Case No: CC12P03114
Neutral Citation Number: [2013] EWPCC 8
IN THE PATENTS COUNTY COURT

Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL

Date: 20/02/2013

Before :

HIS HONOUR JUDGE BIRSS QC
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Between :

	(1) DYNO HOLDINGS LIMITED
(2) DYNO-ROD LIMITED	
Claimants	
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	(1) DIAL A ROD HOMECOVER LIMITED
(2) PAUL PLUMMER
(3) CHARLOTTE EDNEY	

Defendants	

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Gowlings LLP) for the Claimants
The Second Defendant represented himself

On paper
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Judgmen
Judge Birss : 
1.	This is an action for trade mark infringement in relation to United Kingdom registered trade mark No 1282932 for the mark DYNO ROD in class 37.  The mark is:

2.	The specification of services includes “maintenance, repair, unblocking, cleaning, descaling, sterilising, disinfecting, fumigating and deodorising of drainage and piping systems, sewers manholes, gratings, culverts, chambers, gullies, flues and channels for the passage of liquids, solids or of gases;”, “plumbing and glazing services;” and other similar sorts of plumbing and drainage services in class 37. 
3.	The first claimant is the proprietor of the mark and the second claimant is a non-exclusive licensee.   Both companies are subsidiaries of Centrica Plc, the owner and operator of the British Gas business.  Dyno-Rod (the second claimant) has since 1963 provided drainage services in the UK under the mark and since the early 1980s plumbing services as well. There are also 49 franchisees who perform plumbing and drainage services under the trade mark with a licence from the first claimant. 
4.	The defendants are involved in various ways in the provision of plumbing and drainage services under the mark DIAL A ROD.  In 2007 the United Kingdom registered trade mark 2443609 for the word DIAL A ROD was registered in class 37 in respect of ‘plumbing and drainage services”.  It was applied for on 15th January 2007 and registered on 3rd August 2007.  The second defendant is the current proprietor of the trade mark.  The mark has been assigned in various ways since it was applied for but the Second Defendant has always been involved one way or another.
5.	The claimants contend that the second defendant and various other entities associated with him have been using the name DIAL A ROD for plumbing and drainage services in the UK for some years.  They also contend that the second and third defendant offered plumbing and drainage services under that DIAL A ROD mark with “flying serifs” on a website www.dialarod.tv.  The website is no longer in operation.  The flying serifs form of DIAL A ROD is: 

6.	This form is obviously highly reminiscent of the claimants’ mark. 
7.	The claimants issued proceedings in the Patents County Court.  The claim was for trade mark infringement and revocation and invalidity of the DIAL A ROD mark 2443609.  The grounds of revocation/invalidity were:
i)	relative grounds: s47(2)(a) and (b) / s5(2), s5(3) and s5(4) of the Trade Marks Act 1994;
ii)	bad faith: s47 (1) and s3(6) of the 1994 Act;
iii)	liable to mislead: s46(1) (d) of the 1994 Act.
8.	Ground (i) needs no elaboration.  Ground (ii) was based on the contention that the mark had been registered to deliberately take advantage of the claimant’s reputation and to deliberately mislead the public.  Ground (iii) was based on the contention that the mark had fallen into disrepute. The claimants relied on an Advertising Standards Authority adjudication against the first defendant “t/a Dial A Rod” for breach of the CAP Code by reason of such statements as “We will be at your premises within one hour of yours to out [sic] 24 hour helpline.  All our work is guaranteed and comes with a 100% satisfaction or your money back.” And “There is [sic] no other companies that can compete with out prices or level or service.”  The claimants also relied on a number of complaints about services offered under the DIAL A ROD mark and a failure of the DIAL A ROD business to satisfy county court judgments.  For these reasons the claimants contended that the mark DIAL A ROD had fallen into disrepute. 
9.	Neither the first nor third defendant filed a defence but the second defendant did.  The second defendant’s defence dated 9th September 2012 stated that he was now the true proprietor of the DIAL A ROD mark and stated that he denied that he had infringed the mark.  It did not set out any facts, matters or arguments.  Later the second defendant filed further material by which he aimed to show that there were other people using the name DIAL A ROD in the UK and that Dyno Rod and British Gas had received many 100s of complaints about their work.  
10.	The claimants applied for default or alternatively summary judgment against the defendants and the matter came before me on 10th December 2012.  I heard counsel for the claimants and the second defendant in person.  The other defendants did not appear.  I gave judgment in default against the first and third defendants.  I dismissed the application for default judgment against the second defendant. The matter of summary judgment needed further submissions, some from the claimants and also from the second defendant.  I gave directions for it to be continued in writing and decided on the papers.  Both the claimants and the second defendant filed written submissions.  This is my judgment on the application for summary judgment.
11.	The claimant contends I should grant summary judgment on its claims.  
12.	The second defendant disputes the claimant’s allegations that he has infringed the claimants trade mark for the following reasons: 
i)	The mark DIAL  A ROD was registered in 2007 in good faith as a way of protecting the name from other companies who were using it.  The name has been used in Mr Plummer’s family since the 1960s as the trading name for his family’s plumbing business.
ii)	If the claimants had an issue with the registration of the mark they had an opportunity to object but nothing was done.
iii)	The mark has been used since 2007 and, as the second defendant put it “over the 5 years that it can be objected to” the claimants have not brought a case for infringement at any time since that date of registration.
iv)	The claimants are holding the second defendant responsible whereas in fact others were responsible including the first and third defendant.
v)	Other companies use marks ending with the word “rod” in the plumbing and drainage industry.
vi)	Four other companies use the mark DIAL A ROD in the same industry.
vii)	In answer to the complaints about the services offered under the DIAL A ROD mark, the second defendant referred to complaints about the claimant’s business.
13.	Subject to what follows, the claimants have a powerful case that the second defendant has infringed.  Although the existence of the second defendant’s registered mark is capable of founding a defence under s11(1) of the 1994 Act, I doubt that defence could apply to the use of DIAL A ROD with flying serifs.  On the other hand the second defendant also appears to be responsible for use of the mark in a form without flying serifs.  In that form the issue under s11(1), and therefore the status of UK registered trade mark 2443609 and the impact of s47(6), is critical.  Irrespective of the merits of the claimants’ case that that mark is invalid on relative grounds, an issue which arises under section 48 of the Trade Marks Act 1994.  The section provides as follows: 
48 Effect of acquiescence.
(1) Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right— 
(a) to apply for a declaration that the registration of the later trade mark is invalid, or 
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, 
unless the registration of the later trade mark was applied for in bad faith.
14.	This section implements Art 9 of the Directive (2008/95/EC) and see also Art 54 of the CTM Regulation (207/2009).   Neither party made any submissions as to the effect of s48 (nor s11(1), nor for that matter on the impact if any of the Opinion of AG Mengozzi in Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza (Case C-561/11)) 
15.	The section refers to acquiescence for a “continuous period of five years in the use of a registered trade mark in the United Kingdom”.  Although as a matter of grammar the word “continuous” refers to the acquiescence rather than to the use, it seems to me at least highly probable that in order for the provision to apply, the use itself must have been conducted for a continuous five year period.
16.	In this case the application for a declaration that the registered trade mark 2443609 is invalid was begun at the earliest on 1st August 2012 when the claim form was issued or 2nd August which was the date of service.  Since registered trade mark 2443609 was applied for on 15th January 2007 and registration was completed on 3rd August 2007, the application for a declaration of invalidity is (just) less than five years from the date registration was completed but more than five years from the deemed date of registration (s40(3)).  Although the second defendant does not refer to the section of the 1994 Act by its number, that is the point taken at sub-paragraph (iii) above. 
17.	Since this issue had only been raised after the claimants’ submissions were made, I asked them to address it.  The claimants’ case is that the claimants relied on their franchisees to identify potential issues of this kind and that each time what they regarded as infringing activity was monitored it appeared to cease and the relevant company would disappear, only for the mark complained of to re-appear at a later date.  It was difficult to identify the correct defendant.  The claimants did not address the question of the five year period under s48.
18.	One key element of the claimants’ submission is borne out by the materials in this case.  Registered trade mark 2443609 has passed through a number of hands over the years.  It is not at all clear which entities have held the mark, or been using it, at what times and for what periods.
19.	I am not satisfied that I can or should give summary judgment in this case.  The issues of bad faith (s3(6) and liability to mislead s46(1)(d)) are not so clear cut as to be suitable for summary judgment on  any view.  The case for infringement in relation to the mark used by the second defendant with flying serifs is a strong one but, as mentioned above, the real issue in this case relates to the use of DIAL A ROD itself, without the serifs.  To resolve that aspect of the matter depends on resolving the issue of the validity of registered trade mark 2443609, which in turn depends on s48.  The second defendant’s evidence in support of its argument under s48 is thin.  Indeed in his original defence the second defendant wrote “I am the owner of the trade mark I purchased it on the 9th July 2012 and have not used it since that date”.  I doubt that there really is a case that there has been continuous use, indeed on the material I have seen it is highly unlikely that the mark has been used continuously for the five year period.   It looks much more as though different entities, perhaps all connected or perhaps not, have used the mark on and off for longer or shorter periods at different points in time and that, as the second defendant said in its first defence, he had not used it since 9th July 2012. 
20.	I will not grant summary judgment on this point but I should consider whether to make a conditional order (CPR r3.1(3) and PD 24 paragraphs 5.1 and 5.2).  A conditional order will be made if it appears to the court that it is possible that the defence will succeed but it is improbable that it will do so.  In my judgment this is a proper case for a conditional order.  Normally the two kinds of conditions which might be ordered are to pay money into court and to take a certain step, failure of which will lead to the defence being struck out.  Both conditions are fair in this case.  
21.	I will make the following order now on the application for summary judgment: 
i)	The second defendant must file at court and serve on the claimants by 4pm on 13th March 2013 a Defence setting out all facts and matters he relies on to establish his case under section 48 of the Trade Marks Act 1994, in particular setting out in detail a complete history of the use of the registered trade mark 2443609 from the date it was applied for until 11th August 2012, explaining who used it, for what periods, in relation to what business(es) and giving a complete history of which individuals or companies held the registered trade mark at any given time in that period and UNLESS the second defendant complies with this order, his defence to this claim will be struck out and judgment entered for the claimants. 
22.	I will also require the second defendant to pay a sum into court, failing which the defence will be struck out.  The amount of that sum will be decided once I have given each side the opportunity to make submissions in writing.  Submissions should be made within 14 days of the date this judgment is handed down.  
23.	The judgment will be handed down in court, there will be no need for either side to attend court when that happens.  
Postscript 
24.	When the draft judgment in the form set out above was circulated, the claimant raised Budejovicky Budvar Nordni Podnik v Anheuser-Busch Inc ([2008] EWHC 263(Ch) appealed at [2009] EWCA Civ 1022 and referred to the Court of Justice of the European Union (Case C-482/09)) and asked for the matter of acquiescence to be reconsidered.  In order to deal with this issue I will not make the orders described above.  Instead the parties should liaise with the Listing Office to convene a hearing to hear the matter.