Compass Publishing BV v Compass Logistics Ltd

JurisdictionEngland & Wales
CourtChancery Division
JudgeMr Justice Laddie
Judgment Date24 Mar 2004
Neutral Citation[2004] EWHC 520 (Ch)
Docket NumberClaim No HC 02 C02700

[2004] EWHC 520 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Before:

The Honourable Mr Justice Laddie

Claim No HC 02 C02700

Compass Publishing Bv
Claimant
and
Compass Logistics Ltd
Defendant

Mr Iain Purvis (instructed by Wragge & Co for the Claimant)

Mr Roger Wyand QC and Mr Michael Edenborough (instructed by Hepworth Lawrence Bryer & Bizley for the Defendant)

Hearing dates: 20 and 29 –30 January 2004

Approved Judgment

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.

Mr Justice Laddie Mr Justice Laddie

Mr Justice Laddie:

1

In this action the claimant is Compass Publishing BV. It is part of a group of companies engaged in business consultancy worldwide ("the Compass Group"). The ultimate parent of this group is a company called Compass International BV. The Claimant owns all the registered trade marks which are used by the group companies throughout the world, including three which are in issue in these proceedings. The companies within the group which trade under the name COMPASS within the United Kingdom are called Compass Management Consulting Limited and Compass Limited.

2

There are three registered trade marks relevant to these proceedings. They are:

(a) UK Trade Mark 1 334 448 "COMPASS" filed on 5 February 1988 and registered in class 42 for :

"comparative analysis studies of performance and efficiency of computing, computer systems and data-processing; evaluation of performance and efficiency of computing, computer systems and data-processing against bench-mark references; advisory and consultancy services, all related to the aforesaid comparative analysis and evaluation; all included in class 42". (This is referred to below as "the 1988 UK Mark".)

(b) Community Trade Mark 136 911 "COMPASS" filed on 1 April 1996 and registered in three classes as follows :

"(i) Class 9 : Computer programs; computer software ; pre-recorded data-carriers, (ii) Class 35 : Business consultancy; business management consultancy; business organisation consultancy; consultancy and advisory services based on comparative analysis and (iii) Class 42 : Professional consultancy; consultancy in the field of information technology; comparative-analysis studies". (This is referred to below as "the CTM")

(c) UK Trade Mark 2 110 283 "COMPASS" filed on 13 th September 1996 and registered in two classes as follows:

"(i) Class 35 : Business consultancy based on comparative analysis and (ii) Class 42 : Professional consultancy based on comparative analysis." (This is referred to below as "the 1996 UK Mark").

3

The Claimant does not carry on trade. Other members of the Compass Group use the marks under licence and have done so for some years. In this action, no point is taken as to the fact that the marks are not used by the Claimant itself but by other Group companies. References in this judgment to use by the Claimant should be read accordingly.

4

The Defendant is Compass Logistics Limited. It was incorporated in April 1993, under the name "Oracle Logistics International Limited". On 15 May 1995 it changed its name to "Compass Logistics International Limited". On 15 May 2000 it changed its name again, to the one it currently uses. It is said that, since May 1995, it has traded under or by reference to the name or mark "Compass Logistics" although occasionally that has been abbreviated to "Compass" alone. The company offers management consultancy services. As its name suggests, this involves advising clients in relation to logistics and the supply chain. It offers project management services to assist clients in the implementation of the consultancy recommendations it makes. By the time the claim form in this action had been served, it had achieved an annual turnover of just under £1M under its name.

5

The Claimant alleges infringement of each of its three registered trade marks. There is no claim to passing off. It is no part of the Claimant's case that there has been confusion in the market place between the Defendant and its business on the one hand and the Claimant (or any other member of the Compass Group) and the latter's business on the other. The Defendant asserts that there has been no confusion.

6

The Defendant denies infringement. It also raises a Part 20 claim for revocation and invalidity of the trade marks or the relevant parts of them. The purpose of the latter claim is to ensure that, if the Claimant has any rights in its registered trade marks, they do not extend to the type of services offered by the Defendant.

7

Although separate issues of infringement and validity arise in relation to each of the marks in issue, there is a considerable area of overlap. Furthermore both Mr Iain Purvis, who appears for the Claimant, and Mr Roger Wyand QC, who appears for the Defendant, agree that, save in respect of one issue, there is no need to consider separately the 1996 UK Mark. All the issues which relate to it are determined by the outcome of the issues relating to the other marks. It is convenient to consider first the issues of infringement and validity as they relate to the CTM.

The CTM – (i) Infringement

8

Article 9 of Council Regulation 40/94 provides:

"1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade :

(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

(b) any sign where, because of its identity with or similarity to the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood or confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark…."

9

The Claimant argues that, on the assumption that the CTM is valid, the Defendant infringes under both of these provisions.

10

As far as the claim under Article 9.1(a) is concerned, the Defendant accepts that it has used its sign in respect of identical services, that is to say on business consultancy services within Class 35. The area of dispute between the parties in relation to infringement is as to whether the Defendant uses a sign which is identical to the registered mark. The Claimant puts its case in two ways. First, it argues that the Defendant uses "COMPASS" alone. This is the mark as registered. Second, it says that the sign "COMPASS LOGISTICS" is also identical to the registered mark.

Does the Defendant use "COMPASS" alone and, if so, to what extent?

11

There is no doubt that, from time to time, the Defendant has referred to itself and the services it offers by reference to the sign "COMPASS" alone. Only a small number of the Defendant's documents were disclosed for the purpose of the action. It was not made clear what the parameters for selection were. There appears to have been almost no disclosure of any of the correspondence with clients and potential clients. Nevertheless, I think Mr Purvis is prepared to accept the documents which have been produced as a reasonable snapshot of the use of the signs "COMPASS LOGISTICS" and "COMPASS" in the Defendant's documentation. Two examples illustrate this use. The first is a proposal sent by the Defendant to Becton Dickinson in June 1966. On the cover is a logo consisting of a compass design together with the words "COMPASS LOGISTICS". At the bottom of the page is a reference to "Compass Logistics International Ltd". There are a number of references to "COMPASS LOGISTICS" in the body of the proposal. The report also contains the following:

" Identification of targets

1

BD would identify targets for Europe and possibly USA.

2

Compass would identify targets for the Far East and possibly UK.

3

BD and Compass would then categorise into target types.

4

Identify possible contact name and send out a mailshot in the name of Compass thus avoiding any mention of BD.

5

Advertising is a further option. BD would identify the appropriate trade press. Compass would draft and design advertisement and agree with BD. The advertisement would be placed in the name of Compass. Responses would then be discussed and evaluated."

"BD" in this passage is a reference to Beckton Dickinson.

12

It appears that the Defendant has also used the sign "COMPASS" alone in more general literature. For example when it changed its name from "ORACLE", the Defendant sponsored after dinner liqueurs and port at the Logistics Conference 1995 held in Birmingham in June of that year. In the conference programme, the Defendant's sponsorship is publicised. The copy refers to Compass Logistics having been renamed. The last paragraph reads as follows:

"If your need is for expertise and support of the right quality when addressing your next project or development, then Compass are ideal partners to help in the process."

It is not disputed that this wording was almost certainly composed and supplied by the Defendant.

13

Mr Wyand argues that this sort of use should be disregarded as de minimis. I do not accept that submission. Mrs Bell, the wife of one of the founding members of the Defendant, gave evidence in relation to this. She said that in conversation members of the company say "COMPASS LOGISTICS" sometimes and "COMPASS" sometimes. She described it as a habit. She said that this was done verbally but that it was not normally done in written documents. What was apparent from her testimony was that there was no rule or practice within the Defendant not to use "COMPASS" alone, nor was it thought improper to use it. This is not...

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