The Military Mutual Ltd v Police Mutual Assurance Society Ltd
| Jurisdiction | England & Wales |
| Judge | Judge,Hacon |
| Judgment Date | 22 June 2018 |
| Neutral Citation | [2018] EWHC 1575 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Case No: IP-2016-000182 |
| Date | 22 June 2018 |
[2018] EWHC 1575 (IPEC)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2016-000182
Michael Silverleaf QC and Jacqueline Reid (instructed by BLM LLP) for the Claimant
Simon Malynicz QC and Tim Austen (instructed by Clifford Chance LLP) for the Defendants
Hearing dates: 9–11 May 2018
Introduction
Lord Diplock described passing off as the “most protean” of the wrongs actionable in English law at the suit of traders who suffer loss of business or goodwill through unfair trading by others ( Erven Warnink Besloten Vennootschap v J. Townend & Sons (Hull) Ltd [1979] A.C. 731, at 740). Since judgments of Danckwerts J in 1959 and 1960 the flexible boundaries of the tort have come to embrace what is sometimes called ‘extended passing off’. Those judgments were J. Bollinger v Costa Brava Wine Co Ltd [1960] 1 Ch. 262, in which preliminary points of law were decided, and J. Bollinger v Costa Brava Wine Co Ltd (No. 2) [1961] 1 W.L.R. 277, the substantive trial.
Warnink remains the most authoritative ruling on extended passing off and is the source of that name, see p.739.
In the present action the claimant (“MML”) seeks to push the boundaries a little further. It was argued on behalf of MML that the limits of passing off contain a form which, to date, the courts have not had occasion to recognise explicitly.
Michael Silverleaf QC and Jacqueline Reid appeared for MML, Simon Malynicz QC and Tim Austen for the defendants.
Background
MML arranges the provision of insurance services to existing and past members of the armed forces and their families. For brevity I will use the term ‘armed forces’ to cover all such individuals. To some degree MML also provides discretionary risk cover to the armed forces. MML was set up by Major General Sir Sebastian Roberts (ret'd) and started business in April 2015. Sir Sebastian had taken the view that insurance companies failed to cater adequately for the insurance needs of the armed forces. MML's purpose is to fulfil such needs.
MML has neither share capital nor, therefore, shareholders. Membership of the company is conferred upon application and approval of the board, although in practice the purchase of a financial product through MML can qualify the customer to become a member and thereby acquire a share in the control of the company.
MML has no employees, just seven directors including Sir Sebastian. Almost every aspect of MML's business is conducted by Regis Mutual Management Limited (“Regis”), part of an international group which for a fee operates mutual insurance companies.
The first defendant (“PMAS”) is the successor company to an association set up in 1866 to provide financial and welfare support to police officers, police staff and their respective families, which I will hereafter collectively call ‘the police force’. Since the enactment of the Friendly Societies Act 1921 and its successors up to the current Friendly Societies Act 1992 (“the 1992 Act”), PMAS has operated as a friendly society within the meaning of those statutes. Those among the police force who purchase PMAS's products become members of PMAS and thereby share in its ownership and control. MML accepted that PMAS's activities in relation to the police force qualified it as a mutual within MML's definition.
It emerged during the trial that PMAS's direct dealings are still with the police force only. I understand there to be no objection to PMAS's use of a trading name which includes ‘mutual’ for its direct trading activities.
Under the 1992 Act a friendly society is permitted to incorporate or acquire subsidiaries to conduct aspects of its business. The second to fourth defendants are subsidiaries of PMAS. The fifth defendant is a former subsidiary of PMAS which was sold in December 2016. In April 2016 the website www.forcesmutual.org was set up, offering insurance services under the trading name ‘Forces Mutual’. The website appears to be operated by the second and fourth defendants, although it also states that ‘Forces Mutual’ is the registered trade mark of PMAS and that it is the trading name of the PMAS, the second to fourth defendants and PM Advisory Limited. Business under that name is conducted by the second to fourth defendants and by PM Advisory Limited. I will hereafter refer to the second to fourth defendants collectively as ‘Forces Mutual’.
The financial services offered by Forces Mutual are aimed at the armed forces. They include insurance for military kit, life insurance, dental and health insurance, plus other financial products such as mortgages and savings products.
These proceedings concern the use of the word ‘mutual’ in Forces Mutual's trading name. MML alleges that because of the way they trade, Forces Mutual are not mutual entities. This is because they do not allow those customers who are members of the armed forces to become members and part owners either of Forces Mutual or of the company which controls them, PMAS.
MML's case is that its status as a mutual gives it a cause of action for passing off against Forces Mutual. To underline the point, MML has said that it would have no objection were Forces Mutual either to trade under name excluding the term ‘mutual’ or alternatively to amend their trading practices to become a mutual in the sense recognised by MML.
The law
In a classic passing off case a trader claims that a trading name or a get-up is distinctive of his goods or services. Extended passing off cases have differed in that the name in issue was alleged to be associated with a type of product, as opposed to a single trader or corporate group. Champagne was the first product to be awarded protection by restraining the defendant's use of that name. There have been further champagne cases and successful claims in relation to sherry, advocaat, whisky, vodka and going beyond the names of alcoholic drinks, Swiss chocolate and Greek yogurt.
Usually claimants have been the makers of the relevant product. In the champagne cases the claimants were champagne houses (see for example Bollinger and Taittinger SA v Allbev Ltd [1993] F.S.R. 641). In Warnink the claimant was a producer of advocaat, an egg and spirit liqueur. In Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Ltd [1999] R.P.C. 826 (CA) the claimants that mattered were Swiss chocolate manufacturers – and so on. A cause of action is not confined to manufacturers though. In John Walker & Sons Ltd v Henry Ost and Company Limited [1970] F.S.R. 63 the plaintiffs were all blenders and exporters of Scotch whisky, not distillers. Foster J rejected an argument that only makers of a product had a cause of action (at p.79). The availability of a cause of action is likely to depend on whether the claimants (or the traders of whom the claimant is one) are collectively responsible for the quality of the product.
In Warnink Lords Diplock and Fraser each defined the elements of passing off generally, although with an eye to extended passing off. Lord Diplock's were these (at p.742):
“My Lords, A. G. Spalding & Bros. v. A. W. Gamage Ltd., 84 L.J.Ch. 449 and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”
Lord Fraser identified the elements this way (at pp.755–6):
“It is essential for the plaintiff in a passing off action to show at least the following facts:- (1) that his business consists of, or includes, selling in England a class of goods to which the particular trade name applies; (2) that the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods; (3) that because of the reputation of the goods, there is goodwill attached to the name; (4) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value; (5) that he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached.”
Lord Diplock qualified his five elements by saying (at p.742) that although all passing off actions would have those elements, not all factual situations which present those characteristics would give rise to a cause of action for passing off.
The House of Lords subsequently reasserted the three key elements of classic passing off in Reckitt & Colman Products Ltd v Borden Inc [1990] R.P.C. 341, at 406, namely goodwill, misrepresentation and damage. Since then extended passing off cases have often been analysed by reference to those three elements.
The law was reviewed more recently in some detail by the Court of Appeal in Diageo North America Inc v Intercontinental Brands (ICB) Ltd [2010] EWCA Civ 920; [2011] R.P.C. 2 and again in Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5; ...
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