Ian Thomas v Luv One Luv All Promotions Ltd
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 17 June 2020 |
| Neutral Citation | [2020] EWHC 1565 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP-2019-000170 |
| Date | 17 June 2020 |
[2020] EWHC 1565 (IPEC)
HER HONOUR JUDGE Melissa Clarke
Sitting as a Judge of the High Court
Claim No: IP-2019-000170
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
Mr Aaron Wood of Keystone Law for the Claimant
Mr Michael Hicks (instructed by Higgs & Sons) for the Defendants
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
This is judgment on the Claimant's application dated 28 February 2020 for an order that (i) the defence be struck out “on the basis of estoppel and abuse of process”, alternatively (ii) summary judgment on one aspect of the defence. I have determined it on the papers at the parties' request. I have had the benefit of written submissions from Mr Aaron Wood for the Claimant and from Mr Michael Hicks for the Defendants, for which I thank them. I have also considered a bundle of documents and a bundle of authorities in coming to my determination.
The underlying claim is a claim for passing off in relation to the use of the name of a musical group (“ the Group”) known as LOVE INJECTION or LUV INJECTION (“ the Name”). The Group operated between about 1986 and 2016. Both the Claimant and the Second Defendant (who are half-brothers) were members, along with others. It is common ground that there was a split between members of the Group in 2016 (“ the Split”), but there is a dispute about how and in what circumstances that happened. The Claimant says the Second Defendant left the band leaving him and two other members to continue with it. The Second Defendant says that the Claimant decided to leave the Group, as did two other members of the Group, leaving him as the sole continuing member.
After the Split:
i) the Claimant started to perform along with others under the name “Love Injection” and less frequently “Luv Injection”; and
ii) the Second Defendant started to perform under the name “Luv Injection Sound” together with some of the individuals who were involved in the Group before the Split, but without some others, including the Claimant. The First Defendant is a promotion company of which the Second Defendant is the sole shareholder and director. It promotes the group as operated by the Second Defendant under the sign “Luv Injection Sound”, as well as other acts, and in that capacity has used that sign.
The Claimant says he performs as the Group and the Second Defendant is performing as a new group. The Second Defendant says that he performs as the Group and the Claimant is performing as a new group. So arose a dispute between the parties which in legal terms is the question of who owns the goodwill in the Name and who has the right to continue to use it.
The dispute between the Claimant and the Second Defendant was formalised in proceedings in the UKIPO in 2017 and 2018. In February and October 2017, the Second Defendant applied to register “LOVE INJECTION SOUND” and “LUV INJECTION SOUND”, respectively, as trade marks. The February 2017 application was granted (TM No. 3213529 in classes 9 and 41). The Claimant opposed the October 2017 application (TM Application No. 3261358 in class 41) in January 2018 and also sought to invalidate the granted registration of 3213529, in both cases on the grounds of bad faith and passing off.
The matter proceeded to an oral hearing at the UKIPO before the Hearing Officer Mark Bryant (“the Hearing Officer”) over the course of a long day, during which eight witnesses attended and were cross examined: the Claimant, the Second Defendant and three witnesses on each side. The Claimant was represented by professional legal advisors, and the Second Defendant was in person.
By a decision dated 27 June 2018 the Hearing Officer upheld the Claimant's objections, finding that use of the marks LOVE INJECTION and LUV INJECTION could be restrained by the Claimant by virtue of the law of passing off, and that both the application and registration were made in bad faith (“ the Decision”). As part of the Decision the Hearing Officer found that the Group had operated as a partnership at will and that the goodwill in the Name was held as an asset of the partnership. The Second Defendant did not appeal the Decision.
Notwithstanding these findings, it is not disputed that the Second Defendant has continued to use the marks LUV INJECTION and LOVE INJECTION.
PLEADED CASE
The Claimant claims:
i) passing off by the Defendants by use of the signs LUV INJECTION, LUV INJECTION SOUND, LOVE INJECTION and LOVE INJECTION SOUND;
ii) that use by the Defendants of certain musical records of performances of the Group (“dub plates”) as part of the performances of the Defendants passes their group off as the Claimant's group; and
iii) that the Second Defendant's trade mark registration no UK 00003212085 for the mark LUV INJECTION SOUND in Class 9 with registration date 10 February 2017 constitutes an instrument of fraud in the hands of the Second Defendant and should be transferred to the Claimant or cancelled.
The Claimant seeks an injunction against further passing off by the Defendants, transfer of the dub plates, transfer or cancellation of trade mark UK 00003212085 and damages or an account of profits at the Claimant's election. The Claimant claims against the First Defendant as a primary tortfeasor in its own right in connection with his actions promoting the Second Defendant's group, or alternatively as a joint tortfeasor, as the First Defendant and the Second Defendant are acting pursuant to a common design.
The Defendants seek to defend the present action by asserting that: (i) the Second Defendant is the owner of the goodwill in the Name (contrary to the Decision of the UKIPO); and (ii) the Second Defendant has the right to continue to use the signs in question as they no longer operate to indicate the band but rather two bands (an argument not raised before the UKIPO).
The Second Defendant also counterclaims for an injunction against the Claimant's use of the Name, on the basis that his assertion that he owns the goodwill in the Name entitles him to prevent the Claimant from using it. The Defendants also counterclaim for distribution of the assets of the partnership Group, which it says ceased in 2016.
It is the Claimant's pleaded position that the Defendants are precluded from raising the points in the defence for the reasons of cause of action and issue estoppel as well as Henderson v Henderson abuse of process.
THE ISSUES IN THE CLAIM
As is the practice in IPEC, the issues in the claim and counterclaim were identified at a Case Management Conference before me on 6 March 2020 and set out in a schedule to the directions order of the same date. That schedule is attached as an Annex to this judgment.
THE DECISION
Section 3(6) and section 5(4)(a) of the Trade Marks Act 1994 (“ the Act”) provide as follows:
“3(6) A trade mark shall not be registered if or to the extent that the application is made in bad faith.”
“5(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented –
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade…
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark.”
The Decision refers to the Group as “the sound”, the Claimant as “Party B” and the Second Defendant as “Party A”. When quoting from the Decision, I have changed the references from ‘Party B’ and ‘Party A’ to ‘the Claimant’ and ‘the Second Defendant’ to avoid confusion.
The Hearing Officer made, so far as is relevant, the following findings:
i) The relevant date for assessing if section 5(4)(a) of the Act applies was the date of application for registration or, if there is a priority date, that date. Accordingly, the relevant date for the contested application was 4 October 2017 and for the contested registration was 17 February 2017 (paragraph 45) (“ the Relevant Dates”);
ii) There was no claim to a competing goodwill identified by the marks. In the absence of any counterclaim to an earlier or concurrent goodwill on the part of the Second Defendant, the Relevant Dates are the only two dates which are relevant for assessing the issue of passing off in the UKIPO proceedings (paragraph 47);
iii) The Claimant was a person with a proprietorial interest in the goodwill generated by the Group LUV INJECTION by virtue of being one of a number of members of the Group (paragraph 50);
iv) The Group was “an unincorporated association and a partnership at will” (paragraph 57). This is a source of some confusion and I will return to this below;
v) Goodwill was owned by the partnership not the individual members of it (paragraph 57 of the Decision, applying Byford v Oliver & Anor (SAXON trade mark) [2003] EWHC 295 (Ch) per Lewison J (as he then was) at paragraph 33);
vi) The goodwill in the Name was not transferred solely to the Second Defendant after the Split (paragraph 58);
vii) At the Relevant Dates, the Claimant together with the other members of the Group, owned the goodwill in the Name (paragraph 58);
viii) Use of the marks by the Second Defendant will amount to misrepresentation leading to damage (paragraph 60);
ix) The Second Defendant was not legitimately permitted to obtain the trade mark registrations in his own name unless it was done on behalf of the other members of the Group or with their consent (paragraph 65); and
x)...
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Thomas v Luv One Luv All Promotions Ltd and another
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