howes Percival LLP) for the Claimants
Mr Steven Reed (instructed by Birmingham and Solihull Mental Health NHS Trust Legal Department) for the Defendant
Trial date: 8 October 2018
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
INTRODUCTION
This is my judgment following the first IPEC trial ever to be heard outside London. Paragraph 1.5 of the Intellectual Property Enterprise Court Guide of July 2016 makes clear that the Judges of IPEC are able and willing to sit outside London if the parties wish it and inform the court in good time for arrangements to be made. The parties in this case asked for it to be heard in Birmingham for their convenience and the court was able to accommodate that request. I do not know why it has taken so long, but I hope that it is the first of many IPEC trials to be heard elsewhere in England and Wales.
This is a claim for trade mark infringement and passing off in the arena of the provision of psychiatry and mental health training courses to those caring for people with mental health and behavioural issues.
The Second Claimant is a director of the First Claimant and the registered proprietor of the following trade marks, of which the First Claimant is the exclusive licensee:
i) UK Trade Mark No. 1515793 for the word mark “RAID” registered with effect from 15 October 1992 in respect of “educational services; provision of training; conferences; seminars; teaching; tuition; correspondence courses; all relating to psychology, behavioural problems, business and commerce” in Class 41 (“ UK Mark”);
ii) EU Trade Mark No. 8509242 for the word mark “RAID” registered with effect from 25 October 2009 in respect of, inter alia, “printed matter and publications; books, manuals; leaflets' instructional and teaching materials; pamphlets; brochures; stationery” in Class 16 and “educational and training services including educational and training services relating to psychology, mental health, behavioural problems, learning disabilities, substance misuse” in Class 41 (“ EU Mark”)
(together, the “ Registered Trade Marks”)
iii) the unregistered word mark ‘RAID’ (the “RAID Mark”)
The sign RAID as used by the First Claimant is an acronym for ‘Reinforce Appropriate, Implode Destructive’, which is the underlying message of training courses that it provides in a positive behaviour support approach for tackling challenging behaviour at source (“ RAID Courses”).
The First Claimant and its predecessors in title have been in the business of providing mental health training courses under and by reference to the RAID Mark (and later the Registered Trade Marks) since 1990. From 1990 to 20066 those courses were provided by the Second Claimant and his wife operating in partnership, and the Claimants say that in May 2006 the business of that partnership, including all of the goodwill built up in the RAID Mark and the UK Mark, was transferred to the First Claimant. It is not disputed that the NHS is the First Claimant's biggest customer and the First Claimant regularly runs RAID Courses within the NHS.
The Defendant is an NHS foundation trust that provides mental health care to people living in Birmingham and Solihull. NHS foundation trusts are semi-autonomous organisational units within the National Health Service. The Defendant provides a service under and by reference to the sign ‘RAID’ (“the Defendant's Sign”) as an acronym for ‘Rapid Assessment Interface and Discharge’. The Defence describes this as ‘a new model for patient assessment and discharge for individuals experiencing severe mental health crises and trauma who attend at hospitals, including those presenting to accident and emergency' (“ D's RAID Service”). The acute hospitals in which the Defendant provides such services are City Hospital, Queen Elizabeth Hospital, Solihull Hospital, Heartlands Hospital and Good Hope Hospital (“ the Birmingham Hospitals”). These are run by different NHS Trusts to the Defendant, and the services are provided pursuant to a service level agreement dated 6 June 2012.
THE PARTIES' POSITIONS
The Claimants allege that the Defendant's use of the Defendant's Sign in respect of the D's RAID Service infringes the Registered Trade Marks pursuant to sections 10(1), 10(2) and/or 10(3) of the Trade Marks Act 1994 (“ TMA”) and Articles 9(2)(a), 9(2)(b) and/or 9(2)(c) of the EU Trade Mark Regulation No. 2017/1001 (“ EUTMR”) and/or amounts to passing off of the RAID Mark.
The Defendant accepts that it uses the Defendant's Sign but denies that any such use amounts to infringement of the Registered Trade Marks or passing off.
THE ISSUES
His Honour Judge Hacon at a Case Management Conference on 31 January 2018 identified a list of issues, which is attached as Annex 1. I have reordered them and slightly reworded them to reach the following list of issues:
Infringement
i) Is the Defendant's Sign identical or similar to the Registered Trade Marks?
ii) Has the Defendant used the Defendant's Sign in the course of trade in relation to education and training services relating to health and related printed matter?
iii) Are the goods/services provided by the Defendant under the Defendant's Sign identical, and/or similar to the goods/services specified in the Registered Trade Marks?
iv) Who is the relevant public / average consumer?
v) Is the Defendant's use of the Defendant's Sign liable to affect the origin function of the Registered Trade Marks?
vi) Is there a likelihood of confusion between the Registered Trade Marks and the Defendant's Sign?
vii) Do the Registered Trade Marks have a reputation within section 10(3) of TMA /Article 9(2)(c) EUTMR? [This is no longer in dispute as the Defendant accepts that it does]
viii) Is the Defendant's use of the Defendant's Sign detrimental to the distinctive character and/or repute of the Registered Trade Marks?
Passing off
ix) Does the First Claimant own goodwill in the RAID Mark? [This is no longer in dispute as the Defendant accepts that it does]
x) Does the Defendant's use of the Defendant's Sign amount to a misrepresentation to the public?
xi) Have such misrepresentations caused damage to the First Claimant?
THE TRIAL
Although listed for 1.5 days the trial was heard on a single day on 8 September 2018 at Birmingham Civil Justice Centre. The Claimants were represented by Ms Charlotte Blythe, the Defendant by Mr Steven Reed. I thank them for their very helpful and well-structured written and oral submissions.
The Claimants rely on evidence of the following witnesses:
i) Dr William Davies, the Second Claimant. He filed a witness statement dated 13 April 2018, attended trial and was cross-examined.
ii) Ms Cheryl Knowles. She filed a witness statement dated 13 April 2017. She did not attend court. Her evidence is of limited relevance as much of it relates to reputation in the Registered Trade Marks and goodwill in the RAID Mark which are no longer disputed.
The Defendant relies on evidence of Professor George Tadros. He filed two witness statements dated 13 April 2018 and 27 April 2018. He was cross-examined and re-examined.
Dr Davies
Dr Davies is a consultant psychologist. His evidence is that he began to develop the RAID programme in 1990 as a new and positive approach to working with challenging behaviour. He started to provide courses shortly after. In 1992 he applied for the UK Mark in Class 41, later extended to Class 16 and extended specification for Class 41.
In 2000 Dr Davies wrote a book entitled “ The RAID Manual: A Relentlessly Positive approach to working with Extreme Behaviour”. By May 2006 he incorporated the First Claimant and transferred the goodwill in the RAID Mark and the UK Mark to it. The First Claimant has carried out all RAID Courses since then. Dr Davies' evidence is that more than 100,000 professionals and others have attended courses provided by the First Claimant, of which about 20,000 attended Raid Courses. He says the First Claimant employs circa 100 clinical and educational psychologists on a consultancy basis to deliver such courses. Dr Davies' evidence is that the First Claimant has continually run RAID Courses, which have been the top selling courses for the First Claimant and its predecessors in title, for the last 30 years. He described the RAID Courses as “the core of the First Claimant's business” and responsible for circa £300,000 of the First Claimant's annual turnover.
Dr Davies says that the NHS is the First Claimant's largest client and the First Claimant has run RAID Courses for numerous NHS Trusts, although not for the Defendant. It does run 32 other courses for the Defendant, however. None of the evidence I have summarised so far is disputed by the Defendant, and I accept it.
I found Dr Davies to be a good, thoughtful and open witness who was both credible and reliable. He was very careful, particularly in his oral evidence, to limit his evidence to what he had experienced and what he was able to recollect. I accept his evidence. Where the evidence of Dr Davies and Professor Tadros conflicts, and where there is support from other evidence or the inherent probabilities, I prefer the evidence of Dr Davies. Dr Davies expressed his...
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