Vertical Leisure Ltd (Applicant/Claimant) v Poleplus Ltd and Another (Respondent/Defendant)
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 02 June 2014 |
| Neutral Citation | [2014] EWHC 2077 (IPEC) |
| Docket Number | Case No: IP13M05150 |
| Court | Intellectual Property Enterprise Court |
| Date | 02 June 2014 |
[2014] EWHC 2077 (IPEC)
IN THE INTELLECTUAL PROPERTY ENTERPRISE COURT
(FORMERLY THE PATENTS COUNTY COURT)
The Rolls Building
7 Rolls Building
Fetter Lane, London
EC4A 1NL
His Honour Judge Hacon
Case No: IP13M05150
Mr M. Harris (instructed by Waterfront Solicitors LLP) appeared on behalf of the Claimant
Mr A. Wood (instructed by Swindell & Pearson Ltd) appeared on behalf of the Defendant
Approved Judgment
This is an application for summary judgment in an action for infringement of trade marks and passing off. The claimant, Vertical Leisure Limited, makes and sells pole exercise dance equipment, in particular poles used by pole dancers. The claimant is the proprietor of a number of United Kingdom community and international marks, consisting of or including the words "X-Pole". As currently pleaded, the relief is sought only in relation to the United Kingdom marks, but at the start of the hearing I gave permission to amend to plead international and Community trade marks.
The claimant has supplied poles under the X-Pole name since 2004. These have been advertised and marketed throughout Europe, particularly in the UK, and significant sums have been spent on marketing, in particular since 2010.
In 2013 a new type of pole was developed which was given the name SILKii. This new pole received publicity at the Blackpool Winter Gardens at an exhibition known as the International Fitness Showcase held there at the Blackpool Winter Gardens between 20 and 24 March 201SILKii poles were not offered for sale at that exhibition. Several pole athletes sponsored by the claimant, known as the X-Pole athletes, attended the event with members of the claimant's sales and marketing team. This comes from the evidence of Mr Stoughton, who is the head of finance operations for the claimant. Mr Stoughton says that the X-Pole athletes were keen to try out the SILKii as soon as possible, and he also says that the marketing team brought the SILKii product to the event, where the X-Pole athletes both used and demonstrated it. Mr Stoughton goes on: "During the course of the three days ( inaudible) 2013 the claimant's representatives explained the SILKii product to consumers using the name SILKii; they also told visitors to understand that the SILKii product would be officially launched at the FIBO exhibition in Cologne in Germany on 11 and 12 April 2013, and indeed the official launch of the SILKii launch did happen at FIBO in Cologne on 11 and 12 April." There, according to Mr Stoughton, the pole received a good deal of publicity amongst prospective buyers, including prospective buyers from England and Wales.
There is a third witness statement from Mr Stoughton put in just before this hearing in which he says that the claimant took orders from SILKii at FIBO. However, as pointed out on behalf of the defendants, there is no evidence that any of these orders came from United Kingdom purchasers.
The claimant claims that by 12 April 2013 it had goodwill in England in its business and manufacturing its own poles and that this goodwill was associated in the mind of the relevant public not only with the trade name X-Pole but to some extent also with the trade name SILKii. I accept this; it seems to me there is no doubt at all that the goodwill of the business was attached to the X-Pole name and, on the evidence before me, also some of that goodwill was attached to the SILKii trade name, bearing in mind the activities carried on by the claimants at the Blackpool Winter Gardens and subsequently at FIBO. In the latter case, at least some of that publicity in Cologne must have come to the attention of potential purchasers in England and therefore goodwill subsisted by 12 April 2013.
The first defendant is a competitor of the claimant, although I understand in a much smaller way of business. It sells dance and exercise poles under trade names "Polesilks" and "Poleplus". The second defendant, Mr Peter Bowley, was briefly a director of the first defendant and has worked with the first defendant, describing himself as a technical director. He is a former boyfriend, and now I understand fiancé, of Ms Sue Colebourne, who is now the sole director of the first defendant, Poleplus Limited.
I mentioned the date of 12 April 2013 a moment ago and this is relevant because on that date Mr Bowley registered, it appears, six domain names. Four of these are set out in the Particulars of Claim, namely SILKii.co.uk, SILKii. com, X-Pole SILKii.com and X-Pole SILKii.co.uk. I was told today by Mr Harris, who appears for the claimant, that two further domain names have been identified. I understand these were registered at the same time. They are the same as the third and fourth domain names I have just mentioned, except for the dash between the "e" and the "s" in each case – in other words, between "Pole" and "SILKii". It appears that a number of other domain names have since been registered by Mr Bowley between 29 and July and 8 August 2013, all of them featuring the word "X-Pole" or the word "SILKii".
The claimant alleges that the registration by Mr Bowley of those names must have been prompted by publicity given to the claimant's new SILKii pole in Blackpool and also because X-Pole was a well-known trade name for the claimant.
On 7 August the claimant applied to the United Kingdom Intellectual Property Office to register SILKii as a UK trade mark and it was registered on 8 November 2013.
On 9 August 2013 Mr Bowley sent an email to Clive Coote, director of the claimant, offering to sell to the claimant seven of the domain names he had registered and two Twitter accounts relating to SILKii. In that email Mr Bowley said:
"Dear client,
I managed to get back earlier than expected and do not want to delay this any further than is necessary. In principle I agree to sell you the domain SILKii.com and will also be willing to sell you the following domains if you were interested [and then he lists seven further domain names, so in fact he appears to have been offering eight].
I also have two Twitter accounts that appertain to SILKii. Are you willing to put together a package all of the above? I await your reply.
Regards, Pete."
Correspondence followed but the claimant declined to purchase of the domain names or the Twitter account offered. A claim form was issued on 27 November 2013 for infringement of the X-Pole and the SILKii trade marks and for passing off.
I begin first with the trade mark infringement. Articles 5(1)(b) and article 5(2) are relied on. The allegations are made against the defendants jointly, but it is not suggested that Mr Bowley trades on his own account, so it is not clear to me at the moment how the trade mark case is put against him personally. So far as passing off is concerned, again it is pleaded against both of the defendants; firstly on the basis that the registration of the domain names constitutes a misrepresentation that the defendants' business is authorised, approved by or connected with the claimant's business. Only the first defendant has a business and so it appears to be effectively an allegation against the first defendant only. Passing off is also put on the basis of the registration of the domain names' generating instruments of deception. Again, it is pleaded against both defendants, but this is really a pleading against Mr Bowley since he was the one who registered the names. Among the relief sought in the particulars of claim is an order for the transfer by Mr Bowley to the claimant of all the domain names on which complaint is made.
In Mr Bowley's Defence, he admits that he registered the domain names. He admits he offered to sell them to the claimant. He claims he wanted to make to some money from the claimant. He says he would not have sold the domain names to anyone else. He says he would not have suggested to the first defendant that the first defendant should use them and he says that he continued to register for the domain names to assemble a...
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