Cormeton Fire Protection Ltd v Cormeton Electronics Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 18 January 2021 |
| Neutral Citation | [2021] EWHC 11 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Date | 18 January 2021 |
| Docket Number | CLAIM NO. IP-2019-000081 |
[2021] EWHC 11 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
Rolls Building, Fetter Lane, London EC4A 1NL
David Stone
(sitting as a Deputy High Court Judge)
CLAIM NO. IP-2019-000081
Mr Thomas St Quintin (instructed by McDaniel & Co) for the Claimant
Mr Tim Austen (instructed by Gateley Legal) for the Defendants
Hearing dates: 19 and 20 November 2020
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.
David Stone (sitting as Deputy High Court Judge):
Cormeton Fire Protection Limited, the Claimant, has since 1967 been in the business of providing mechanical fire protection solutions (including fire extinguishers). In 1989, to expand its business into electronic fire protection solutions (such as fire alarms), the Claimant teamed up (to use a neutral term) with Mr John Aitchison, the Second Defendant. Cormeton Electronics Limited, the First Defendant, was registered as the corporate entity to run this new endeavour from the Claimant's premises. All went well. In 2003, the First Defendant, requiring more space, moved out. Both parties continued to trade under names which included the word CORMETON, and used similar logos. While there were some reports of alleged confusion (to which I refer below), the parties continued to cross-refer work to each other, and were on good terms. This changed in or about 2015, when the parties fell out. In 2016, the Claimant applied to register the word CORMETON as a trade mark. Following pre-action correspondence, these proceedings were commenced in 2019. The Court is thus required to address the issue of two businesses which have traded in similar fields and under similar names for a long period of time, and which used to work together but which are now hostile to one another. In short, the Court is asked to determine who gets to use the word CORMETON, and for what goods and services.
The Particulars of Claim allege:
i) Infringement of UK trade mark number 3164199 for the word mark CORMETON (the Mark), registered for various goods and services in Nice classes 6, 9, 37, 40, 41, 42 and 45. Infringement is alleged under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 (the TMA);
ii) Infringement of copyright said to subsist in the following artistic work (the Work) under sections 16(1)(a), (b) and (c) of the Copyright Designs and Patents Act 1988 (the CDPA):
; and
iii) Passing off.
Specifically, the Claimant complains that use of the following signs (the Signs) constitutes trade mark infringement:
i) CORMETON;
ii) www.cormeton.co.uk (the Domain Name);
iii) the Work; and
iv)
(the Device).
The Claimant also alleges that the First Defendant has used the sign CORMETON ELECTRONICS (the CE Sign) in the course of trade in the supply and sale of mechanical fire protection equipment. The Claimant has no issue with the First Defendant using the CE Sign in relation to the supply and sale of electrical safety equipment, but wishes to prevent the First Defendant from using the CE Sign in relation to mechanical fire protection goods or services.
The Second Defendant is alleged to be jointly and severally liable with the First Defendant for the acts complained of, on the basis that he authorised, procured and/or directed those acts. The Defendants have admitted those allegations of joint and several liability, so I say no more about them.
The Defendants deny trade mark infringement (including on the basis of honest concurrent use), copyright infringement and passing off, and counterclaim for invalidity of the Mark under section 3(3)(b) and/or revocation under section 46(1)(d) of the TMA. Rather, the Defendants aver that the Claimant and First Defendant had operated in partnership between 1989 and 2003, and that on the dissolution of that partnership, the parties agreed that the First Defendant could continue using the CORMETON name under licence. In the alternative, the Defendants argue that the Claimant is estopped from denying a licence and/or has acquiesced in the First Defendant's use.
I should also make clear what the Claimant does not complain about. The Claimant is happy for the First Defendant to continue to trade under the CE Sign, carrying on the supply and sale of electrical safety equipment (alarms etc). However it asks the Court to stop the First Defendant from (i) using CORMETON on its own; (ii) from using the Domain Name; (iii) from using the Work and the Device; and (iv) from using CORMETON (including the CE Sign) in relation to a mechanical fire safety business (extinguishers etc).
Therefore, the simply phrased question I have set out above of “who gets to use the word CORMETON and for what goods/services” requires assessment of a significant number of sub-issues.
The trial was heard remotely. Mr Thomas St Quintin appeared for the Claimant. Mr Tim Austen appeared for the Defendants.
Although this judgment will be handed down following the United Kingdom's departure from the European Union trade mark regime on 31 December 2020, subject to one issue on estoppel/acquiescence to which I will return below, I was asked by both counsel to decide the case on the basis of the law as it stood at the time of the trial.
List of Issues
As is usual in the IPEC, the List of Issues was set at the CMC (determined without a hearing). All remained relevant at the start of the trial.
“ The Work
1. Is the Work an original artistic work created by Michael Warburton Snr and in which copyright subsists?
Goodwill and Reputation
2. Does the Mark have a reputation in respect of the goods and services for which it is registered and/or an enhanced distinctive character?
3. Have the Claimant and its predecessors generated and does the Claimant own goodwill attached to the Mark and/or the Work in respect of safety monitoring goods or services?
Partnership; Separation; Consent
4. Did the Claimant and the First Defendant form and trade as a partnership?
5. If so:
5.1 did the Work become a partnership asset?
5.2 did any goodwill attached to the Mark and/or the Work become a partnership asset?
6. What was agreed between the parties when they ceased working together in 2003?
7. Has the agreement reached between the parties when they ceased working together been terminated?
Copyright Infringement
8. Have the Defendants infringed copyright in the Work contrary to sections 16(1)(a), (b) and (e) of the CDPA?
Trade Mark Infringement and Passing Off
9. Does there exist a likelihood of confusion on the part of the public because the Signs and/or the CE Sign are identical or similar to the Mark, and used in respect of goods and services identical with or similar to those for which the Mark is registered?
10. Do the acts complained of affect, or are they liable to affect, one of the functions of the Mark?
11. Does the use of the Signs and the CE Sign take unfair advantage and/or is detrimental to the distinctive character and/or take unfair advantage of the repute of the Mark?
12. Was any such use of the Signs and the CE Sign in the manner set out at paragraph 11 above with due cause?
13. Have members of the public actually been confused as a consequence of the acts complained of?
14. Do the acts complained of cause a misrepresentation that damages the Claimant's goodwill in the Mark and/or the Work?
15. Is infringement of the Mark and/or passing off avoided because of honest concurrent use?
Authorisation
16. Have the acts of which complaint is made, or any of them, been conducted without the Claimant's authorisation?
Acquiescence and estoppel
17. Are the Defendants entitled to a defence of estoppel or acquiescence in respect of any acts that would otherwise be acts of copyright infringement?
18. Are the Defendants entitled to a defence of estoppel or acquiescence in respect of any acts that would otherwise be acts of passing off?
19. Are the Defendants entitled to a defence of estoppel or acquiescence in respect of any acts that would otherwise be acts of infringement of the Mark?
Validity of the Mark
20. Was the Mark, in whole or in part (and if in part, in what part) registered contrary to section 3(3)(b) of the TMA because it was on its filing date of 12 May 2016 of such a nature as to deceive the public?
Revocation of the Mark
21. Is the Mark liable to be revoked under section 46(1)(d) of the TMA because it is liable to mislead the public as a consequence of the use made of it by the Claimant or with its consent?
22. If so, from which date did the Mark become liable to revocation on the aforesaid basis?”
Issues 4 and 5 were conceded by the Defendant on the morning of the second day of the trial following the cross-examination of the Defendants' witnesses and all allegations of partnership were withdrawn.
As will be apparent, this was a large number of issues to be determined within the ambit of the usual IPEC two day hearing. Much of the trial was taken up by only a few of the issues. Many issues were covered only briefly, and some not at all. To decide the case, it is not necessary for me to examine in detail every controversy that arose. I have therefore, in this judgment, dealt only with the issues that make a difference to the outcome of the case, and have ignored those controversies which, though fiercely argued, are irrelevant...
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