Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Company Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Nugee,Lady Justice King |
| Judgment Date | 06 December 2023 |
| Neutral Citation | [2023] EWCA Civ 1451 |
| Court | Court of Appeal (Civil Division) |
| Year | 2023 |
| Docket Number | Case No: CA-2023-000692 |
[2023] EWCA Civ 1451
Lady Justice King
Lord Justice Arnold
and
Lord Justice Nugee
Case No: CA-2023-000692
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS OF ENGLAND AND WALES, INTELLECTUAL PROPERTY LIST (ChD),
INTELLECTUAL PROPERTY ENTERPRISE COURT
Her Honour Judge Melissa Clarke sitting as a Judge of the High Court
[2023] EWHC 411 (IPEC)
Royal Courts of Justice
Strand, London, WC2A 2LL
James St Ville KC (instructed by Dorsey & Whitney (Europe) LLP) for the Appellants
Douglas Campbell KC and Georgina Messenger (instructed by D Young & Co LLP) for the Respondent
Hearing dates: 13–14 November 2023
Approved Judgment
Introduction
This is a trade mark dispute between rival users of the acronym ICE. In the case of the Claimant, ICE stands for Industrial Cleaning Equipment. In the case of the First Defendant, ICE stands for Intelligent Cleaning Equipment. By order dated 24 March 2023 Her Judge Melissa Clarke sitting as a High Court Judge in the Intellectual Property Enterprise Court granted the Claimant relief for trade mark infringement against the First and Fourth Defendants, and dismissed the Defendants' counterclaims for a declaration of invalidity and for trade mark infringement, for the reasons given in her judgment dated 27 February 2023 [2023] EWHC 411 (IPEC). The First and Fourth Defendants now appeal.
The appeal raises important issues concerning limitation by acquiescence, often referred to as “statutory acquiescence”, under section 48 of the Trade Marks Act 1994 and corresponding provisions in the European Union Trade Mark Directives and Regulations. These provisions prevent the proprietor of an earlier trade mark or other earlier right from challenging the registration or use of a later trade mark after five years' acquiescence in its use. The principal issue raised by the appeal is when the five year period starts to run.
Factual background
Although the judge was faced with a complex dispute raising a considerable number of issues, the facts relevant to the appeal can be summarised relatively briefly.
The Claimant was incorporated in 1992 to carry on a business founded in 1967 which provides retail, rental and maintenance services for commercial and consumer cleaning equipment in the United Kingdom. It has done so using the name Industrial Cleaning Equipment, the acronym ICE (i.e. in upper case) and three successive logos comprising the acronym “ice” (i.e. in lower case). There is no suggestion that the difference between the upper case and lower case versions of the acronym is of any significance. The logo used by the Claimant since 2007 is depicted below.
The First Defendant is part of the ICE Group, whose ultimate parent is Intelligent Cleaning Equipment Company. The First Defendant holds the ICE Group's intellectual property rights. The ICE Group has since 2011 designed and manufactured floor cleaning machines in China. Those machines have been imported into the UK for distribution and sale since June 2013. Until 2019 the ICE Group's UK distributor was Worldwide Cleaning Services (“WCS”). The Fourth Defendant has been the ICE Group's UK distributor since 2019. WCS and the Fourth Defendant marketed and sold the machines using the acronym ICE and the logo depicted below. In the remainder of this judgment I will refer to the First and Fourth Defendants collectively as “the Defendants”.
The First Defendant is the proprietor of two International Trade Marks, one for the word ICE and the other for the ICE logo depicted above, registered in respect of “floor cleaning machines” in Class 7 (“the Defendants' International Trade Marks”). The First Defendant applied to register the Defendants' International Trade Marks via the Protocol Relating to the Madrid Agreement Concerning International Registration of Marks (“the Madrid Protocol”) designating various territories including the EU. The Defendants' International Trade Marks were registered as Nos. 1256685 (word mark, “685”) and 1260671 (logo, “671”) at the World Intellectual Property Organisation on 18 June 2015, based on an earlier application and registration in the United States of America.
685 was received by the European Union Intellectual Property Office on 23 July 2015. The opposition period began on 24 January 2016 and ended on 24 April 2016. 685 was accepted on 24 May 2016 and this was published on 25 May 2016. 671 was received by the EUIPO on 13 August 2015. The opposition period began on 14 February 2016 and ended on 14 May 2016. 671 was accepted on 14 June 2016 and this was published on 15 June 2016. I shall refer to the International (EU) registrations, Nos. WO1256685 and WO1260671, as “the Defendants' EU Trade Marks”. The EUIPO register entries for the Defendants' EU Trade Marks give the “registration date” as 18 June 2015, but also record the other information I have set out.
As a consequence of Brexit, with effect from 31 December 2020, the protection conferred by the Defendants' EU Trade Marks in respect of the UK was replaced by two comparable International (UK) registrations, Nos. UK00801256685 and UK0801260671 (“the Defendants' UK Trade Marks”). These are recorded on the United Kingdom Intellectual Property Office register as having a “filing date” of 18 June 2015 and a “date of entry in register” of 25 May 2016 and 15 June 2016 respectively. I shall use the expression “the Defendants' Trade Marks” to refer compendiously to the registrations mentioned in this paragraph and the two preceding paragraphs.
After having denied any knowledge of use of the Defendants' Trade Marks in the UK prior to around March 2019, the Claimant eventually admitted knowledge of such use from around July 2014. Indeed, on 21 July 2014 Darren Marston of the Claimant sent an email to Simon Chen of the ICE Group proposing a visit to the ICE Group in China to discuss “strategic opportunities”. Furthermore, from at least 2017 the Claimant maintained ICE Group's products and supplied parts for them, and a subsidiary of the Claimant purchased and supplied ICE Group products in the UK. The Claimant denied having any knowledge of any registration of the Defendants' Trade Marks prior to 26 July 2019, a denial which the judge accepted.
On 23 October 2015 the Claimant applied to register the logo depicted under paragraph 3 above as a UK Trade Mark in respect of “retail, wholesale and online retail services relating to the sale of industrial cleaning equipment, machines and vehicles” (and other services) in Class 35 and “rental of cleaning equipment, machines and vehicles” (and other services) in Class 37. The application proceeded to registration as No. 3133002 on 22 January 2016 (“the Claimant's Trade Mark”).
Both the Claimant and the First Defendant also own other trade mark registrations dating from 2020, but for the purposes of the appeal these can be ignored.
On 2 July 2019 the Claimant's solicitors sent the Third Defendant a letter before claim alleging infringement of the Claimant's Trade Mark and passing off. The Third Defendant is the parent company of the Fourth Defendant. Trade mark attorneys instructed by the First and Third Defendants replied on 26 July 2019 denying infringement and passing off, relying (among other things) on the Defendants' EU Trade Marks. The letter stated that “protection was granted” to 685 on 25 May 2016 and to 671 on 15 June 2016. On 12 November 2019 the Claimant filed invalidation actions at EUIPO in respect of the Defendants' EU Trade Marks. There were meetings between representatives of the parties in London on 12 November 2019 and in Las Vegas on 20 November 2019 which were constructive, but the judge found that no agreement was reached. The second meeting was followed by an exchange of emails on 14 December 2019 and 19 December 2019. On 18 December 2020 the Claimant's solicitors sent the Defendants' solicitors a letter reiterating the Claimant's position and asking whether the Defendants' solicitors were instructed to accept service. On 21 January 2021 the Claimant withdrew its invalidation actions against the Defendants' EU Trade Marks.
The claim form in these proceedings was issued on 24 May 2021. On 22 June 2021 the Claimant sent a copy of the claim form to the Defendants for information. The claim form was served by being placed in the first class post on 21 September 2021.
The judge's decision
The judge held that, if the Claimant's Trade Mark was valid, then, subject to defences raised by the Defendants under section 11(1) of the 1994 Act (use of own registered trade mark) and section 48 of the 1994 Act and Article 61 of European Parliament and Council Regulation 2017/1001/EU of 14 June 2017 on the European Union trade mark (codification) (statutory acquiescence), the Defendants had infringed the Claimant's Trade Mark. The judge also held that, subject the Defendants' defence of statutory acquiescence, the Defendants' UK Trade Marks were invalid pursuant to sections 47(2)(b) and 5(4)(a) of the 1994 Act on the ground that use of those trade marks was liable to be restrained as passing off. There is no challenge by Defendants to those aspects of her decision.
The judge rejected the Defendants' defence of statutory acquiescence, and consequentially their defence under section 11(1) and their counterclaim for a declaration that the Claimant's Trade Mark was invalid due to conflict with the Defendants' Trade Marks. She held that the five year period only starts to run when the earlier trade mark proprietor has knowledge both of the use of the later trade mark and of its registration. In so holding, she applied Case C-482/09...
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