Dyno Holdings Ltd and Another v Dial A Rod Homecover Ltd and Others
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss,Judge Birss |
| Judgment Date | 20 February 2013 |
| Neutral Citation | [2013] EWPCC 8 |
| Court | Patents County Court |
| Date | 20 February 2013 |
| Docket Number | Case No: CC12P03114 |
[2013] EWPCC 8
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
Case No: CC12P03114
Gowlings LLP) for the Claimants
The Second Defendant represented himself
On paper
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.
His Honour Judge Birss QC
This is an action for trade mark infringement in relation to United Kingdom registered trade mark No 1282932 for the mark DYNO ROD in class 37. The mark is:
The specification of services includes "maintenance, repair, unblocking, cleaning, descaling, sterilising, disinfecting, fumigating and deodorising of drainage and piping systems, sewers manholes, gratings, culverts, chambers, gullies, flues and channels for the passage of liquids, solids or of gases;", "plumbing and glazing services;" and other similar sorts of plumbing and drainage services in class 37.
The first claimant is the proprietor of the mark and the second claimant is a non-exclusive licensee. Both companies are subsidiaries of Centrica Plc, the owner and operator of the British Gas business. Dyno-Rod (the second claimant) has since 1963 provided drainage services in the UK under the mark and since the early 1980s plumbing services as well. There are also 49 franchisees who perform plumbing and drainage services under the trade mark with a licence from the first claimant.
The defendants are involved in various ways in the provision of plumbing and drainage services under the mark DIAL A ROD. In 2007 the United Kingdom registered trade mark 2443609 for the word DIAL A ROD was registered in class 37 in respect of 'plumbing and drainage services". It was applied for on 15 th January 2007 and registered on 3 rd August 2007. The second defendant is the current proprietor of the trade mark. The mark has been assigned in various ways since it was applied for but the Second Defendant has always been involved one way or another.
The claimants contend that the second defendant and various other entities associated with him have been using the name DIAL A ROD for plumbing and drainage services in the UK for some years. They also contend that the second and third defendant offered plumbing and drainage services under that DIAL A ROD mark with "flying serifs" on a website www.dialarod.tv. The website is no longer in operation. The flying serifs form of DIAL A ROD is:
This form is obviously highly reminiscent of the claimants' mark.
The claimants issued proceedings in the Patents County Court. The claim was for trade mark infringement and revocation and invalidity of the DIAL A ROD mark 2443609. The grounds of revocation/invalidity were:
i) relative grounds: s47(2)(a) and (b) / s5( 2), s5(3) and s5(4) of the Trade Marks Act 1994;
ii) bad faith: s47 (1) and s3(6) of the 1994 Act;
iii) liable to mislead: s46(1) (d) of the 1994 Act.
Ground (i) needs no elaboration. Ground (ii) was based on the contention that the mark had been registered to deliberately take advantage of the claimant's reputation and to deliberately mislead the public. Ground (iii) was based on the contention that the mark had fallen into disrepute. The claimants relied on an Advertising Standards Authority adjudication against the first defendant "t/a Dial A Rod" for breach of the CAP Code by reason of such statements as " We will be at your premises within one hour of yours to out [sic] 24 hour helpline. All our work is guaranteed and comes with a 100% satisfaction or your money back." And " There is [sic] no other companies that can compete with out prices or level or service." The claimants also relied on a number of complaints about services offered under the DIAL A ROD mark and a failure of the DIAL A ROD business to satisfy county court judgments. For these reasons the claimants contended that the mark DIAL A ROD had fallen into disrepute.
Neither the first nor third defendant filed a defence but the second defendant did. The second defendant's defence dated 9 th September 2012 stated that he was now the true proprietor of the DIAL A ROD mark and stated that he denied that he had infringed the mark. It did not set out any facts, matters or arguments. Later the second defendant filed further material by which he aimed to show that there were other people using the name DIAL A ROD in the UK and that Dyno Rod and British Gas had received many 100s of complaints about their work.
The claimants applied for default or alternatively summary judgment against the defendants and the matter came before me on 10 th December 2012. I heard counsel for the claimants and the second defendant in person. The other defendants did not appear. I gave judgment in default against the first and third defendants. I dismissed the application for default judgment against the second defendant. The matter of summary judgment needed further submissions, some from the claimants and also from the second defendant. I gave directions for it to be continued in writing and decided on the papers. Both the claimants and the second defendant filed written submissions. This is my judgment on the application for summary judgment.
The claimant contends I should grant summary judgment on its claims.
The second defendant disputes the claimant's allegations that he has infringed the claimants trade mark for the following reasons:
i) The mark DIAL A ROD was registered in 2007 in good faith as a way of protecting the name from other companies who were using it. The name has been used in Mr Plummer's family since the 1960s as the trading name for his family's plumbing business.
ii) If the claimants had an issue with the registration of the mark they had an opportunity to object but nothing was done.
iii) The mark has been used since 2007 and, as the second defendant put it " over the 5 years that it can be objected to" the claimants have not brought a case for infringement at any time since that date of registration.
iv) The claimants are holding...
To continue reading
Request your trial