Biba Ltd v Stratford Investments Ltd
| Jurisdiction | England & Wales |
| Date | 1972 |
| Year | 1972 |
| Court | Chancery Division |
Contempt of Court - Civil contempt - Company, by - Undertaking given by company not to infringe plaintiff's trade mark - Breach by company of undertaking - Director's liability - Whether undertaking equivalent to order or judgment - Whether director liable to committal proceedings -
A company gave an undertaking that it would not infringe whether by its directors, officers or by their servants or agents, the registered trade mark “Biba” which was the property of the plaintiff, nor advertise for sale or sell shirts under or by reference to the word “Biba.” The plaintiff subsequently alleged that the undertaking had been breached by the company and moved for the committal of a director of the company for contempt.
On a preliminary point as to whether the director, who had neither aided nor abetted the contempt, could be liable to committal proceedings under R.S.C., Ord. 45, r. 5F1, for breach by the company of its undertaking, the question arose whether Ord. 45, r. 5, applied only to a case where an order had been disobeyed and not to the breach of an undertaking:—
Held, that for the purposes of R.S.C., Ord. 45, r. 5, an undertaking given to the court and embodied in a written order of the court, to abstain from an act, had the same effect as an order or judgment enjoining that act, and was thus equivalent to an injunction; it followed that the director was liable to proceedings for contempt under Ord. 45, r. 5, and had a case to answer.
The following cases are referred to in the judgment:
Attorney-General v. Wheatley & Co. Ltd. (
Milburn v. Newton Colliery Ltd. (
Ronson Products Ltd. v. Ronson Furniture Ltd. [
The following additional case was cited in argument:
Broad & Co. Ltd. v. Graham Building Suppliers Ltd. (No. 1) [
MOTION
The plaintiff, Biba Ltd., the proprietor of the registered trade mark “Biba,” used the name “Biba” in relation to a garment which was known as a “Biba top” or “Biba tee-shirt.” On July 18, 1972, the plaintiff served a writ and notice of motion upon the defendant company, Stratford Investments Ltd., who were multiple clothing retailers, to stop the defendant company selling garments described as Biba tee-shirts “which had not in fact been made by the plaintiff. On July 21, 1972, before Megarry J., the defendant company agreed to an undertaking which was embodied in a court order in the following terms:
“… that [the defendant company] will not do (whether by their directors or officers or by their servants or agents …) the following acts … that is to say (1) infringe the registered trade mark B898971 … and (2) advertise, offer for sale, or sell shirts or other articles of clothing under, or by reference to the word Biba or under or by reference to any other trade mark colourably resembling the … trade mark. This court doth not think fit to make any order on the motion.”
On August 30, 1972, the plaintiff moved for an order to commit for contempt, Michael Howard Lawson, a director of the defendant company, which was alleged by the plaintiff to have sold or offered for sale shirts under or by reference to the trade mark “Biba” in breach of the undertaking given on July 21.
A. E. D. Watson for the plaintiff.
R. R. H. Jacob for Mr. Lawson and the defendant company.
BRIGHTMAN J. This is a preliminary point arising on a motion to commit for contempt. It raises the question of the extent to which a director of a limited company is liable to committal proceedings on account of the company's breach of an undertaking to the court.
The plaintiff in the action is a company called Biba Ltd. This is a concern which operates a well known boutique for the sale of fashionable “gear” to young people. It is the proprietor of the registered trade mark “Biba,” and it uses the name Biba in relation to a vest or shirt equipped with drawstrings which is worn by young ladies and is sometimes known as a “Biba top” or “Biba tee-shirt.” The defendant company, Stratford Investments Ltd., is a multiple retailer of fashionable clothing with shops in Oxford Street, Kensington and Chelsea and, I think, elsewhere. One director of the defendant company is a Mr. Michael Howard Lawson, a solicitor in practice in London, who has a 25 per cent. interest in the...
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