Evans t/a Firecraft v Focal Point Fires Plc
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE PETER SMITH |
| Judgment Date | 10 November 2009 |
| Neutral Citation | [2009] EWHC 2784 (Ch) |
| Docket Number | Case No: HC09C00703 |
| Court | Chancery Division |
| Date | 10 November 2009 |
[2009] EWHC 2784 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Before: MR Justice Peter Smith
Case No: HC09C00703
Michael Edenborough & Thomas Elias (instructed by McDaniel & Co) for the Claimants
Anna Carboni (instructed by Bird & Bird LLP) for the Defendant
Hearing date: 20th October 2009
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.
Peter Smith J :
INTRODUCTION
This is an application by the Claimants by Application Notice dated 27th March 2009 for summary judgment pursuant to CPR 24 on a claim for passing off. It has been exceptionally well argued before me by Counsel for both sides.
The Application Notice and the attached minute of order did not specify the relief sought i.e. whether an injunction was sought or damages alone or some other relief. Ultimately as the case deployed Mr Edenborough who appeared for the Claimants acknowledged that at this stage because of various issues that might arise the only relief he could obtain was a declaration that the Defendant had passed its goods or business off as being the Claimants' goods or business by the use of the word “ Firecraft”.
PRIMARY BASIS FOR THE CLAIMANTS' APPLICATION
The Claimants' claim to be entitled to summary judgment is based on the fact that Mr Allan James sitting as a Hearing Officer (“the Hearing Officer”) of the UK Intellectual Property Office in his Decision (“the Decision”) dated 18th November 2008 determined that the Defendant's UK Trade mark No 2 223 882 for the mark “ Firecraft” registered for inter alia “ gas fires; electric fires; fires simulating fuel effect” in class 11 should be declared invalid.
The Claimants contend therefore that the determination which led to a declaration that the Defendant's registered trade mark was invalid by reason of the Claimants' goodwill in the business of making and selling stone fireplaces under and by reference to the designation Firecraft is final and conclusive. They therefore contend that any attempt by the Defendant to challenge the Decision has no prospect of success because the decision has been determined against them either on the grounds of issue estoppel or cause of action estoppel. Alternatively if those contentions are not accepted the Claimants submit that it would be an abuse of the process to allow the Defendant to go behind the Decision.
The Defendant did not appeal the Decision.
On 12th December 2008 (i.e. after the Decision) the Claimants' solicitors wrote to the Defendant threatening to issue passing off proceedings in the High Court. They subsequently issued the present proceedings in March 2009.
In the proceedings on 29th May 2009 Bird & Bird the Defendant's solicitors wrote to the Claimants' solicitors informing them of the proposal to re-brand the Defendant's products (they had marketed their products which are gas fires under Firecraft since 2000).
They have also stated they were prepared to give an undertaking not to use the expression Firecraft in the future. In paragraph 30 of Mr Richards' witness statement dated 2nd October 2009 on behalf of the Defendant it was stressed that that was a commercial decision.
Following that letter the Defendant ceased to use the word Firecraft in reference to its products and cancelled the Defendant's registration for the domain names containing the mark Firecraft, and withdrew its trade mark application for Firecraft (trade mark No 2504899). They wrote to all stockists explaining the switch from Firecraft to the new name ekofires and asked them to remove all brochures and documents containing the Firecraft mark from the showrooms and replace all references to Firecraft on their websites and promotional material to Eco Fires. In June/July 2009 in the edition of the trade magazine “ Fires and Fireplaces” they again set out the detail of the change of strategy.
As I said above the Claimants accept that the question of relief beyond the declaration will be for further argument.
The Claimants therefore base their application for summary judgment on the Decision. They accept that if the Decision cannot be relied upon as preventing the Defendant from one way or another resisting the present claim the Defendant is entitled to take the matter to trial. The only issue therefore before me in reality is the ambit of the Decision and its legal effect.
BUSINESS BACKGROUNDS
The Claimants trade together under a partnership by reference to the name Firecraft in relation to the manufacture, sale and installation of stone fireplaces and the provision and supply of related goods and services. They have been in business as such since 1991 and contend now that the range of the business extends throughout England and Scotland. The business is extensively advertised by website, they are present at numerous exhibitions and they contend therefore they have acquired protectable goodwill associated with the word Firecraft.
The Defendant has manufactured gas and electric fires since 1983. It is now one of the UK's largest manufacturers of gas fires. Its customers range from major retailers such as B & Q to independent retailers. It does not sell directly to consumers. Until around 2000 all fires were branded “ Focal Point Fires”. In around 2000 shortly after starting supplying fires to B & Q it decided to use separate brands and designs for fires that were supplied to B & Q to those supplied to others. The ones supplied to B & Q would continue to be branded Focal Point Fires. A new designation was applied to fires sold to independent retailers and the new brand chosen was “ Firecraft”.
Before embarking on the use of that word it instructed trade mark agents to conduct a trade mark search. A clear search was obtained and it applied to register the Firecraft mark on 29th February 2000 in class 11 which covers as I have said “gas fires; electric fires; fires simulating (sic) fuel effect; fire surrounds; fire fronts parts and fittings for all the aforesaid goods”. It was advertised in the trade magazine Fires and Fireplaces in the summer of 2000.
It received objections from a company called Denelight Ltd trading as Firecraft which asserted goodwill under the name of Firecraft since 1992. It also received observations from Options Firecraft Ltd. Ultimately neither observation had any impact and the Firecraft mark was registered on 1st September 2000 under No 2 223 882.
The first Firecraft product sold in May 2001. A website was developed and domain names were registered.
It will be seen therefore that the Claimants' business in question under the word Firecraft is in relation to fire surrounds whereas the Defendant's business which was carried on under the name of Firecraft related to fires.
INVALIDATION PROCEEDINGS
It is the Claimants' case that they did not become aware of the use by the Defendant of the word Firecraft until May 2006 when the Defendant re-launched apparently the products under the name of Firecraft. That is not accepted by the Defendant. The Claimants accept that is an issue for later evaluation when the question of more specific relief (if any) is sought.
MATTERS FOR FUTHER CONSIDERATION
As I have set out above as the argument developed the Claimants accepted the only relief available at this stage was declaratory relief. The reason for that is readily understandable. The Decision did not determine whether or not injunctions could be granted or whether damages should be awarded and if so upon what basis because the Tribunal had no jurisdiction so to do. Its jurisdiction was limited solely to the question of whether or not the Defendant's trade mark registration was invalid.
Thus the Claimants accept that the following matters are open. First in relation to an injunction there is the question as to whether any future injunctive relief ought to be given. The following factors are relevant to that decision. First the Defendant having commenced the activity in 2000 the question is whether or not the Claimants are debarred by reason of their delay until 2009 in seeking relief whether by injunctions or damages see Shaw v Applegate [1997] 1 WLR 970 C.A. and WWF v World Wrestling Federation Entertainment Inc [2006] EWHC 184 (Ch). Second there is a question as to whether or not that delay disentitles the Claimants to equitable relief see for example Lynch v Lynch Transport [2000] EWCA Civ 67.Third there is the question of the Defendant's undertaking.
In respect of any claim for damages there are a number of issues which are also live. First the Claimants will seek damages going back to at least February 2000 (the date of application for registration) or possibly earlier. The Defendant will contend there are no damages available earlier than 6 years after the commencement of the proceedings in March 2009. There may then be additional issues under the Latent Damage Act 1986. The Claimants will of course have to prove that any claim for damages is not statute barred. There will also be issues as to the quantification of such damages. Will the damages be assessed on the basis of damage to the Claimants' goodwill or will they be assessed on the basis of an account of profits made by the Defendant? That is a well known alternative which the Claimant in a passing off action sooner or later will have to elect for. Another possible question is whether or not damages could be awarded in lieu of or in addition to an injunction? All of these issues the Claimants accept are live. Hence the acknowledgment the only...
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