Kingspan Group Plc and Another v Rockwool Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 21 February 2011 |
| Neutral Citation | [2011] EWHC 250 (Ch) |
| Docket Number | Case No: HC09C01587 |
| Court | Chancery Division |
| Date | 21 February 2011 |
[2011] EWHC 250 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand,
London, WC2A 2LL
MR.Justice Kitchin
Case No: HC09C01587
HC09C01611
Mr. Henry Carr QC and Mr. Michael Hicks (instructed by Messrs. Wragge & Co LLP) appeared for Kingspan
Mr. Michael Silverleaf QC and Miss Emma Himsworth (instructed by Messrs. Herbert Smith LLP) appeared for Rockwool
Hearing dates: 10, 13, 14, 15, 16, 20, 21 December 2010
MR. JUSTICE KITCHIN :
Introduction
These actions for infringement of registered trade mark, malicious falsehood and declaratory relief concern insulating boards and panels for use in the construction industry. Two important categories of such products are those made with plastic foams and those made with mineral wool. The advantage of insulation products made with plastic foams is that they have good insulation values which means they can be relatively thin; but they suffer from the disadvantage that plastic foams are combustible. The advantage of insulation products made with mineral wool is that mineral wool is inherently incombustible; but they suffer from the disadvantage that such products have relatively poor insulation values which means that they tend to be relatively thick.
The first claimant in action HC09C01587 is the holding company of a group of companies (collectively "Kingspan") which includes the second claimant. Kingspan makes a wide range of construction products including insulation boards and panels for use in ceiling and wall constructions and it operates a very successful business in the UK and throughout the world with an annual turnover of about € 1,125 million. Kingspan's insulation boards and panels are made with plastic foams.
The defendant ("Rockwool") is a member of the Rockwool group of companies and the world's leading producer of a mineral wool called stone wool which is used both in its own products and as the insulating core of panels made and sold by a number of companies including Eurobond.
The dispute concerns a promotional campaign conducted by Rockwool consisting of road shows and videos. Kingspan contends that the campaign has represented that three of its products are a fire hazard and are unsafe in a real building and that these representations are false and misleading. It alleges that Rockwool has thereby infringed its registered trade marks and is liable for malicious falsehood. It also seeks certain declarations of fact to the effect that Rockwool's campaign contains misrepresentations concerning its products.
Rockwool counters that it has subjected some of its own products and those of Kingspan to an internationally established standard reaction to fire test (ISO 9705) in order to demonstrate the difference in performance in this test between insulating boards and panels made with combustible materials and ones made with incombustible materials. It says it was scrupulous in selecting the test and in having it carried out by a leading international testing laboratory to ensure it was fair, independent and rigorously performed. The difference in results is, it says, striking and shows that products made with incombustible materials are substantially more resistant to direct attack by flames than those made with combustible materials. Rockwool continues that it is entitled to show the results of the test to the trade and to demonstrate the fire reaction properties of the products at road shows, particularly since Kingspan has marketed its products as "fire safe". Accordingly it seeks declarations to this effect, and these are the subject of the second action HC09C01611.
The Kingspan products used in the promotional campaign are:
i) Kingspan TR 26 (" TR 26"), an insulation roof board designed and intended for use in the construction of flat roofs. It comprises a polyisocyanurate ("PIR") foam core with an upper and lower foil facing. It is fitted above the deck of the roof, that is to say on the external surface. The deck itself may be made of steel, concrete or, occasionally, wood. A weatherproofing membrane is then applied to the external surface of the board. TR 26 is not intended for use on the internal surface of a ceiling or wall.
ii) Kingspan K11 Kooltherm ("K11"), another insulation roof board designed and intended for use in the construction of flat roofs in much the same way as TR26. It comprises a phenolic foam core with an upper facing of bitumen coated perlite board and a lower facing of glass tissue. It is again fitted above the deck of the roof and a weather proofing membrane is applied to its external surface. Like TR 26, K11 is not intended for use on the internal surface of a ceiling or wall.
iii) Kingspan KS1000 MR ("KS1000 MR"), an external wall panel. It comprises two sheets of steel and a PIR foam core. The panels are fitted together by means of an interlocking joint arrangement, one side of the panel forming the male part of the joint and the other the female part of the joint. In use, the panels are secured to a secondary steel frame by means of fasteners which pass from the external surface of the panel, through the male joint and into the steel frame. Flashings are then placed over and around the corners and joints of the construction, both internally and externally. KS1000 MR panels are used in a wide variety of applications including warehouses, factories, schools, hospitals and residential buildings. In the majority but by no means all of these applications the panels have a complete covering on their internal facing side, usually of plasterboard. Where the construction is not industrial or a warehouse, it will generally comprise a series of rooms within the outer frame. In such an arrangement, because the panels are fitted as external walls, they will only be used on two walls of a room at most and then form the external surface rather than the internal surface. KS1000 MR panels are never used in ceiling assemblies.
Regulatory framework
In the course of the trial I heard evidence from two expert witnesses, Mr Peter Jackman on behalf of Kingspan and Dr Vytenis Babrauskas on behalf of Rockwool. Both are well qualified and have extensive experience of the regulatory and technical aspects of fire safety engineering. Perhaps not surprisingly, there was a good deal of agreement between them, at least as to the relevant technical and regulatory background to this dispute. Much of what follows in this section of the judgment is drawn from their reports.
Fire is undoubtedly a complex phenomenon and it is recognised that its behaviour and effects depend upon a number of interrelated factors. Fires in buildings generally start from one object that ignites and burns. If the fire is not extinguished and spreads to other combustible materials then, over a period of a few seconds, its character may change and instead of being relatively localised it may fill an entire room. This condition is called "flashover" and is recognised as being extremely dangerous. Before flashover, a fire will generally have only a limited effect on the structural elements of a building. But after flashover, if the fire continues, then the structural elements may well become compromised or fail entirely. Flashover is also likely to be fatal to any occupants.
The consequences of fire are so severe and the behaviour of fire is so complex that over the years researchers and regulators have carried out a great deal of work to find ways to assess the properties and performance of construction materials. The result has been a myriad of tests, standards and regulations. Traditionally, construction materials were regulated domestically. More recently, attempts have been made to produce a harmonised regulatory regime across the European Union. But harmonisation is not yet complete with the result that manufacturers may mark their products as having been approved under the domestic scheme, the European Union scheme, or both. In addition, the insurance industry often requires particular levels of performance assessed by reference to a yet further set of standards. I must give an outline of each of these schemes, so far as relevant.
European regulation is founded on the Construction Products Directive 89/106/EEC ("CPD") which established a requirement for harmonised standards. This was followed by a series of interpretative documents and decisions issued by the European Commission following consultation with industry and other interested parties. Interpretative Document 2 concerning safety in fire was issued by the European Commission in 1994 and this was followed later in the same year by Decision 94/61/EEC. These recognised the need for suitable tests for the classification of construction materials by their reaction to fire.
Thereafter a considerable amount of work was done by the EC Fire Regulators Group ("FRG") and the Official Laboratories Group ("OLG") to develop what is known as the Euroclasses classification system and establish its class boundaries, and to develop and validate a test known as the Single Burning Item ("SBI") test. This is a relatively small scale test in which two pieces of an item to be tested are placed together in an "L" arrangement. The specimen is exposed to a burner and various aspects of its reaction to fire are recorded. The SBI test is now the subject of European (EN) standard 13823.
The work carried out by the FRG and the OLG relied heavily on an existing test the subject of international standard, ISO 9705. As I shall elaborate, this is a test which was developed in the 1980s by a number of laboratories, including SP Technical Research Institute of Sweden (" SP"), to determine the...
To continue reading
Request your trial
-
Skyscape Cloud Services Ltd v Sky Plc and Others
...in good time before the trial. 21 In this context Ms Michaels referred me to the judgment of Kitchin J (as he then was) in Kingspan Group plc v Rockwool Limited [2011] EWHC 1066 (Ch). This followed an earlier judgment in the trial of two actions. In the first action Kingspan sued Rockwool ......
-
Niche Products Ltd v MacDermid Offshore Solutions LLC
...Technology v Nokia Corporation [2008] EWHC 504 at). 66 The claimant also referred to the decision of Kitchen J in Kingspan v Rockwell [2011] EWHC 250 Ch in which although the court dismissed the claim for malicious falsehood, the learned judge made declarations about the alleged misrepresen......
-
Pirmax Pty Ltd v Kingspan Insulation Pty Ltd
...realistic display of how these products would perform and contribute to fire growth in a real fire” (Kingspan Group Plc v Rockwool Ltd [2011] EWHC 250 (Ch) at In the present case, the missing information is that Pirmax claimed Group 1 classification on the basis of a ceiling only test, whic......
-
European IP Bulletin - Issue 79, April 2011
...plc v Rockwool Ltd: Unfair Comparative Advertising and Brand Denigration THE MISREPRESENTATIONS In Kingspan Group plc v Rockwool Ltd [2011] EWHC 250 (Ch), the Claimant alleged, amongst other things, that the Defendant had represented during roadshows that "The tests showed Kingspan's produc......
-
IP Snapshot - March 2011
...TRADE MARKS Kingspan Group Plc & another v Rockwool Ltd [2011] EWHC 250 (Ch), 21 February The High Court found that Rockwool had infringed the trade marks of a competitor, Kingspan, by using its marks in a manner which did not comply with the Misleading and Comparative Advertising Direc......
-
European IP Bulletin - Issue 79, April 2011
...plc v Rockwool Ltd: Unfair Comparative Advertising and Brand Denigration THE MISREPRESENTATIONS In Kingspan Group plc v Rockwool Ltd [2011] EWHC 250 (Ch), the Claimant alleged, amongst other things, that the Defendant had represented during roadshows that “The tests showed Kingspan’s produc......
-
Statutory regulation of work
...Matila Ltd v Lisheen Properties Ltd [2010] EWHC 1832 (Ch) at [177]–[191], per HHJ Stephen Davies; Kingspan Group Plc v Rockwool Ltd [2011] EWHC 250 (Ch) at [18], per Kitchin J; Lowe v W Machell Joinery Ltd [2011] BLR 591 at 596 [10], per Lloyd LJ; BMG (Mansield) Ltd v Galliford Try Construc......
-
Table of cases
...III.24.430 Kingspan Environmental Ltd v Borealis a/S [2012] EWhC 1147 (Comm) I.4.153, I.4.161 Kingspan Group plc v rockwool Ltd [2011] EWhC 250 (Ch) III.18.17, III.18.59 Kings reach Investments Ltd v John Laing Construction Ltd (Unreported, Eng Ct app, 18 March 1983) III.25.104 Kingston Bui......