Coreix Ltd v Coretx Holdings Plc and Others
| Jurisdiction | England & Wales |
| Judge | Mr Recorder Douglas Campbell |
| Judgment Date | 11 July 2017 |
| Neutral Citation | [2017] EWHC 1695 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP-2016-000100 |
| Date | 11 July 2017 |
[2017] EWHC 1695 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building Fetter Lane, London, EC4A 1NL
Mr Recorder Douglas Campbell QC
Claim No: IP-2016-000100
Thomas St Quintin (instructed by J P Mitchell Solicitors) for the Claimant Victoria Jones (instructed by DAC Beachcroft LLP) for the Defendants
Hearing dates: 7 th — 8 th June 2017
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 Recorder Douglas Campbell QC: Introduction
This is an action by the Claimant in respect of alleged infringement of UK registered trade mark 2 565 403 (word mark "COREIX") and passing off. The mark is registered in classes 9, 38 (including "telecommunication services"), and 42 (including "computer services"). This trade mark registration has effect from 25 November 2010, although the COREIX mark itself has been used by the Claimant for such services since 2003. There is no validity or revocation challenge to the Claimant's mark.
The Third Defendant ("D3") was incorporated in 2004 under the name CONNEXIONS4LONDON LTD and traded under the mark C4L in relation to, inter alia, telecommunication services and computer services. In November 2013, D3 started to use the mark "coreTX" in relation to the provision of a high performance Multiprotocol Label Switching (MPLS) network which was to be used to enable such services, and in particular to replace its existing Cisco network. It will be noted that the first 4 letters of this mark ("the old mark") were in lower case. D3 also applied for and obtained UK registered trade mark no. 3 030 562 for the word mark 'CORETX' (all in capitals) with effect from 14 November 2013 in relation to services in Class 38. The Claimant was aware of D3's old mark and its corresponding trade mark registration but did not issue any legal proceedings against D3 at that time.
The Sixth to Ninth Defendants originally traded as 'Selection Services', a managed service provider business. Following a series of corporate transactions in 2015, all of the Defendants became part of the same group providing a variety of telecommunication and computer services. This was in effect an amalgamation of the C4L and Selection Services businesses. I will refer to the Defendants generally save where it is necessary to distinguish them.
In circumstances which I will explain further below, the Defendants decided at some point in early 2016 to adopt the mark "CORETX" and an associated logo for use by their group as a whole. It will be noted that the 2016 version of the mark has the first 4 letters in capitals. I reproduce it later in this judgment.
The Defendants formally launched and introduced their CORETX mark and logo at the Cloud Expo industry event, supported by an email sent by Mr Andy Ross, D3's Chief Executive Officer, on 12 April 2016. Mr Ross's email was entitled "Official Name Change" and explained "… we are excited to officially announce that Castle Street Investment and its recently acquired subsidiaries of C4L and Selection Services have rebranded to CORETX". The Claimant received a copy of this email and (as it pointed out more than once during the trial) it objected to the Defendants about their new mark and logo within 77 minutes of such receipt, having taken legal advice in the interim.
The Claimant submits that the Defendants' use of their "CORETX" mark and logo infringes its registered trade mark under both ss 10(2) and 10(3) of the Trade Marks Act 1994 (ie Arts 5(1)(b), 5(2) of the Trade Marks Directive) and also amounts to passing off. It is not disputed that a number of services in relation to which the Defendants have used this mark are identical to those for which the Claimant's mark is registered but the Defendants submit that there is no likelihood of confusion, as is required by s 10(2). In relation to s 10(3), the Defendants dispute four distinct aspects of the Claimant's case. Passing off is also denied.
Furthermore the Defendants raise a specific free-standing defence of estoppel and acquiescence to the allegations of trade mark infringement and passing off. The Claimant disputes that this is available as a defence to trade mark infringement as a matter of law, but submits that the defence fails anyway.
It was accepted by the Defendants that if one Defendant was liable for trade mark infringement or passing off they were all liable, save for the Fifth Defendant (D5) which the Defendants said had never actually traded under any of the CORETX marks and which I was told was no longer part of the Defendants' group. The Defendants left open the possibility that all of the Defendants could benefit from the defence of estoppel and acquiescence but the Claimant submitted that it could only be available to D3.
The Claimant seeks a declaration of invalidity of D3's UK registered trade mark no. 3 030 562, and also seeks relief in relation to various domain names owned by D3 including coretx.com and coretxnetwork.com. Virtually no time was spent at trial on any of these matters. Instead, the time at trial was spent on s 10(2), actual confusion, and estoppel.
At the outset of the hearing I had to deal with two housekeeping matters. One related to a statement signed by a Mr Clive Stone. I deal with this in more detail below. The other related to D3's use of the old coreTX mark between 2013 and 2016. I ruled that since the Claimant's Particulars of Claim did not allege that D3's said use of the old mark infringed, the issue of infringement by the old mark over that period could not be raised at the trial. However I made it clear that the evidence about the old mark's use over that period remained relevant and admissible to the plea of estoppel.
The witnesses
The Claimant's witnesses
I heard oral evidence on behalf of the Claimant from Mr Alan Dean, Mr Pavel Ganchev, Mr Tristan Lee-Johnson, and Mr Stephen Latter. All are employees of the Claimant.
Mr Dean has been a director of the Claimant since 1 June 2004 and its managing director since 28 June 2012. He gave evidence about the Claimant's business, its customers, promotion of its mark, the mark's reputation, D3's use of the coreTX mark and the Claimant's reaction to it, his reaction to the 2016 rebrand, the Defendants' business, confusion between the Defendants' business and that of the Claimant, and damage to the Claimant's mark.
The Defendants submitted that Mr Dean's evidence was "tainted" by my ruling in relation to the coreTX mark. I reject this. Mr Dean was an honest witness and his evidence was not in any way "tainted". I was impressed by his willingness to make concessions which were adverse to his case and in favour of the Defendants. For instance he freely conceded that the Defendants could have taken some comfort from the Claimant's failure to sue on D3's old mark even though he could not have had any first hand knowledge about that.
Mr Ganchev is a data centre technician at the Claimant, a role he has carried out since August 2009. Mr Lee-Johnson joined the Claimant in 2010 and has been its head of sales since 2013. Mr Latter has been Service Delivery Manager at the Claimant since January 2016. All 3 of them gave evidence relating to alleged confusion. Mr Lee-Johnson could have been more careful, but otherwise they were all good witnesses.
The Defendants' witnesses
I heard oral evidence on behalf of the Defendants from Mr Mathew Hawkins, Mr Johnathan Lee, Mr Gary Barter, and Mr Julian Phipps. All are or were employees of one or more of the Defendants.
Mr Hawkins founded D3 in 2000. He was at various points a director of each of D1 to D5 but resigned from all positions within the Defendants' group on 8 September 2016. He was not as careful as he might have been either. For instance he went out of his way to give evidence about an email from a Mr Paul Harvey in which he said the Claimant considered whether the Claimant should rebrand. Mr Hawkins then relied on this email to say that the Claimant's decision to sue the Defendants instead of rebranding itself was unconscionable. However as his own exhibit showed this email was actually written by a Mr Paul Hughes of NTL World, and not by anyone within the Claimant at all. On matters within his knowledge he was a good witness.
Mr Barter had joined D3 in 2012 and is now Head of Product Management at all of the Defendants except D5. His evidence also covered the creation of the coreTX network in 2013 and its gradual launch through 2014 and 2015. He said that although coreTX was used alongside the C4L brand over this time, C4L remained D3's primary brand. He was not involved in what he called the decision to rebrand the Defendants to CORETX in April 2016. He was a good witness although his evidence was largely duplicative of that given by Mr Hawkins.
Mr Lee was the Commercial Director of all Defendants except D5. He joined Selection Services in January 2014, initially on a temporary basis. He was a fair witness but his evidence was largely duplicative of that provided by other witnesses for the Defendants and it was barely mentioned in closing submissions.
Mr Phipps was, and/or had been, a director of every Defendant at one time or another and is currently Chief Financial Officer of D1-D4, D6-D9. Much of his evidence referred to things done or said by Mr Andy Ross, whom I have already mentioned. Mr Ross was and is...
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