Waseem Ghias t/as Griller v Mohammed Ikram t/as The Griller Original and Others
| Jurisdiction | England & Wales |
| Judge | Miss Recorder Michaels,and |
| Judgment Date | 24 January 2012 |
| Neutral Citation | [2012] EWPCC 3 |
| Court | Patents County Court |
| Date | 24 January 2012 |
| Docket Number | Case No: 1CL70027 |
[2012] EWPCC 3
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
London EC4A 1NL
Miss Recorder Amanda Michaels
Case No: 1CL70027
Ian Silcock (by direct professional access) for the Claimant
Paul Dipré (instructed by ATM Law Solicitors) for the Defendants
Hearing date: 13 December 2011
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.
Miss Recorder Michaels
Since approximately 2003 the Claimant, Mr Waseem Ghias, has been running a fast food business under the name 'GRILLER'. The Claimant has run his own restaurant under that name, and has franchised others to do the same. This is an action for infringement of two trade marks which he registered in relation to that business.
The trade marks upon which the Claimant relies are:
a. UK Registered Trade Mark No. 2326754, registered with effect from 15 March 2003. It is a device mark, consisting of the word 'GRILLER' with flame effects on either side. There is no colour limitation to the registration:
For convenience, I shall call this mark "the Logo".
andb. UK Registered Trade Mark No. 2376629, registered with effect from 26 October 2004. It is also a device mark, in which the word GRILLER and the flame device of the Logo are included, in flame-red, together with a device of a chicken dressed as a waiter, partly coloured yellow, red and orange:
For convenience, I shall call this mark "the Device."
Both trade marks are registered in the Claimant's own name and for the same specification of goods and services. The specifications include a wide range of foods and beverages in Classes 29, 30 and 32 and a range of services in Class 43, notably including "Restaurant, bar and catering services." The full specification is set out at the end of this judgment.
The identity or name of some of the Defendants has changed as the proceedings have progressed. The only Defendant who has not changed at all is the First Defendant, Mr Ikram, who is sued in relation to a restaurant business trading at 527 Cranbrook Road, Ilford, Essex, IG2 6HA and at 84 Hermit Road, London E16. The business is now run through a company incorporated on 8 September 2010, of which Mr Ikram is a director, called The Griller Original Limited. That company was recently joined as the Fourth Defendant.
The current Second Defendant, Mr Adia, runs a business known as 'Griller King' at 10 Central Parade, Denning Avenue, Waddon, Croydon, CR0 4DJ. That business was previously run by a partnership, and sued as such in the claim form. The Particulars of Claim named a Mr Khan and a Mr Ismail as the partners in that business and as the 'joint' Second Defendant. However, by an Order of 29 September 2011, Mr Esmail Adia was named as the Second Defendant, in place of the partnership. I have been told that the Claimant believes that Mr Adia is the same person as the "Mr Ismail" previously named as one of the partners, although this does not appear clearly from any of the evidence before me.
The Third Defendant, Mr Ahmad, again was substituted for the original third Defendant, having taken an assignment of a business trading as 'Griller Hut' from such Defendant in June 2010. Mr Ahmad incorporated a company, Griller Hut Limited, on 6 September 2011, and that company was joined as the Fifth Defendant. The 'Griller Hut' restaurant is at 70 High Street, South Norwood, London SE25 6EB.
The three businesses, The Griller Original, Griller King and Griller Hut, are not connected and the Defendants are not all alleged to be liable for the same infringements. However, the Defendants all instructed the same firm of solicitors in June 2011 and were represented by the same counsel at trial.
Case management directions were given by HHJ Birss QC on 29 September 2011. These provided for the various changes of party which I have described above and limited both disclosure and the evidence to be adduced at trial. The Claimant was given permission to rely on a single witness statement to address the topic of the Claimant's reputation, and the Defendants were given permission to rely on one witness statement per business, intended to address (if so advised) the Claimant's reputation and 'how the alleged similarities between the Claimant's registered trade marks and the Defendants' trading names or styles complained of came about.' The trial was ordered to consist of oral submissions on behalf of the parties, with no oral examination or cross-examination of witnesses. In the event, witness statements were filed by the Claimant, Mr Ikram, Mr Adia and Mr Ahmad.
There is one further preliminary point with which I should deal at this stage. The Claimant consulted solicitors in 2009 but has acted throughout these proceedings as a litigant in person. He was represented at the trial by Mr. Ian Silcock of counsel through the direct professional access scheme. In his skeleton argument, Mr Silcock submitted that the claim was for passing off as well as for trade mark infringement. He relied upon the claim form which said "All 3 Defendants have violated our legitimate legal trade mark rights under Trade Mark Act 1994 and Any other law [ sic] court see relevant." He also said that correspondence had made it clear that the claims related to the violation of the Claimant's goodwill in the name 'Griller.' He referred me to a letter written by solicitors then acting on the Claimant's behalf to the 'owner/occupier' of 'Griller King' on 11 December 2009. The letter is headed "Trade Mark Infringement" and sets out the Claimant's potential trade mark infringement claim. It also refers to a possibility of bringing a claim for passing off if the 'Griller King' signage, etc caused confusion. That was the only such letter which was sent prior to the issue of the claim form. The Claimant also relied on a letter which he wrote to the Defendants on 6 December 2011, that is, in the week before the trial and after exchange of witness statements, saying that the claim was for passing off as well as trade mark infringement.
The Defendants objected that the claim for passing off had not been properly pleaded. The Particulars of Claim certainly refer only to the registered marks and to the 'violation' of those marks under the Trade Marks Act 1994. Mr Dipré, on behalf of the Defendants, referred me to CPR 16.2. He had appeared at the case management conference before HHJ Birss QC and his recollection was that the lack of any claim for passing off had been mentioned at that hearing, although the Claimant who had also been present disputed this. In the circumstances, Mr Dipré said that the Defendants had not prepared their witness statements on the basis that they needed to deal with passing off, nor had Mr Dipré understood that he needed to deal with the point before receiving the Claimant's skeleton argument.
In my view, the wording of the Claim Form and the Particulars of Claim is not such as to disclose a claim for passing off as well as for infringement of the registered marks. The fact that references to passing off were buried in the body of the Claimant's solicitors' letter of 11 December 2009, sent only to the Second Defendant or his predecessor in title, did not suffice in my judgment to put all of the Defendants on notice that such a claim was intended to be made, given the wording of the Particulars of Claim filed over a year later in March 20It seems that no further reference was made to a claim for passing off until the case management conference in late September and none was clearly intimated until 6 December 2011, which was after exchange of witness statements. In my judgment, that was too late in the proceedings to raise the point. I note that no application to amend was made at any stage. Even making due allowance for the Claimant's position as a litigant in person, I consider that it would be unfair to the Defendants to permit the Claimant to advance a claim based on passing off at this stage, and I intend to limit my judgment to consideration of the allegations of trade mark infringement.
Mr Silcock also raised an issue as to how I should treat the evidence before me, where none of it was challenged either on paper or through cross-examination. He referred me to the decision of Mr Richard Arnold QC (as he then was) sitting as the Appointed Person in Brutt trade mark [2007] R.P.C. 19 and Pan World Brands Ltd v Tripp Ltd, " Extreme" [2008] R.P.C. 2. Mr Arnold QC held that where evidence had been given in a witness statement which was not obviously incredible, and the opposing party had not given the witness advance notice that his evidence was to be challenged, nor challenged his evidence in cross-examination, nor adduced evidence to contradict the witness's evidence despite having had an opportunity to do so, it was not open to the opposing party to invite the tribunal to disbelieve the witness's evidence.
Mr Arnold QC was considering the credibility of unchallenged evidence in proceedings in the UKIPO, where sequential exchange of evidence is the norm, considerations which are rather different from those which arise in this case, where the parties' evidence was filed simultaneously. Neither 'side' had an opportunity to challenge the other side's witness(es) in their own evidence. Nevertheless, disputed points could have been raised in correspondence before trial, or an application could have been made after the exchange of witness statements for permission to cross-examine on specific points....
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