Robert Perkins and Keith Thomas Shone and Retriever Sports Ltd and Thomas Pope
| Jurisdiction | England & Wales |
| Judge | Mr Justice Park |
| Judgment Date | 08 October 2004 |
| Neutral Citation | [2004] EWHC 2249 (Ch) |
| Docket Number | Case No: HC O3 C04198 |
| Court | Chancery Division |
| Date | 08 October 2004 |
[2004] EWHC 2249 (Ch)
The Honourable Mr Justice Park
Case No: HC O3 C04198
Malcolm Chapple (instructed by Giffen Couch & Arthur) for the Claimant
Andrew Lykiardopoulos (of Bristows) for the Defendants
Approved Judgment
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.
Abbreviations, dramatis personae, etc
These are as follows.
Overview
| Chapple, Mr | Malcolm Chapple, counsel for the Mr Perkins, the claimant. |
| House of Darts | A business which supplies darts and darts-related products, including dart flights; owned until 1 June 2003 by Eddie and Peter Norman, and owned after that date by Mr Perkins; sometimes referred to as House of Darts International. |
| Lykiardopoulos, Mr | Andrew Lykiardopoulos, solicitor advocate for all three defendants (Mr Shone, Retriever, and Mr Pope). |
| Norman, Eddie | Dr Edward Norman; with his brother Peter Norman founder and owner of the House of Darts business until it was sold to Mr Perkins on 1 June 2003. |
| Norman, Peter | Peter Norman; see the previous entry for Eddie Norman. |
| Perkins, Mr | Robert Perkins, the claimant. |
| Pope, Mr | Thomas Pope; the third defendant; shareholder in and director of the second defendant, Retriever. |
| Retriever | Retriever Sports Ltd, the second defendant; company which produces darts related products; manufacturer of Pentathlon dart flights; see also Pope, Mr. |
| Shone, Mr | Keith Thomas Shone, the first defendant; proprietor of Tommy's Darts. |
| Tommy's Darts | Business supplying darts and darts-related products; owned by Mr Shone, the first defendant. |
This is a passing off action, the underlying subject matter of which is dart flights marketed under the names PENTATHLON or PEN-TATHLON. In general in this judgment I shall use only the simpler spelling, PENTATHLON, which should normally be understood as covering either way of formulating the word. Flights under the PENTATHLON name first came on the market in 1987. They have always been manufactured by Retriever, the second defendant. Mr Pope, the third defendant, is the principal shareholder in and director of Retriever. From 1987 to the middle of 2003 they were supplied by Retriever exclusively to the House of Darts business. House of Darts was in essence a wholesaling business, supplying darts products of all kinds, including PENTATHLON flights, to the retail trade both in this country and abroad. The long term nature of the trading relationship between Retriever and House of Darts was never formalised, nor did either business ever attempt to register PENTATHLON as a trade mark under the Trade Marks Acts.
The House of Darts business belonged to a partnership owned by two brothers, Dr Edward (Eddie) Norman and Mr Peter Norman. In 2003 the Normans retired and sold the business to Mr Perkins, the claimant. Almost immediately Retriever stopped supplying PENTATHLON dart flights to House of Darts (now owned by Mr Perkins) and instead started supplying them to one or more other wholesalers. One such other wholesaler is a business called Tommy's Darts, owned by Mr Shone, the first defendant.
In this case Mr Perkins contends: (1) that he, as the present owner of the House of Darts business and the successor of the Norman brothers, is the owner of the goodwill in the business of selling dart flights under the brand name PENTATHLON; (2) that the conduct of Retriever (the second defendant) in selling PENTATHLON-branded flights to other persons (such as Mr Shone, the owner of Tommy's Darts) constitutes the tort of passing off, infringing his (Mr Perkins') rights; (3) that Retriever's director, Mr Pope (the third defendant) has also committed the tort of passing off by causing Retriever to act as it has done; and (4) that the conduct of Mr Shone (the first defendant) in being a wholesaler of the flights also constitutes passing off and infringement of Mr Perkins' rights. Mr Perkins claims the usual remedies sought in passing off actions: injunctions, delivery up of offending articles, and damages or accounts of profits. The defendants, who are represented by the same solicitors and advocate and make common cause in resisting Mr Perkins' claims, deny that House of Darts (and thus now Mr Perkins) ever was the owner of the goodwill in the PENTATHLON brand of dart flights: they say that at all times the goodwill in the brand has been owned by Retriever. They further argue that, even if the goodwill was always owned by House of Darts and is now owned by Mr Perkins (he having purchased the House of Darts business), the ingredients of the tort of passing off have not been shown to exist, either on the part of Retriever and Mr Pope, or on the part of Mr Shone (Tommy's Darts).
Thus two main questions have arisen in the case. The first is: there being no statutory trade mark registration, who is the common law owner of the goodwill in the PENTATHLON brand of dart flights? Is it Mr Perkins (the House of Darts), or is it Retriever? The question is not easy, and there are some pointers in either direction, but on balance I conclude that the owner is Mr Perkins.
However, that is not the end of the case, and the second question arises. Given my decision that Mr Perkins is the owner of the goodwill in PENTATHLON dart flights, are Mr Shone and Retriever liable to him in passing off? My conclusion is that they are not. In my view the circumstance that Retriever and Mr Shone have been selling dart flights under the brand name PENTATHLON is not by itself enough to establish that they are liable to Mr Perkins in the common law tort of passing off. As I read the authorities other conditions are required as well. One of them is that Retriever and Mr Shone, by selling flights which bear the name PENTATHLON, must have been making representations which were incorrect and which may have been liable to cause confusion to the purchasing public. In the unusual circumstances of this case I cannot see how that condition is met. The flights which Retriever and Mr Shone are selling are not flights different from those to which the public has been accustomed as PENTATHLON flights. Rather they are the genuine article. Essentially for that reason, which I will expand upon later in this judgment, I consider that Mr Perkins' claim in passing off cannot succeed. He may or may not have other grounds for redress, but in my view the present claim fails.
The facts in more detail
The game of darts has acquired a high profile in recent years. There are professional circuits, and several tournaments are televised. The names of the leading players are well known to many members of the public. In addition there are a great many recreational players, who play in pubs, clubs and in their houses. All of this applies not just in this country, but in other countries as well. One of the witnesses said that darts is 'huge' in several other countries. If my memory serves me correctly he specifically mentioned the United States and Germany. Armchair television viewers could without difficulty add other countries, among which the Netherlands would certainly be prominent. The popularity of the sport has naturally had commercial implications. In particular there is a substantial and thriving market in the supply of all kinds of darts-related products. Any sports shop will have displays of them. There are manufacturers, wholesalers and retailers. Retriever is a manufacturer. House of Darts and Tommy's Darts are wholesalers. Among the products which Retriever and other manufacturers make and which wholesalers supply to retailers are various brands of dart flights.
Mr Pope established his company, Retriever, in 197It has a factory and office premises in Slough. Eddie and Peter Norman established their wholesaling business, House of Darts, in the early 1970s. It was based in Bristol, but, since it operated mainly by mail order, its geographical location was not particularly important. Early trading contacts between Retriever and House of Darts were not explored in the evidence, but it was, I think, taken for granted that the two businesses, and their proprietors, knew each other quite well by 1987. That was the year when PENTATHLON dart flights were first introduced on to the market. I should mention that Mr Pope had a fellow director at Retriever, Mr Walsh. Eddie Norman said in evidence that most of House of Darts' contacts were with Mr Walsh rather than Mr Pope. Mr Walsh died a few years ago, so such light as he could have shed on the initial arrangements for the manufacture and supply of PENTATHLON flights is no longer available.
Retriever is one of two principal United Kingdom manufacturers of darts products. The other is a company called Harrow. In 1986 or 1987 Harrow started to manufacture a new range of flights, which were of 'double thickness' polyester. The brand name for those flights was Marathon. PENTATHLON flights are also double thickness polyester flights. It is, I think, common ground that the introduction of Harrow's Marathon flights influenced the decisions which led to the slightly later introduction of PENTATHLON flights. There is, however, a dispute of evidence about whether the decision to create and launch the PENTATHLON brand of flights was taken by House of Darts which engaged Retriever to manufacture them, or by Retriever which chose to supply them solely to House of Darts as a single wholesale distributor. I will return to that issue later. At this stage I repeat that PENTATHLON flights were placed on the market in 1987 and, as I...
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