Prysmian Cables & Systems Ltd v M/S Apple International
| Jurisdiction | England & Wales |
| Judge | Miss Recorder Amanda Michaels |
| Judgment Date | 07 September 2023 |
| Neutral Citation | [2023] EWHC 2176 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | CLAIM NO IP-2022-000055 |
[2023] EWHC 2176 (IPEC)
Recorder Amanda Michaels
CLAIM NO IP-2022-000055
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Maxwell Keay (instructed by Maucher Jenkins) for the Claimant
Andrew Norris KC and Jonathan Moss (instructed up to and at trial by Lewis Silkin LLP and after trial by Shoosmiths LLP) for the Defendants
Hearing dates: 13 and 14 June 2023
APPROVED JUDGMENT
This judgment was handed down by the Court remotely by circulation to the parties' representatives by email and release to The National Archives. The date and time for hand-down is deemed to be 10:30 on 7 th September 2023.
This is my judgment following a trial of liability only in a claim for infringement of trade mark and passing off. The trial related to the claims made against the First to Fourth Defendants only, as the allegations made against the Fifth Defendant, Termination Technology Ltd, were settled shortly before the trial. In addition, the claim against the Second Defendant, Mr Rajesh Sanghvi, as a joint tortfeasor was not pursued at trial.
Background
British Insulated Callender's Cables was formed in 1945 upon the merger of two existing British cable businesses. According to the Claimant, the company was renamed BICC plc in 1975. The details of the company structure prior to 1999 are not of any real significance in this case, as it is common ground that for many years the company's business included construction services provided under the name Balfour Beatty and a separate business of the manufacture and sale of cables and cable components. The components business was based at Prescot on Merseyside and was at some stage known as BICC Components. Again it is common ground that prior to 1999 the BICC group's branding included use of the brown and orange “hamburger logo” shown below:
In April 1999, BICC plc sold its energy cables business in the UK, including the cable components business. That much is common ground. However, the identity of the purchaser and the terms and impact of the sale of the business were hotly disputed issues before me. It seems likely that BICC Components Ltd ran the components division of the BICC business up to 1999, and Dr Spiller exhibited some documents which supported his recollection that BICC Components Ltd was a subsidiary of BICC Plc. Otherwise, the relationships between the various BICC companies in 1999 and the extent of each one's business in the UK was not clear to me. It was the Claimant's case that by February 2000 the BICC cables business and the goodwill in the name BICC was owned by General Cable Corporation and that between April 1999 and February 2000 the cables business had been continued under the name BICC General. In February 2000 the business was acquired by Pirelli Cavi E Sistemi SpA through a share purchase agreement, and the cables business was rebranded under the name BICON.
In October 2000, an application was made to register the word BICON as a trade mark in the UK. I do not know the identity of the applicant, but the mark was duly registered and is now owned by the Claimant under No. 2250558 for:
Class 6: cleets, glands and clips; all made of metal and all for supporting electric cables and/or optical cables.
Class 8: hand-held tools for making compression connections on electric cables and/or optical cables.
Class 9: compression connectors; mechanical connectors; jointing components; all for electric cables and/or optical cables.
Class 20: cleets, glands and clips; all made of plastics or other non-metallic material and all for supporting electric cables and/or optical cables.
Documents in evidence appear to relate to various different Pirelli companies, and Mr Clarke in his witness statement identified some of these, some of which were previously BICC companies. References to “Pirelli” in this judgment may therefore refer, according to the context, either to the Italian company Pirelli Cavi E Sistemi SpA or to one of its UK subsidiaries. According to the Claimant's director, Dr Darren Spiller, in July 2005 the shares in the Pirelli cables business were sold, and the company was renamed Prysmian Cables & Systems Ltd.
One of the main questions which it is necessary for me to decide is whether the goodwill in the BICC name, which it was common ground existed prior to April 1999, was acquired by Pirelli and is vested in the Claimant. The claim was limited to the name, as no claim was made based upon any possible goodwill in the hamburger logo. In any event, the Defendants claimed that if it had passed to Pirelli at all, the BICC name and any associated goodwill was abandoned when the rebrand to BICON took place in 2000. As a result, as the Defendants pointed out, this is an unusual case, in that apart from selling off some old BICC stock, Pirelli/the Claimant has never traded under the BICC name in which it claims goodwill subsists and upon which its central passing off action is based.
Figures were supplied as to turnover in products sold under the BICON name. These varied from over £3m p.a. in 2007–8, and over £2m p.a. in 2009–14, down to around £1–2m p.a. from 2015 on. It was common ground that the Claimant has goodwill in the BICON name.
The First Defendant is a partnership based in India, which supplied some components to BICC during the 1990s, and later supplied glands and other cable components to Pirelli/the Claimant from about 2005 to 2012. The Second Defendant is a partner in the First Defendant partnership.
In about 2015, the First Defendant started to use the BICC Components name in relation to its own cable components. At first it sold these abroad, and in particular in the Middle East, but in 2017 it started to offer its cable components for sale in the UK under the name BICC Components, and in conjunction with the following device:
In 2008, the Third Defendant had been incorporated as a UK company by a gentleman called Martin van der Zwan, who had been employed by BICC Plc and then by Pirelli/the Claimant. The purpose of that incorporation is unclear, as the company does not appear to have traded whilst in Mr van der Zwan's control. In 2010, Mr Sanghvi acquired all of the shares in the Third Defendant and in 2017 the shares were passed to his son Neil, who became the sole director of the Third Defendant in 2017. For most if not all of the period since its incorporation, and at the time it was bought by Mr Sanghvi senior, the Third Defendant company appears to have been dormant. Nevertheless, it was common ground that the Third Defendant is and was responsible for a website at the URL www.bicccomponents.uk.com. Initially, this advertised the First Defendant's cable components for sale in countries other than the UK, but it seems that it began to target the UK market in 2017. One sample page from the website annexed to the Particulars of Claim which (I think) was dated about July 2022, stated:
“The advancements in products and technologies are driven by an ever-evolving human nature to strive for excellence and to constantly improve on what is already available. This is the concept that was driving BICC group over the last fifty years as one of the prestigious business house based out of UK. We at BICC Components have inherited this very Legacy to re-introduce our complete range of cable accessories …”
The Claimant complained, in the Particulars of Claim, that this gave a false impression that the products on offer were those of the owner of the original BICC business or were connected to that business.
The Defendants' activities came to the Claimant's attention in 2015, when the First Defendant began to sell BICC Components parts in the Middle East. Dr Spiller said that his colleagues were having to explain that the First Defendant's products were not the “products of the historical BICC group” and the Claimant decided to put out a press release disclaiming any connection to those products. The Claimant's Sales Manager based in Dubai sent out various letters to customers, which had been drafted for him by the Claimant. One such example, dated December 2015, said,
“Cable accessories originally designed and manufactured by BICC in the United Kingdom, are now marketed under the BICON trade mark. These products are now manufactured and supplied by Prysmian Cables & Systems UK Ltd. BICC was acquired by Pirelli cables in 1998, and as such the name of BICC was not part of that acquisition. As a result of this, the trade mark BICON was adopted in order to remain synonymous with BICC quality, design and reputation. … All products originally manufactured and designed by BICC now bear the BICON trade mark actually embossed on the product.” ( my emphasis)
A similar letter signed by Dr Spiller was provided by the Claimant to its distributors, dated 1 March 2016. He said,
“… The BICON product range is the result of over 100 years of cable access redevelopment and quality engineering and includes all cable accessories originally designed and manufactured in the United Kingdom by BICC. These products are now manufactured and supplied by [the Claimant] and are marketed under the BICON trade mark.
The BICC cables business in the United Kingdom was acquired by what is now the Prysmian group in 2000, although use of the name BICC was not part of that acquisition. In this connection, the trade mark BICON was created and used with the products formerly made by BICC. …
The Prysmian Group does not have any...
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