Urbanbubble Ltd v Urban Evolution Property Management Ltd
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 25 January 2022 |
| Neutral Citation | [2022] EWHC 134 (IPEC) |
| Docket Number | Case No: IP-2020-000081 |
| Year | 2022 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 134 (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, London, EC4 1NL
HIS HONOUR JUDGE Hacon
Case No: IP-2020-000081
Stephanie Wickenden (instructed by JMS Solicitors LLP) for the Claimants
Amanda Michaels (instructed by Pinsent Masons LLP) for the Defendants
Hearing dates: 4–5 October 2021
Approved Judgment
HIS HONOUR JUDGE Hacon
Introduction
This action is about the right or otherwise of the First Defendant (“UEPM”) to provide property management services under the name “Urban Evolution”.
The Claimants trade in the same field under the name “Urbanbubble”. The First Claimant owns UK Trade Mark No. 3116646 in the form of the word URBANBUBBLE, registered as of 7 July 2015 in respect of “Property (real estate-) management” (“the Trade Mark”). The Claimants allege that because of UEPM's trading it has infringed the Trade Mark and passed off its services for those of the Claimants. The Second to Fifth Defendants, all at one time directors of UEPM, are said to be liable with UEPM as joint tortfeasors.
The Second Claimant is now in liquidation and took no active part in the trial. There was an unchallenged written assignment, to which the liquidator was party, of all the Second Defendant's intellectual property rights to the First Claimant.
The Defendants deny the allegations. Their defence includes the argument that the Claimants consented to UEPM's use of the trading name Urban Evolution and/or that the parties' conduct created an estoppel on which the Defendants can rely.
Stephanie Wickenden appeared for the Claimants, Amanda Michaels for the Defendants. I received thorough written submissions and helpful oral argument for which I am grateful.
Background Facts
All three claimant companies are in the property management business, sharing the same sole director, Michael Howard. The First Claimant was incorporated in February 2008 and began trading in that year, managing an apartment block in Manchester. The Third Claimant was incorporated in January 2016 to handle sales and lettings.
In February 2016 Mr Howard agreed with The Elliot Group International Limited (“Elliot”), a property development company based in Liverpool, that the First Claimant would manage residential buildings in Liverpool which were due for completion in the summer of 2016. These were referred to in the evidence as the “EG Liverpool Buildings”. The prime mover behind Elliot was and is the founder and director of the company, Elliot Lawless.
In July 2016 Elliot asked Mr Howard to use the Fifth Defendant (“Mr Tumilty”) as letting agent for a portion of the EG Liverpool Buildings. In about the same month Mr Tumilty's company, then called Liverpool City Lets Limited, took on about 25% of the Liverpool properties otherwise managed by the First and Third Claimants. Liverpool City Lets Limited later changed its name to Liverpool City Rents Limited and it is convenient to refer to the company in both guises as “LCR”.
In August 2016 the Second Claimant was incorporated as the vehicle for the management of the EG Liverpool Buildings. Hereafter it will generally be unnecessary for me to distinguish between the Claimants.
UEPM was incorporated on 10 March 2018 with Mr El Paraiso as managing director. Mr Tumilty and the Fourth Defendant (“Mr Spencer”) were directors, as was Mr El Paraiso's wife Ruth, the Third Defendant.
On 26 March 2018 UEPM's website went live. It showed that UEPM was trading under the name “Urban Evolution” and was using a logo featuring that name, referred to at trial as UEPM's “Old Logo”. Below is shown the Claimants' logo on the left and UEPM's Old Logo on the right:
Early in the day after the website went live, on 27 March 2018, Mr Tumilty received a phone call from Laura Caffery, a letting agent acting for the Claimants. Ms Caffery complained that UEPM's Old Logo was too similar to the Claimants' logo. This was followed by an email of the same date from Ms Caffery to Mr Tumilty expressing a similar view in strong terms.
There were then exchanges between Mr Howard and Mr Tumilty. After these, by an email timed at 13:35 on 27 March 2018 Mr Tumilty instructed UEPM's graphic design company, The Cheerful Lime Limited, to redesign the logo.
UEPM's website was updated on 29 March 2018 to show an amended logo, that described at trial as UEPM's “New Logo”. The website still used the sign Urban Evolution to refer to UEPM, indicating that there had been no change in trading name. This is the New Logo still used by UEPM, in several colourways apparently, although I was told that nothing turns on colour:
On 12 April 2018 Mr Howard sent Mr Tumilty an email stating that matters had been resolved. The Defendants rely on this and on other exchanges between the parties as establishing consent by the Claimants to UEPM keeping its Urban Evolution trading name. I will consider them in more detail below.
One of the assets owned by Elliot and managed by the Claimants was a building in Liverpool known as “the Artesian”. In July 2018 Elliot appointed UEPM to manage the letting of commercial units in the Artesian. The Claimants at that time continued to act as letting agents for the residential properties in the building.
In October 2018 Mr El Paraiso received emails from third parties asking whether there was a connection between Urban Evolution and Urbanbubble. Unaware of these at the time, the Claimants now rely on them as proof of a likelihood of confusion between their trade mark and UEPM's trading name and of a misrepresentation generated by the use of that sign.
Tension which already strained the relationship between the parties was exacerbated in March 2019 when Mr Howard discovered that UEPM intended to apply to take over the management of the Artesian as a whole by a process known as a “Right to Manage” – an RTM application. Up to this point LCR had acted as letting agent for some of the Elliot properties in Liverpool managed by the Claimants but at the end of March 2019 the Claimants terminated their commercial relationship with LCR.
On 28 October 2019 Mr El Paraiso sent an email to the First and Second Claimants saying that UEPM would take over management of the Artesian entirely on 3 February 2020. In February 2020 Elliot removed the Second Claimant as management agent for all the Liverpool properties which up to then had been managed by the Second Claimant and in its place appointed UEPM. Counsel for the Claimants described the relationship between Mr Howard and Mr El Paraiso as having by this time become toxic, which seems accurate – intemperate emails were exchanged.
In early February 2020 Mr El Paraiso received phone calls enquiring about the relationship between Urban Evolution, Urbanbubble and Elliot. The Claimants rely on these as further evidence of a likelihood of trade mark confusion and of a misrepresentation.
On 17 June 2020 a letter before claim was sent on behalf of the Claimants. The Claim Form was issued on 23 November 2020.
The Witnesses
Written and oral evidence was given by Mr Howard and Menno De Vree for the Claimants. During the relevant period Mr De Vree was head of the Claimants' operations in Liverpool.
Evidence for the Defendants was given by Mr Tumilty, Mr El Paraiso and Stephen Wakefield. Mr Wakefield is a director and employee of The Cheerful Lime Company, which specialises in website design. He gave evidence about the design of UEPM's logo and its website.
In my view Mr Tumilty, Mr El Paraiso and Mr Wakefield were doing their best honestly to recollect the facts as they remembered them. The Claimants' counsel did not criticise their evidence and I think that she was fair in not doing so. Similarly, the Defendants' counsel, rightly, did not criticise Mr De Vree to any significant degree. He was a good witness.
However, in closing the Defendants' counsel had something to say about Mr Howard's evidence, suggesting that he was a deeply unreliable witness. Counsel had a number of points to support this submission but I need mention only the first; the remainder seemed to me to carry less force.
Mr Howard signed the statement of truth in the pleadings filed on behalf of the Claimants and was by inference the source of the alleged facts set out in those pleadings. A key point in the evidence was what happened after Mr Howard became aware of UEPM's Old Logo, specifically after the phone call of 27 March 2018 from Ms Caffery to Mr Tumilty. Counsel for the Defendants submitted that Mr Howard had, via the Claimants' pleaded Reply and subsequent amendments to it, produced three successive accounts of what had happened, adjusting the facts to fit the Claimants' case.
Mr Howard's first version of events, pleaded in the Claimants' original Reply, was that on 27 March 2018 Mr Howard and Mr Tumilty met in a park in Greater Manchester called Princess Park. At this meeting Mr Tumilty was said to have represented to Mr Howard that UEPM:
“… was not interested in competing with the Claimant for business, and in particular stated that they had no interest in acquiring the Claimant's largest client at the time, [Elliot]. [Mr Tumilty] instead represented that [UEPM] was being set up purely to...
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