Fine & Country Ltd and Others v Okotoks Ltd (formerly Spicerhaart Ltd) and Another
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR. JUSTICE HILDYARD,Mr. Justice Hildyard |
| Judgment Date | 31 July 2012 |
| Neutral Citation | [2012] EWHC 2230 (Ch) |
| Docket Number | Case No: HC10C02726 |
| Court | Chancery Division |
| Date | 31 July 2012 |
[2012] EWHC 2230 (Ch)
The Honourable Mr. Justice Hildyard
Case No: HC10C02726
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
Royal Courts of Justice
Rolls Building,
Fetter Lane,
London, EC4A 1NL
Mr Michael Hicks (instructed by Wallace LLP) for the Claimants
Mr Mark Platts-Mills QC and Ms Jessie Bowhill (instructed by Manches LLP) for the Defendants
Hearing dates: 1,2,5,6,7,8,9,12,13,14 March 2012
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.
Introduction
1. The Claimants are in the business of providing services to estate agents, operating under, and licensing to independent local estate agencies the use of, the name “Fine & Country”. The Defendants are companies in a group which operates a number of national estate agencies, some under the name “Fine”, others under the name Haart (and various other names too).
2. The Claimants and the Defendants both operate in the premium property market. Although the Claimants’ direct customers are, in effect, its licensees (actual and prospective) its business depends on its reputation amongst vendors and purchasers of premium properties marketed under its brand name. The Claimants (and its licensees) and the Defendants are thus rivals.
3. The Claimants seek to stop the Defendants using the name and sign “Fine”. They claim that the Defendants are passing off their businesses as (or as connected with) that of the Claimants, and furthermore are in breach of the Claimants registered trade marks (“the F&C Marks”). They also claim damages or an account of profits.
4. The Defendants say that the claims constitute an inappropriate attempt to monopolise a descriptive word (“fine”) which is common in ordinary language and extensively deployed in the estate agency market. They say that the claims should be dismissed; and by Part 20 claims they seek also orders invalidating and revoking the F&C Marks.
5. The parties’ respective claims raise a plethora of points both legal and factual. Although ultimately many were not called and others were not cross-examined, some 44 individuals provided witness statements, and the documentation ranged over some 25 files. There was also extensive citation of authority: 4 large files. Counsel on each side conducted the case with model efficiency, and provided detailed and helpful written submissions in opening, which were supplemented in closing: but the hearing nevertheless took 10 days (not including reading days).
6. In the result I have concluded that the Claimants’ case is well-founded, and that they are entitled to injunctive relief and an inquiry into damages or an account of profits and ancillary relief accordingly. However, I need to address the variety of issues raised: hence this long judgment.
The F&C Marks and the FINE sign
7. The Claimants’ relevant business was started in 2001 and has at all times operated under the name “Fine & Country”. Advertisements, “for sale” signs, office fascias and signs and other advertising and marketing materials for the business make prominent and extensive use of the name Fine & Country and the Fine & Country Logo as shown below. (There are some minor variations in usage. For example the reference to the website is frequently, but not always used.)
8. The Defendants started using the name and sign “Fine” in about June or August 2009. The business typically uses the name “Fine” in the style of the logo shown below:
The name depicted in this way is often accompanied by the strap line:
“selling fine homes throughout the country”
9. The “Fine & Country” name and device is United Kingdom Registered Trade Mark No. 2287385 dated 5 December 2001 (“the UK Mark”) and also Community Trade Mark No. 8468837 registered on 21 January 2010 (“the CTM”). Both the UK Mark and the CTM are registered in class 36 in respect of real estate affairs (in the case of the UK Mark) and real estate agency services (in the case of the CTM).
The Claimants
10. Collectively (although their respective rights and activities are the subject of dispute, as I shall explain later) the Claimants conduct business under and by reference to the “Fine & Country” name and logo and advertise and promote such name and logo. Their guiding and driving force is Mr Malcolm Garland Lindley (“Mr Lindley”), who is Managing Director of each of the Claimants, and was, with Mr Jonathan Alistair Cooke (“Mr Cooke”), a founder shareholder of the group parent company, GPEA Limited (the Second Claimant, “GPEA”).
11. GPEA, in which Mr Lindley remains the majority shareholder, was formed in 1993: its original and primary activity was to create and organise an organisation called the “Guild of Professional Estate Agents” which is in essence an association for selected estate agents: it still operates.
12. GPEA now wholly owns and controls the First Claimant, Fine & Country Limited (“F&CL”). F&CL wholly owns and controls FCEA Limited (“FCEA”). It was at one time, but is no longer, disputed that F&CL is the registered proprietor of the trade marks at issue in these proceedings.
13. It is a curiosity of the case, which has provided one of the foundations of the Defendants’ Part 20 claim for revocation of trade mark, that both F&CL and FCEA have for some time now filed dormant company statutory accounts.
14. In the case of F&CL, its accounts have been drawn and filed on the basis that it has not traded since May 2006. In its accounts for the year to May 2011 it is stated that “The company did not trade during the year and it is not intended for the company to trade in the foreseeable future.”
15. In the case of FCEA, its accounts have presented it as dormant since its incorporation in 2008 (as a subsidiary of F&CL). The only one of the Claimants that is presented as actively trading is GPEA.
16. It is GPEA that purports to licence the use of the F&C Marks, in the name of F&CL until about 2008, and in the name of FCEA from then onwards (and continuing).
The Defendants
17. The Defendants’ group operates a number of estate agency brands. As well as “haart”, and now “FINE”, these include “spicerhaart”, “Felicity J Lord”, “Spicer McColl” and “Darlows”.
18. It is the Claimants’ case, and it was their justification for joining (at a relatively late stage) the Second Defendant into the proceedings, that in reality the Second Defendant runs the businesses of the various companies within the group (including the First Defendant) as its own divisions as if they were part of a single corporate entity.
19. The Spicerhaart Group website claims that its business is the “largest independent estate agency network in the UK”. But their focus has been largely on the non-premium, lower end, market. It was not disputed that the haart name and brand is associated with the lower end of the market.
20. For some time, the founder, majority shareholder and individual in control of Spicerhaart Group, namely Mr Paul Smith (“Mr Smith”), has wanted to move into the upper quartile premium market. He seems to have considered first using Fine & Country as a vehicle. Over the course of 2005 and 2006, Mr Smith made various approaches to Mr Lindley with a view either to acquiring about 20 licenses and an equity stake in the group (as he proposed towards the end of 2005) or acquiring the entire business (as he proposed in 2006). At one time Mr Lindley seemed amenable; but, to Mr Smith's disappointment, Mr Lindley eventually declined.
21. Having been rebuffed by Mr Lindley, from 2007 onwards, Mr Smith concentrated instead on seeking to establish and home-grow a premium end business under the haart umbrella.
22. To this end, the “ fine Haart” brand was launched in 2007 and following that a magazine known as “ fine” began to be published. The success of that exercise was limited. The “haart” name remained associated with the lower end of the market; and the association made building a premium brand very difficult.
23. Then, in 2009, and with the assistance of both a new employee who had previously worked for the Claimants and a marketing company, the Defendants adopted new branding under the name and logo “FINE”. As appears above, the “FINE” logo, like the “Fine & Country” logo, is in capitals, with a font with serifs, gold underlining of the word, and a strap line which includes the word “country”. The style of the new branding is, to my mind, plainly similar to, or at least reminiscent of, the Fine & Country brand, as indeed those involved in the development of its design appreciated (as I later explain).
Summary of the parties’ respective cases
24. The Claimants contend that the result of the Defendants adopting the name and logo “FINE” has been very substantial confusion amongst members of the public and those involved in the property business, and especially amongst prospective purchasers and (particularly) vendors of high-end properties in the country offered for sale through local estate agents.
25. The Claimants’ primary case is that the Defendants are passing off or attempting to pass off their services as services of, or connected with, the Claimants. In addition, however, they have what their Counsel described as a “reserve” case for trade mark infringement: they claim that the First Defendant is infringing the Claimants’ UK trade mark and the CTM, and that the Second Defendant has procured or conspired with it to do so.
26. By these proceedings the Claimants seek injunctive and remedial relief...
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