Gama Healthcare Ltd v Pal International Ltd
| Jurisdiction | England & Wales |
| Judge | Miss Amanda Michaels |
| Judgment Date | 20 January 2016 |
| Neutral Citation | [2016] EWHC 75 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP14M03816 |
| Date | 20 January 2016 |
[2016] EWHC 75 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Miss Amanda Michaels
sitting as a Deputy Enterprise Judge
Claim No: IP14M03816
Mr Martin Howe QC (instructed by Kuit Steinart Levy LLP) for the Claimant
Mr Roger Wyand QC and Mr Thomas Elias (instructed by Spearing Waite LLP) for the Defendant.
Hearing dates: 3 rd and 4 th December 2015
Deputy Enterprise Judge Michaels:
Introduction
The parties to this passing off action are both in the business of the manufacture and supply of clinical wet wipes for use in the healthcare industry. The Claimant, Gama Healthcare Ltd, manufactures and sells wipes using the trade name "Clinell" whilst the Defendant, Pal International Ltd, sells its wipes under the trade name "Medipal." This claim for passing off is based upon the get-up of the Clinell products. It is alleged that the get-up adopted by the Defendant for its own disinfectant and detergent wet wipes is so similar to the Claimant's packaging that it is likely to lead members of the relevant trade to believe that the Defendant's wipes are those of the Claimant or connected with the Claimant.
The Claimant sells a range of wet wipes which are supplied in tubs and in plastic flow wraps (soft, rectangular packets with a resealable flap on the front through which the wipes are dispensed). The pleaded claim relates only to the flow wrap packaging for two different kinds of wipes, with common design features ("the Claimant's Packaging") identified as follows in the Particulars of Claim:
a. Different colours are used for different types of wipes: green packaging is used for disinfectant wipes and yellow packaging for detergent wipes. Reference was also made in the Particulars of Claim to red packaging for sporicidal wipes, but no claim was not pursued in relation to such wipes. I do not know why.
b. "In each case the colour scheme of the front of the Claimant's Packaging is such that the lower area is the appropriate product colour and the upper area is white. The two colour blocks are separated by a horizontal curved line."
The description of the get-up was thus at a fairly high level of generality.
No claim was made that the Claimant was entitled to claim a monopoly in the use of colours as such, nor in "colour-coded packaging per se." The exact shades of colour used were not identified in the Particulars of Claim. Instead, the Claimant relied upon the shades of green and yellow shown in the photographs at Annex 1 to the Particulars of Claim (similar photographs are annexed to this judgment). Two Pantone shades used were later identified, on a confidential basis, in the Reply. In fact, that did not complete the picture, as the Claimant uses different Pantone shades of green and (it seems) yellow, for its standard and maceratable disinfectant wipes respectively. The importance of the shades of green/yellow was reflected in the terms of the injunction claimed, seeking to restrain the Defendant from using a number of Pantone colours, although the injunction did not cover either of the green Pantone shades used by the Claimant.
The goodwill claimed nevertheless lay in the use of those colours in combination with the colour block design for the front of the Packaging described at (b) above. The proportion of the front of the pack which was to be coloured was not specified, and no part of the Packaging was relied upon apart from the front of the package, on the pleaded basis that the front of the package is the critical aspect that will most commonly be viewed by the public.
During the course of the trial Mr Howe QC, who appeared for the Claimant, confirmed that the claim related only to the sale of clinical wipes in flow wrap packaging of the kind described. No claim was made in relation to colours "divorced from context" nor as to the Defendant's sale of the same wipes in tubs of various shapes and sizes although they use the same colour of green, combined with white, as the Defendant's flow packs. The Claimant's case was further limited by the express disclaimer of any objection to an earlier version of the Defendant's packaging (Medipal Phase 2, discussed below) even though the Particulars of Claim seemed to complain of that version. Mr Howe QC also indicated that the terms of the injunction which the Claimant would seek were narrower than as set out in the prayer to the Particulars of Claim, so that the Claimant sought to prevent the Defendant from selling wipes in packaging which was the same as or confusingly similar to the Defendant's Phase 3 or 4 Packaging. The original claim for an injunction against the use of wipes in packaging using a list of Pantone colours was abandoned.
The Defendant denied passing off. It denied that the Claimant had goodwill in its get-up, claiming in particular that the colour coding of the packaging was standard in the industry, so the colours lacked distinctiveness. It also denied that any misrepresentation would occur in relation to the majority of sales, which are made to the NHS after careful evaluation of the goods, and where orders are placed by reference to product names or codes, rather than by reference to packaging. The Defendant also relied on the impact of the parties' trade names on their respective Packaging.
The witnesses
Dr Guy Braverman is the managing director and co-founder of the Claimant and gave evidence as to the development of its products and of the Claimant's Packaging, the marketing efforts made by the Claimant, the training provided to healthcare professionals and his concerns about the Defendant's products. Dr Braverman was a straightforward witness. I also heard evidence from Mr Nigel Watson who is the Senior Trading Manager for Healthline Medical Ltd, but previously worked for many years for the NHS Supply Chain and its predecessor organisations. He was an extremely knowledgeable witness but I had some concerns about some of his evidence, as I explain below.
Sarah Ewart is employed by the Claimant as a Sales Executive, and previously worked for one of its competitors, Vernacare. Pixy Strazds is a nurse practitioner for Infection Prevention and Control who works for Nottinghamshire Healthcare Foundation NHS Trust. Rosemary Dixon is also a nurse working in Infection Control; she works for the Sherwood Forest Hospitals NHS Foundation Trust. Jean Law is also a nurse specialising in Infection Control, who now works for the Claimant to assist with training. I found all of these ladies to be straightforward witnesses and I discuss their evidence below.
The Defendant called only two witnesses, Mr Alexander Brucciani, the managing director of the Defendant and Nadine Bellamy-Thomas who is the healthcare business manager of the Defendant. I discuss the reliability of Mr Brucciani's evidence below. Ms Bellamy-Thomas was reluctant to accept that the green used on the Defendant's disinfectant wipes was very similar to that used by the Claimant, but otherwise appeared to me to be a straightforward and frank witness.
I should add that a number of the Claimant's witnesses expressed an opinion as to the likelihood of confusion and deception arising from use of the Defendant's Packaging. Counsel agreed that this was a matter for me and that I should ignore those parts of the witness statements. I have done so.
The factual background
The Claimant company was founded in 2004 by two medical doctors, Dr Braverman and Dr Allen Hanouka. It developed a universal, disinfectant wipe, so called because it has both disinfectant and detergent properties and may be used as a hand wipe as well as on surfaces and equipment. The wipe was intended for use in the healthcare industry and was first sold to the NHS in 2006. A wider range of wipes was then developed and sold by the Claimant. The detergent wipes in issue were launched in September 2007. The claim pursued against the Defendant to trial related only to the disinfectant wipes sold in green/white Packaging and detergent wipes sold in yellow/white Packaging of the design described above.
These proceedings were issued on 26 September 2014. By about 2014, over £5.8 million of the Claimant's disinfectant wipes were being sold annually, primarily to the NHS, and the Claimant had for some years (possibly since about 2008) been the market leader for the sale of such wipes to the NHS in England. The Claimant's evidence was that it spent over £500,000 in the 3 years to March 2014 in marketing the Clinell wipes. The selection of advertising materials and merchandise in evidence showed the range of colours used; some but not all of such documents pre-dated September 2013 (the relevant date for the assessment of passing off, see paragraph 28 below).
The Claimant provided training to NHS staff in the use of Clinell wipes, which emphasised that the colour of the packaging indicated the type of wipe. Dr Braverman gave evidence of the investment made by the Claimant in its training programmes, although all of the figures he gave related to periods after the relevant date. However, it is clear that the Claimant had previously carried out similar staff training, which Dr Braverman described as ingrained into the business. His evidence was that clinical staff are trained to identify the colours and appearance of the Claimant's Packaging with the individual products in the range and that NHS staff may refer to the disinfectant wipes as "green Clinell." Mrs Dixon, another witness for the...
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