England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		Royal Courts of Justice Strand, London, WC2A 2LL
		21st November 2007

1. The Claimant ("UKTV") broadcasts a home and lifestyle channel under the name "UKTV Style". The Defendants are seeking to launch a new channel under the name "The Style Network". The parties have obtained an expedited trial due to commence on the 14^th January 2008 and the position in the interim is governed by undertakings. On the 12^th November 2007 the Claimants issued an application seeking permission to amend their Particulars of Claim, that application being strenuously opposed by the Defendants.
2. The principles by reference to which the power conferred by CPR 17.1(2) to permit amendment are to be exercised are not in doubt. Amendments which do not fall foul of CPR 3.4 in general ought to be allowed (so that the real dispute between the parties can be adjudicated upon) provided that the other party does not suffer any prejudice that cannot be compensated for by an award of costs and in addition the public interest in the administration of justice is not significantly harmed .
3. In summary the objections taken to the proposed amendments are:-

(a) the proposed amendments do not take account of orders already made concerning material on which UKTV may not rely;

(b) some of the proposed amendments are not sufficiently particularised;

(c) the amendments to the prayer for relief in increase the matters of which complaint is made and are seriously disruptive ;

(d) the amendments take the claim outside what had been understood to be the scope of the original claim and amount to an attempt to resile from a position previously adopted ;

(e) the amendments bring this case into conflict with the Community registration proceedings.

4. UKTV's claim is for trademark infringement and passing off. The elements of that claim as originally pleaded and relevant to the objections taken may be summarised as follows:-

(a) UKTV broadcasts in the UK and the Republic of Ireland but there is "overspill" broadcasting to other member states of the EC;

(b) UKTV also operates a web site visited by persons in member states of the EC other than the UK and the Republic of Ireland;

(c) UKTV has made extensive investment in and use of the names "UK Style" and "UKTV Style";

(d) The names "UK Style" "UKTV Style" and "Style" have been used by third parties to refer to UKTV's channel, and are associated by a substantial part of the public with UKTV;

(e) UKTV is the registered proprietor of a community trademark ("CTM") for the stylised word mark "UKTV Style" in association with the broadcasting and production of television programmes;

(f) in May 2006 the Defendants made an application to register as a community trademark a logo incorporating the word "Style" in association with the broadcasting and production of television programmes;

(g) in July 2007 the Defendants gave notice that they intended to launch a new television channel called "The Style Network" using a different UK logo but which is confusingly similar;

(h) by reason of those matters the Defendants (1) are passing off their new television channel as a UKTV channel or a channel associated with UKTV (2) are using "The Style Network" and their community and UK logos in circumstances where there exists the likelihood of confusion (3) are using those designations to take unfair advantage of the distinctive character of UKTV's trademark;

(i) by reason of those matters the Defendants have infringed UKTV's trademark;

(j) UKTV is entitled to an injunction restraining the Defendants from infringing its CTM within the territory of any member state of the European Community;

(k) UKTV is entitled to an injunction restraining the Defendants from passing off (1) any television channel or (2) "any business carried on or services or goods offered or provided by the Defendants" as being in either case a television channel or a business or service associated with UKTV;

(l) an order for the obliteration of the name of "The Style Network" or any other name or mark confusingly similar to "UKTV Style" or "UK Style" or "Style" from all materials the use of which would be a breach of such injunctions.

5. I note that there is not included in the proposed amendments any deletion of the reference in paragraph 7 of the original Particulars to evidence that Lewison J ruled to be inadmissible on 11^th October 2007. No doubt this technical amendment can be made if required. The failure to make it on this application does not influence my decision of the amendments actually sought.
6. I will take the proposed amendments in the order in which they appear in the Amended Particulars of Claim. The first is to insert a paragraph 4a, containing an allegation that UKTV programs its schedule in "zones" (blocks of programming similar in content and broadcast at regular times). The objection of the Defendants to this amendment lacks substance. The allegation concerns what UKTV has done (not what the Defendants are accused of doing). The allegation itself does not appear to be controversial: it has been in evidence since applications were made for relief at the outset this action and my attention was not drawn to any challenge. But if it is controversial (i) it is not a new allegation (and the Defendants have been well able to prepare for meeting it); (ii) it would appear to have implications for disclosure by UKTV (which may assist cross-examination by the Defendants) but not for the assembly of positive evidence by the Defendants; (iii) the fact that the Defendants cannot see the point of the amendment (see paragraph 22 of Mr Black's witness statement) is not a reason for refusing it. The amendment is allowed.
7. There is then a proposal to insert a paragraph 4b, an allegation that UKTV refers to its channel as "Style" in programme announcements (this being "regularly announced"). The Defendants object to this as "wholly unparticularised" and say that they do not know whether this allegation of fact goes to the case on passing of or trademark infringement. I propose to allow the amendment. Once again the allegations concern what UKTV has done not what the Defendants are accused of doing. The Defendants will have UKTV's evidence in the immediate future. Equipped with this pleading and that evidence they can make the tactical assessment whether (i) the lack of particularity in the pleading and the evidence means that the amendment adds nothing of substance to UKTV's case or (ii) the pleading even supplemented by the evidence does not enable the Defendants to know exactly what factual case they have to meet so that they want UKTV to particularise its case. If the Defendants make the latter choice there is sufficient time for them to serve a Request for Particulars to be answered before the evidence in reply is due on the 13^th December 2007.
8. Amendments to paragraph 6 mean that UKTV intends now to assert that it has made extensive investment not only in the names "UK Style" and "UKTV Style" but also in the names "Style", "UKTV Style Homes" and "UKTV Style Life". The last two are recent developments, and ought to be brought within the scope of this action. The first is not; but it has been clear from the outset that UKTV was alleging that it owned a valuable goodwill and reputation in the name "Style" (see paragraph 8 of the original Particulars) and the Defendants will from the outset have been preparing to meet that case. Once again this is an allegation as to what UKTV has done (not what the Defendants are accused of doing), with implications for disclosure as to UKTV's investment in and use of "Style", and for the service of evidence in reply. But I am satisfied that these matters can be fairly addressed within the timetable set for trial. I allow both amendments to paragraph 6.
9. A new paragraph 6a contains allegations relating to the font in which the name "UKTV Style" is reproduced (referring to it as "the Claimant's logo"). The Defendants say that this is an entirely new passing off claim based on an allegation that there resides a separate goodwill in the font or script. I do not agree. The stylised word mark "UKTV Style" has always been part of UKTV's case (see paragraph 10 of the original Particulars). The font is part of the stylised mark. The reference to the font merely makes explicit what was implicit before. I allow the amendments concerning the Claimant's logo in paragraphs 6a, 8, 9 and 10. I also allow the allegations relating to the Defendants' allegedly wrongful conduct in relation to the font in paragraph 18. The conduct itself does not appear to be in issue (since UKTV's case derives from material supplied to it by the Defendants). The issue is as to its wrongfulness and the Defendants are occasioned no prejudice by having to address that legal argument.
10. Paragraph 6a also contains a series of allegations (developed in paragraph 6b) as to the use of the Claimant's logo in two contexts, first in white lettering against a background of horizontal stripes of differing shades of pink ("the Claimant's Triband"): and secondly in white or black lettering against a general pink background, or in pink against a white background. These allegations are said by UKTV to be occasioned by the provision in July/August 2007 by the Defendants to UKTV of a copy of their intended logo for The Style Network (a version of which is said to use pink). This explains their late introduction. The case relating to be colour is not to be found in the original Particulars.
11. The Defendants say that these amendments raise an entirely new passing off claim based on allegations that there resides a separate goodwill in the use of white lettering on the Claimants Triband and the use of pink as a general background colour. They say that they have always assumed that the passing off claim lay against the name "The Style Network" and logo based on the goodwill in the "UKTV Style" name and not on any other features of the claimants alleged trade. They say that on that assumption they have launched channels in Poland and Africa and intend to do so in Portugal and Romania. They say that the case opens up the number of detailed lines of inquiry into the use of specific colours and fonts.
12. UKTV submits that the amendments do not raise any entirely new case, and the introduction of the reference to the colouring (rather like that to the font) simply lends additional precision. As I understood the submissions Mr Baldwin QC what UKTV asserts is that it has built up valuable goodwill and reputation in the name "Style", in the Claimant's logo, in the Claimant's logo associated with the Triband, and in the name "Style" in association with pink; and what UKTV complains of is (i) the use of the name "Style" (ii) the use of the name "Style" in the same font or something confusingly similar to that used on its logo (iii) the use of the name "Style" in association with the Claimant's Triband and (iv) the use of the name "Style" in association with the use of the colour pink. Paragraph 13 of Mr Baldwin's skeleton argument said that the amendments related to "the precise forms in which the claimant has used its name" and "the use of the colour pink together with its name", and I did not understand him to depart from that in his oral submissions when developing the point that the amendment was essentially an elaboration of the case already pleaded.
13. Whatever combinations might be made from the use of the disjunctive "and/or" in the statement of case I do not understand UKTV to be making a new case based purely on colour and disassociated from its name. There is no allegation that requires the Defendants to open a number of detailed lines of inquiry into the use of specific colours in the style/fashion industry and on television. This objection is overstated. But equally I consider Mr Baldwin QC oversimplifies when he says that the amendment only lends additional precision. UKTV still maintains its original case that complaint can be made simply about the use of the word "Style"; but if the Defendants meet that case then UKTV now asserts that it can at the least complain about the use of the word "Style" in association with pink (which is a case based on "get up" other than that associated with the font). In allowing UKTV to advance this positive case there is no reliable evidence that the Defendants would be occasioned prejudice such that they could not fairly be expected to meet the case (Mr Black's evidence being based on the proposition that the Claimant is making "claims to the colour pink"). I allow the amendments relating to the Claimant's Triband and the colour pink in 6a, 6b, 8 and 9. I also allow the allegations relating to the Defendants' allegedly wrongful conduct in relation to name and colour in paragraphs 19, 19a and 23. The conduct itself does not appear to be in issue (since UKTV's case again derives from material supplied to it by the Defendants). The issue is as to its wrongfulness and the Defendants are occasioned no prejudice by having to address that run legal argument.
14. A proposed amendment to paragraph 15 changes the allegation made against the Defendants in relation to their CTM from an allegation that it consists of the word "Style" into an allegation that it consists of the word "Style" in a font similar to that used by UKTV in its CTM. In a Response to a Part 18 Request on 22^nd October 2007 the Claimants had made clear that the Defendant's application for their CTM amounted to an actual or threatened passing off or infringement. The amendment now sought seems to me to be a refinement of UKTV's case which (in the context of this paragraph) occasions no prejudice to the Defendants. The paragraph is simply describing the Defendants' CTM and drawing attention to features of it. Whether the font used is or is not similar to that used in UKTV logo is a simple issue (already been addressed in the context of the Defendant's logo used in the UK).
15. Much was however made of this amendment (and others associated with it, including the question of relief, to which I will come) as constituting an attack upon the registration process now train in relation to the Defendants CTM. My attention was drawn to the decision of the Court of Justice of the European Communities in Muhlens [2006] ETMR 775. The Court of First Instance decided in March 2004 that Zirh's proposed CTM "Zirh" would not be confused with Muhlen's mark "Sir" and that decision was appealed. In May 2004 (whilst the appeal was pending) a German Court held that there was a likelihood of confusion between the two marks, explicitly contradicting the Court of First Instance. The Opinion of the Advocate General contained passages critical of the German Court (pp787-789) indicating that it was a direct affront to the authority of the community Court and expressing the "hope that such dysfunctions will be brought to an end". Mr Hobbs QC used this opinion to argue that the issues in the instant relating to the Defendants' trademark application would be duplicative of the opposition to registration which UKTV has filed at the Community Trademark Office. He submitted that the Community Trademark's Office was first seized of the opposition to the Defendants CTM on the 29^th May 2007, and that the High Court would be subsequently seized of the duplicative claim if the proposed amendments are admitted: and I ought not (out of respect for the Community process) to permit the amendment.
16. I do not accept this submission. The original Particulars of Claim were dated 5^th September 2007 (and so after the commencement of the community registration process). But it is the original Particulars of Claim (not the amendments) that raise the spectre of duplicative process. The original paragraph 15 pleads "the Defendant's Community Logo". The original paragraph 23 pleads that the Defendant's intend to use in Member States of the community (amongst other things) the Defendants' Community Logo and that it is similar to UKTV's trademark so that there is a likelihood of confusion on the part of the public. The original paragraph 24 pleads that the Defendants have used and threaten to use in the course of trade in Member States of the Community signs which are similar to UKTV trademark where the UKTV trademark has a reputation in the European Community (and in so doing the Defendants are taking unfair advantage of the distinctive character of UKTV's trademark). Paragraph 1 of the prayer for relief sought an injunction restraining the defendants from infringing UKTV's registered CTM. I could not see that the amendments took the case into territory not already covered by the original Particulars of Claim. The Response to the Part 18 Request is absolutely explicit that the Defendants' CTM is to be viewed as an actual or threatened passing off or infringement. If I had thought that the interests of the administration of justice required me to reject the amendments I would have done so without hesitation. But I do not. The amendments do not have the vice which Mr Hobbs QC asserts; the vice arises on the original claim. That problem may have to be addressed. But it should be addressed by a proper application with a suggested order of which the Claimants have proper notice, not in the context of an application to amend.
17. I allow the amendment of paragraph 15.
18. The last group of amendments relates to proposed amendments paragraphs 1(b) and 2(a) to the prayers for relief. One of the objections to these amendments was that they sought relief (not previously sought) in relation to the Defendant's Community Logo. I have explained above that I consider UKTV's complaint about this to have been part of the case from the outset (and not introduced by amendment). The relief originally sought had been an injunction to restrain the Defendants from infringing UKTV's registered CTM, and an injunction to restrain them from passing off a television channel or business carried on by them as being associated with UKTV

"whether by the use of the name The Style Network or any other name or mark confusingly similar to "UKTV Style" and/or "UK Style" and/or "Style" or otherwise howsoever..".

There was no proviso permitting the Defendants to use the Defendant's Community Logoon anything; and the body of the statement of case made abundantly clear that UKTV was saying that that logo was confusingly similar to its own registered CTM (a point emphasised in the Part 18 response). The addition of an explicit reference to the Defendant's Community Logo (as is proposed in the amendment to the prayer for relief) therefore in my judgement adds nothing, and does not turn these proceedings into duplicative proceedings. So I allow the amendment to insert the reference to the Defendant's Community Logo.

19. Following the same approach I allow the amendments to include reference to "the Defendant's UK Logo", "the Defendant's Pink Logo" and "the name Style together with prominent use of the colour pink". These are simply more precise descriptions of "marks confusingly similar to "Style".." which have from the outset been the subject of a prayer for relief.
20. But the main ground of objection to these amendments was that by permitting them I was somehow enlarging the scope of the action beyond that established between the parties. The face of the pleaded case may be summarised in this way. UKTV complains of the infringement of it registered CTM. It complains of the passing off of any television channel as being a television channel associated with UKTV (in a variety of broadly described ways). It complains of the passing off of any business carried on by the Defendants as being a business connected or associated with the business of UKTV (in the same ways); but this claim for relief can only be granted to the extent that UKTV has identified in its pleaded case and established by evidence directed to the pleaded issues "the business" passed off.
21. In correspondence UKTV identified matters of which it did not complain. On 5^th September 2007 it confirmed that it did not object to the use by the Defendants of their "Style" mark in the context of programme credits shown at the end of TV programmes distributed by the Defendants in the UK. On the 27^th September 2007 the Defendants solicitors pressed for further confirmation in relation to a television programming. On the 5^th October 2007 they received a reply in the following terms:-

"With regard to the further contexts listed in your letter of the 27th September 2007, our client's claim is in relation to your clients proposed launch of a television channel in the UK bearing the name "the Style network". Our client has therefore simply been addressing the issue raised by the conduct of your clients to date. Our client is not aware of any other proposals by your client in relation to the use of its Style brand…. in the UK beyond the existing limited programme use in end credits and limited distribution of materials relating to your client's US programming. We will take instructions on any other circumstances if and when they rise or are drawn to our client's attention…."

Mr Hobbs QC argued that this established the scope of the action as being confined to the launch of a television channel, and that the proposed amendments "hugely enlarged" the scope of the action and should not be allowed. The argument was conducted in the language of estoppel. He said the action had always been viewed as a quia timet action concerning the launch of a television channel, but the amendments were "smuggling a claim in backwards".

22. Mr Baldwin QC was content to say that UKTV did not resile from the terms of the letter of the 5^th October 2007, but he resolutely refused to indulge in what he said was "playing games".
23. That this debate should occur and should take up so much time on an application to amend is a matter of some concern. An application to amend may be the occasion to construe documents: but it is hardly the occasion to make findings of fact appropriate to some argument about estoppel. Nonetheless I bear in mind that when permission this sought to amend a statement of case the public interest in the administration of justice (including fairness) must be considered.
24. I do not find it necessary for the purpose of determining the question of amendment to make the findings of fact or holdings of law which in essence Mr Hobbs QC invited. I am clear that the amendments do not hugely enlarge the scope of the action. By amendment a number of specific instances are given of the ways of passing off otherwise broadly described. As indicated in the preceding paragraph I regard these as simply more precise descriptions of the general expression "…marks confusingly similar to……".
25. I propose to allow the amendments sought to the prayer for relief. The Order will contain a recital that it is made "upon the Claimant acknowledging that it does not resile from the terms of its letter dated 5^th October 2007". In permitting the amendment I should underline that all I am doing is permitting the Claimant to ask for the relief in the amended form: I am giving no indication that the relkief is appropriate to be granted. Mr Hobbs QC may well want to argue at trial that (on the basis of facts there established) a particular form of relief is not appropriate because the Defendants have acted on the faith of some representation.
26. I allow all the amendments sought. Subject to further submissions on handing down I dispense with formal service of the amended statement of case (which will be treated as served at 4.00pm Wednesday 21^st November). I give permission to the Defendants to serve an amended Defence if so advised by 4.00pm 5^th December: and the Claimants a Reply if so advised by 4.00pm 12^th December. Given that exchange of witness statements has been delayed I will extend time for service of evidence in reply until 4.00pm 17^th December 2007.
27. This judgement will be handed down at 10.00 am on 21^st November 2007.

19^th November 2007…………………………………….Mr Justice Norris