Cormeton Fire Protection Ltd v Pyrocel Ltd, Formerly Cormeton Electronics Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 26 August 2021 |
| Neutral Citation | [2021] EWHC 2384 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | CLAIM NO. IP-2019-000081 |
[2021] EWHC 2384 (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 McDaniels Law) for the Claimant
Mr Dominic Hughes (instructed by Gateley Legal) for the Defendants
Hearing date: 18 August 2021
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 a Deputy High Court Judge):
Following a hearing on 19 and 20 November 2020, I gave judgment in these proceedings on 18 January 2021. My reasons for judgment can be found at [2021] EWHC 11 (IPEC) (the Main Judgment). The background to this dispute is set out in the Main Judgment, from which I excerpt here this brief summary from paragraph 1:
“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.”
Relevantly for the purposes of this judgment, I found that in 2003 the Claimant and the First Defendant had agreed that the First Defendant would not trade under CORMETON ELECTRONICS or CORMETON ELECTRONICS LIMITED in relation to mechanical fire safety goods and services – rather it would only trade in the supply and sale of electrical fire safety goods and services.
Also on 18 January 2021, following hand-down and a form of order hearing, I made a series of orders (the Order). The Order included injunctions (at paragraph 1), delivery up (paragraphs 2 and 3), a standard order for Island Records v Tring disclosure (paragraph 4) and further orders for the Claimant to elect a damages enquiry or account of profits.
I refused the Claimant permission to appeal part of my Order relating to the Claimant's copyright claim. On the renewal of that request before the Court of Appeal, that court also refused permission.
Unfortunately, that has not resolved matters between the parties. The Claimant now returns to the court by application notice seeking a further three orders:
i) a declaration that automatic gaseous extinguishing systems ( AGEs) and automatically operated ventilation systems ( AOVs) are mechanical fire safety goods and services, and therefore not goods and services in which the First Defendant is entitled to trade under the CORMETON ELECTRONICS name, following the injunction granted in the Order;
ii) an order for further information pursuant to paragraph 5 of the Order, that is relating to what the Claimant says is insufficient information provided for the purposes of Island Records v Tring disclosure prior to the Claimant's election of an account of profits or damages enquiry; and
iii) costs.
Whilst smoke dampers were mentioned before me, I was not asked to make any particular ruling in relation to them.
The Claimant asked that I deal with its application on the papers, and evidence and detailed written submissions were filed by both sides. The Defendants filed further written submissions requesting a hearing, with both sides indicating that matters had somewhat moved on, and that the issues between the parties had narrowed. Unusually, I therefore listed a short hearing, in the hope that the parties would make further progress in narrowing the issues between them. The hearing was listed in the vacation (having established the availability of counsel) so that there would not be a further two month delay to the determination of the Claimant's application. I am grateful to all involved, particularly the court staff, for ensuring the hearing could go ahead in the vacation.
My hope that the issues would narrow was partially realised – the Claimant has now dropped its application in so far as it relates to AOVs, and the request for further Island Records v Tring information has narrowed. The other issues remained live at the hearing, and I will deal with each in turn.
I was provided with the following witness statements:
i) on behalf of the Claimant, a witness statement of Mr Niall Head-Rapson, a director of McDaniels Law, the Claimant's solicitors, which exhibited a 52 page bundle of correspondence;
ii) on behalf of the Defendants, a fifth witness statement of Mr John Aitchison, the Second Defendant, who is also a director of the First Defendant, which exhibited three documents, the first of which is said to be confidential, and in relation to which I will make confidentiality orders in the usual form; and
iii) on behalf of the Claimant, a witness statement of Mr Michael Warburton Junior, who is now the managing director of the Claimant, with an exhibit concerning Pneumatically Actuated Fire Suppression Systems and annexing pre-2003 invoices said to show the Claimant working on AGEs. Michael Junior (as in the Main Judgment, I use that expression to differentiate him from Mr Michael Warburton Senior, meaning no disrespect) did not give evidence at the trial, but provided this witness statement in response to Mr Atichison's fifth witness statement.
Mr Tom St Quintin, instructed by McDaniels Law, appeared for the Claimant. Mr Dominic Hughes, instructed by Gateley Legal, appeared for the Defendants. I am grateful to the parties and their representatives for their detailed written submissions.
Are AGEs “mechanical fire and safety goods and services”?
In the Main Judgment, I set out what the parties had agreed in 2003, on the basis that that agreement, although not reduced to writing, governed the future conduct of the First Defendant in relation to use of the name CORMETON and its variants. The expression “mechanical fire safety goods and services” was taken from the parties' written submissions. I was not addressed at the time on what it meant, and no issues were raised as to the boundaries of the expression, nor whether particular goods or services fell within or without it.
Some unclarity was raised at the form of order hearing, and so the Order includes the following paragraph after the four sub-paragraphs recording the terms of the injunction:
“Save that this injunction shall be stayed in respect of Automatic Gaseous Extinguishing Systems that have an electrical or electronic component and in respect of Automatic Operating Ventilation (AOV) Systems that have an electrical or electronic component until 4pm on Monday 1 February 2021 and the Defendants have liberty to apply for an extension to such stay pending any application for clarification of the scope of this injunction.”
That permission to apply was not exercised by the Defendants.
As set out above, a dispute has now arisen as to whether AGEs fall within the scope of the Order. If I find that they do, then the Claimant submits that the First Defendant will have to stop providing those goods and services under a name which includes the word CORMETON.
In his fifth witness statement, Mr Aitchison set out in detail his description of what an AGE is, including the way in which electronic detectors detect a problem and issue warnings before releasing gas to extinguish any fire. Further, Mr Aitchison explained that the First Defendant has worked on AGE systems for clients since the 1990s.
In his witness statement in response, Michael Junior disputed that evidence, describing it as “highly selective”. Rather, Michael Junior described AGEs as “large, non-portable fire extinguishers that use extinguishing agents including gas to put out fires, installed in high-value or high-risk areas.”
Further, Michael Junior questioned the detail provided by Mr Aitchison on the First Defendant's work on AGEs prior to 2003, observing that to the best of his recollection (and, having asked them, the recollections of his parents Michael Senior and Mrs Warburton, each of whom had given evidence at the trial) it was the Claimant who provided AGEs to clients prior to 2003, not the First Defendant. Michael Junior also noted that between 1999 and 2004 he was employed elsewhere, but remembers selling AGE components to the Claimant. He does not remember selling such components to the...
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