Lifestyle Equities CV v The Copyrights Group Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Marcus Smith |
| Judgment Date | 10 May 2021 |
| Neutral Citation | [2021] EWHC 1212 (Ch) |
| Date | 10 May 2021 |
| Docket Number | Case No IL-2018-000067 |
| Court | Chancery Division |
[2021] EWHC 1212 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
CHANCERY DIVISION
INTELLECTUAL PROPERTY LIST (ChD)
Remotely at:
The Royal Courts of Justice
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
THE HONOURABLE Mr Justice Marcus Smith
Case No IL-2018-000067
Mr Thomas St Quintin and Mr Benjamin Longstaff (instructed by Brandsmiths) for the Claimants
Mr Roger Wyand, QC and Mr Andrew Norris, QC (instructed by Edwin Coe LLP) for the First, Second and Third Defendants
Hearing dates: 4, 5, 8 and 9 February 2021, with subsequent written submissions
Approved Judgment
I direct that no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
| CONTENTS | ||
| A. | INTRODUCTION | §1 |
| B. | THE TRIAL AND THE EVIDENCE | §6 |
| (1) | General matters | §6 |
| (2) | The Claimants' witness: Mr Haddad | §8 |
| (3) | The Defendants' witnesses | §10 |
| C. | THE “BRAND” AND THE CLAIMANTS' BUSINESS | §12 |
| (1) | The “Brand” | §12 |
| (2) | Split ownership of the Brand | §13 |
| (3) | The Claimants' trade marks | §18 |
| D. | THE LAW REGARDING INFRINGEMENT | §20 |
| (1) | Introduction | §20 |
| (2) | Article 9(2)(b) and section 10(2) | §22 |
| (3) | Article 9(2)(c) and section 10(3) | §23 |
| (4) | Passing off | §24 |
| E. | INFRINGEMENTS IN THIS CASE | §26 |
| (1) | The allegations: an overview | §26 |
| (2) | The case against D5, D6, D7 and D8 | §30 |
| (i) | The allegations | §30 |
| (ii) | The defence of the First, Second and Third Defendants | §32 |
| (iii) | The facts | §35 |
| (iv) | Infringement under Article 9(2)(b) and/or section 10(2) | §37 |
| (v) | Infringement under Article 9(2)(c) and/or section 10(3) | §56 |
| (3) | The case against the Defendants | §64 |
| (i) | Approach | §64 |
| (ii) | The First Defendant, the Copyrights Group | §66 |
| (iii) | The Third Defendant, Greenwich Polo Club | §70 |
| (iv) | The Second Defendant. Mr Durbridge | §72 |
| F. | CONCLUSIONS AND DISPOSITION | §74 |
A. INTRODUCTION
. This is a claim for trademark infringement and passing off. Various marks are relied upon. They are described more specifically in Section C below. The essential nature of the marks said to be infringed is as follows:
I shall refer to it as the Logo. 1 It will, of course, be necessary to delineate more clearly the precise marks that the Claimants rely upon, but the various marks are materially similar to the Logo and the parties (very sensibly) did not make anything of the (immaterial) differences.
. The First Claimant – Lifestyle Equities CV – is the owner of these various marks. The Second Claimant – Lifestyle Licensing BV – is the exclusive licensee of them. I shall, unless it is necessary to differentiate between the First Claimant and the Second Claimant, refer to the Claimants collectively as the Claimants.
. There are eight named defendants in these proceedings. More specifically:
(1) The claims advanced by the Claimants against the Fifth to Eighth Defendants have been stayed pending the determination of the matters arising in this trial. Although I intend to say nothing more about these defendants, the claims against these defendants are material as regards the claims that are advanced by the Claimants against the First, Second and Third Defendants. I shall, therefore, refer to these defendants as D5 to D8.
(2) The Fourth Defendant – PJB Brands Limited – refers either to a company incorporated in Cyprus (which closed in 2015) or to a similarly named company incorporated in Greece (which closed in 2018). Neither company has taken an
active role in this litigation and (for the sake of neatness, if nothing else) the claims against this defendant should be dismissed without more. I do not consider that a stay would be appropriate, because that would imply a prospect of or purpose to the resumption of the claims against the Fourth Defendant, which is not the case. I make clear now that – from a perspective of costs – nothing is to be read into this dismissal of these claims. It arises simply because the Fourth Defendant does not appear to be an extant company, and it is not within my power, given that it is a foreign company, to restore it to whatever register it might be restored to.(3) That leaves the First, Second and Third Defendants, who have (represented by the same legal team) taken an active part in defending the claims brought against them by the Claimants. It is necessary to differentiate between them, for their commercial roles are very different. Where I refer to them collectively, I do so as the Defendants.
(4) The Third Defendant – Greenwich Polo Club Inc ( Greenwich Polo Club) – is a company incorporated in the State of Connecticut in the United States of America. It, and its relationship with the First and Second Defendants, is most clearly described in paragraph 6 of the Defendants' written opening submissions:
“[Greenwich Polo Club] is a polo club in Greenwich, Connecticut, USA. It is one of the leading polo clubs in the World and has, as one would expect, produced merchandising using its own branding for years. In the late 1990s, it decided to expand that merchandising and the services of the First Defendant…were engaged. [The First Defendant] is a licensing agency representing writers, artists and brand owners around the World. It licenses well-known assets such as Paddington Bear, Peter Rabbit and The Snowman. It has, over the years, been perceived as one of the leading global players in this market. The Second Defendant…is a director of the [First Defendant]. He was Chairman and CEO until 2016…”
Thus, it is Greenwich Polo Club that is the owner of the “Greenwich Polo Club” brand and of the various marks that I shall come to describe. These marks are managed and licensed by the First Defendant as Greenwich Polo Club's agent. I shall generally refer to the First Defendant as the Copyrights Group. The Second Defendant is Mr Nicholas Durbridge and I shall refer to him by his name. Mr Durbridge is the founder of the Copyrights Group and (in addition to other roles and designations within the Copyrights Group, which are not material) he is sued as a director of the Copyrights Group. Mr Durbridge has been a director since the Copyrights Group was incorporated.
. There are four signs of the Defendants that are said to infringe the rights of the Claimants. Purely for identification purposes, they are as follows:
(1) What I shall refer to as Greenwich Sign 1 is:
(2) Greenwich Sign 2 is:
(3) Greenwich Sign 3 is:
(4) Greenwich Sign 4 – which was also referred to as the “New Logo” – is as follows:
I shall refer to these signs collectively as the Greenwich Signs.
. This Judgment considers the following matters in the following order:
(1) Section B describes the manner in which the trial was conducted and the evidence before me, in particular the oral evidence.
(2) Section C describes the Claimants' brand and the various marks on which they rely.
(3) Section D considers the relevant law underlying the infringement allegations made by the Claimants.
(4) Section E sets out, considers and determines the various allegations of infringement advanced by the Claimants.
B. THE TRIAL AND THE EVIDENCE
(1) General matters
. The trial was conducted remotely by Skype for Business. There were some connectivity issues which slowed the proceedings down, and (as is inevitable with remote proceedings) cross-examination was not as straightforward as in court. At times, with some witnesses, the connections were exceedingly poor, and great care was required by all concerned to ensure that the evidence of the witnesses affected was properly taken. I am satisfied that I did hear all of the evidence that each witness had to give, and that I was and am able to assess the evidence of the various witnesses properly. Nevertheless, it is appropriate to record that this was far more of a challenge than it normally is with remote hearings.
. I should also note that because a number of witnesses were (intending absolutely no disrespect) “minor” witnesses, they often gave evidence from what I will term “unsupported” locations (that is, where there was no-one to assist them in giving their evidence, and where the usual functionality of a hearing room was less evident than usual) and without having necessarily all of the hearing bundles (which were voluminous). These difficulties were navigated with great skill by counsel on all sides, and I do not consider that these matters affected the evidence that I received. Nevertheless, it is appropriate to record these issues in this Judgment.
(2) The Claimants' witness: Mr Haddad
. The Claimants called one witness, Mr Eli Haddad. Mr Haddad is the CEO of the Claimants. He gave one witness statement ( Haddad 1) – dated 9 March 2020 2 – and gave evidence remotely from New Jersey in the United States on Day 1 (4 February 2021) and Day 2 (5 February 2021). His evidence was spread over two days because of the time difference between New Jersey and the United Kingdom, which meant that Mr Haddad commenced his evidence at around midday on each day.
. Mr Haddad was a master of his brief, knowing the business of the Claimants and the brand represented by the Logo intimately. He gave his evidence precisely and clearly, and I found him to be a credible, even...
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Lifestyle Equities C.v v. Royal County of Berkshire Polo Club Ltd
...of the claimant's registered trade mark. 73 Finally, I also note that in Lifestyle Equities CV v The Copyrights Group Ltd [2021] EWHC 1212 (‘ Greenwich Polo’), Marcus Smith J. had to deal with an argument which is similar to the point which the Ds run here. When holding that he could not re......