Frost Products Ltd v F C Frost Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Vos |
| Judgment Date | 26 July 2013 |
| Neutral Citation | [2013] EWPCC 34 |
| Docket Number | Case No: CC12P02764 |
| Court | Patents County Court |
| Date | 26 July 2013 |
[2013] EWPCC 34
IN THE PATENTS COUNTY COURT
Royal Courts of Justice
Rolls Building,
London, EC4A 1NL
Mr Justice Vos
Case No: CC12P02764
Mr John Baldwin Q.C., Mr Ashley Roughton, Mr James Tumbridge (instructed by Gowlings (UK) LLP) for the Claimant
Mr Richard Miller Q.C., Ms Denise McFarland (instructed by Higgs & Sons) for the Defendant
Hearing dates: 10 th, 11 th and 18 th July 2013
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
F C Frost Limited, the Defendant, is a company that was started by a Mr Frederick Charles Frost and his wife in 1971. In the broadest outline, its case is that it has traded since then in the UK selling drainage products and washroom products. It operates a slightly unusual business model in that it obtains most of its business from architects and interior designers, who specify the Defendant's products, often for major building projects. The building contractor or, more normally, a sub or sub-sub-contractor, is then required to place an order for and purchase the Defendant's specified products in order to fulfil its contract. The Defendant has used certain signs, logos and names over its 42-year business career, but those that are in issue in this case are predominantly "FC Frost", "Frost" and "Watrous". The latter sign or name ceased to be used by the Defendant in about 2004.
The Claimant is Frost Products Limited, a Canadian corporation, which also sells washroom products, but it is and always has been based near Toronto in Canada. The Claimant says that it started trading as long ago as 1929, and was known for many years as Frost Metal Products Limited. It has made various attempts to enter the UK market, starting as long ago as the 1970s. As will later appear, none of these attempts have been conspicuously successful and it is conceded by the Claimant that its actual sales in the UK have been modest. The Claimant has for many years used the trading name "Frost" which appears inside an oval on many, if not most, of its products.
In this action, the Claimant seeks to protect a Community Trade Mark numbered 007 320 542 relating to the word "Frost" in relation to classes 6, 21 and 34 (the "Claimant's Mark"). The Claimant filed the Claimant's Mark for registration on 16 th October 2008.
Classes 6, 21 and 34 are as follows:-
| Class 6 | Class 34 |
| Safety grab bars made of metal bathrobe hooks made of metal | Ash receptacles not of precious metal. |
| Class 21 | |||
| Receptacles | Dispensers | Holders | Other |
| Waste sanitary napkin | paper towel toilet tissue facial tissue sanitary napkin soap condoms combinations of:- sanitary napkin and condom paper towel dispenser and waste receptacle | towel rings towel bars soap dishes soap holders combination toothbrush and tumbler holders combination soap holders and safety grab bars | bottle openers |
After the Claimant registered the Claimant's Mark, on 18 th December 2009, the Defendant filed for registration 8 UK trade marks numbered as follows and in relation to the following words: 2 534 808 (Frost start), 2 534 813 (Frost signature), 2 534 867 (Frost Washroom), 2 534 868 (Frost vision), 2 534 871 (Frost bespoke), 2 539 115 (frost start (word and device)), 2 539 117 (frost Signature (word and device)), and 2 539 119 (frost bespoke (word and device)) (the "Defendant's Marks").
The primary question in this case is whether the Claimant's Mark is valid. It is suggested it is not for two main reasons. First, because as at 16 th October 2008, the Defendant could successfully have sued the Claimant for an injunction to restrain its use of the word "Frost" in relation to the sale of washroom products, and secondly because it is said that the Claimant was acting in bad faith when it filed its application for the Claimant's Mark.
If the Claimant's Mark is valid, subsidiary questions arise as to whether the Defendant can be enjoined from using what it claims to be its own name, namely "Frost", whether the Defendant has infringed the Claimant's Mark, and whether the Defendant's Marks are invalid.
The main areas of argument have revolved around the questions of whether the Defendant would have had any or any sufficient goodwill or reputation in washroom products to have brought a passing off action in 2008, whether the sign "Frost" was of more than mere local significance, and whether it could properly be regarded as the Defendant's own name.
I shall deal with these questions in due course, but first I shall set out the relevant chronological background, the issues, and a brief description of the evidence that was advanced at the trial, and the applicable EU and UK legislation. Despite the fact that this is a Patent County Court case, I have been provided with no less than 17 bundles of documents and authorities. In the circumstances, the parties and junior counsel did well to complete the initial evidence and argument in 1 1/2 court days. As will appear in due course, I invited further argument on certain issues arising under articles 8(4) and 111 of the Council Regulation of 20 th December 1993 on the Community Trade Mark, 40/94/EEC (the "CTMR"), at which point both sides instructed leading counsel.
Chronological background
In 1929, the Claimant's business was begun.
In 1962, Mr R Warren Biggar, the father of the present Vice President, Mr James (known as 'Jay') Biggar ("Mr Biggar") purchased the Claimant company.
On 16 th November 1971, the Defendant company was incorporated by Mr Frederick Charles Frost and Mrs Daphne Maureen Frost. The Defendant alleges that it first used the name "Frost" from that date.
On 27 th September 1988, the Defendant filed a UK trade mark in the name of "Watrous" for registration at the UK IPO.
On 25 th February 1997, the Defendant's first website at www.fcfrost.com was registered. It went live later in 1997.
On 1 st January 2005, the Claimant entered into a written sales representation agreement with Robert Sherwood Agencies of Stansted in Essex in respect of the UK, Ireland and Europe.
In November 2005, the second version of the Defendant's website at www.fcfrost.com went live.
In October 2007, the third version of the Defendant's website at www.fcfrost.com went live.
On 12 th June 2008, the Defendant registered with the UK IPO a series of product design rights numbered 4007945 to 4007990.
On 17 th September 2008, Mr Biggar of the Claimant wrote to Ms Caroline Ryan of Perrem Design Hardware in Dublin ("Perrem"), saying that the Claimant was " very interested" in working with Perrem " as our representative and distributor in Ireland", and " [w]e look forward to working together and developing a strong long term business relationship".
On 16 th October 2008, the Claimant filed for registration the CTM number 007 320 542 in relation to classes 6, 21 and 34 (the "Claimant's Mark")
On 26 th June 2009, Mr Biggar wrote to Perrem saying: " Frost has just recently received full Brand, Copyright, Logo Rights and Protection for UK and Europe. We are interested in aggressively expanding our distribution network and presence in UK and Europe. Are you able to open Ashford Heating and other dealers in the UK? Will you be purchasing for these dealers and redistributing to them? … Are there trade shows or Industry magazines we should participate in to gain market exposure? Can you recommend a company like yourself in Europe that can help us [develop] a distribution network?"
On 1 st July 2009, Perrem wrote to Mr Biggar of the Claimant saying: " To answer your questions; Yes, we can get companies in the UK to come on board as Frost dealers and I believe this is a crucial factor to build Frost as a successful brand there. The same will apply in other European countries. We would like to discuss with you the best way to service these markets, but in short we would like the opportunity to act as agent for Frost in the UK and mainland Europe and we have the right connections in mainland Europe to develop the distribution network there also. … I would like to come back to you very soon with a proposal and a business plan for your consideration …".
On 7 th August 2009, the Claimant's Mark was granted.
On 18 th December 2009, the Defendant filed the Defendant's Marks for registration at the UK IPO.
On 14 th January 2010, the Defendant launched a new generation of marketing materials using the name "Frost". Also in January 2010, the fourth version of the Defendant's website at www.fcfrost.com went live.
On 18 th July 2012, the Claimant issued its claim form saying that " [t]he Claimant is the owner of a Community Trade Mark being infringed by the Defendant". The Particulars of Claim alleged:-
i) Infringement of the Claimant's Mark by:-
a) using in the course of trade a sign identical with the Claimant's mark in relation to goods identical to those for which the Claimant's Mark is registered contrary to article 9(1)(of the CTMR;
b) causing confusion in the marketplace contrary to article 9(1)(b) of the CTMR.
ii) That the Defendant's Marks were invalid under sections 47 and 5 of the Trade Marks Act 1994 (the " TMA 1994") on the grounds that there was an earlier mark that is identical for identical goods and/or there is a similar mark for identical or similar goods, for which there is a likelihood of confusion including a likelihood of association.
On 12 th September 2012, the Defendant served its defence and counterclaim alleging, amongst other things, that the Defendant had common law rights in and relating to the name "Frost", and that the Claimant's Mark was applied...
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