England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
LEEDS DISTRICT REGISTRY

		7 October 2008

1. Introduction

1. Kulfi is a generic term applied to a popular South Asian desert made with boiled milk. It comes in many flavours – including pistachio, malai and mango. Both Tubzee Limited ("Tubzee") and Safron Foods Limited ("Safron") manufacture and sell Kulfi ice cream. It is Tubzee's case that its product is superior to that of Safron. This case is not, however, concerned with the quality of the product.
2. This is a claim for passing off and infringement of United Kingdom and Community Registered Trade Marks. It relates to the get up used by Safron to sell its products. It is common ground that Safron changed its get up in June 2007. It is said that the new get up is confusingly similar to Tubzee's get up and that Safron is passing off its ice cream as that of Tubzee. It is also said that Safron's get up infringes 2 of Tubzee' registered trade marks.
3. There are 4 characteristics of the get up which are relied on by Tubzee:

1.1. The "K" before "ulfi"

4. The "K" - had a very distinctive and eye catching dropped 'tail' to the bottom of the letter that swept under part if the rest of the letters 'ulfi'.

1.2. The 2 pots

5. A device comprising two brown circular pots pouring a white fluid in a vertical stream

1.3. The swirl

6. A swirl of one or more shades of colour

1.4. The cube

7. A stylised image of 6 to 12 ice cubes
8. Tubzee is the registered proprietor of a United Kingdom trade mark in respect of the "K" and a Community trade mark in respect of a device featuring 2 matka pots with a white liquid pouring from them over a number of ice cubes. [See paragraph 29 below]
9. It is common ground that before 2007 Safron's get up did not include the first three of these characteristics. There is some dispute as to whether it included ice cubes. After 2007 the new get up included all of these characteristics. Tubzee contend that the incorporation of these characteristics have made Safron's get up confusingly similar to theirs. Indeed they rely on the fact that 2 customers were actually confused and bought Safron Kulfi believing it to be Tubzee Kulfi.
10. Safron contend that their new get up was designed by Fantastic Media; there was no intention to copy the get up of Tubzee. Any resemblance between their get up and that of Tubzee is co-incidental. They contend there is no likelihood of confusion between their get up and that of Tubzee.
11. Mudassar Mahboob and Tanvir Hussain are two of the six shareholders of Safron. They have been joined into the proceedings because it is said that they were responsible for the selection and use of the new branding. It is thus said that they are jointly and severally liable for the tortious acts of Safron.

2. Representation

12. Tubzee has been represented by Andrew Norris instructed by Franks & Co Patent and Trade Marks Agents of Sheffield. At one time the Defendants were represented by Aubrey Craig and also by Marks and Clerk, Patent Agents and Virtuoso Legal – a solicitor specialising in intellectual property disputes.
13. However the Defendants had dispensed with legal advice and at the trial Mudassar Mahboob and Tanvir Hussain represented themselves and I permitted Tanvir Hussain to represent Safron.
14. Mr Norris produced a very full and clear skeleton argument dealing in detail with the law and the relevant factors to the issues before the court. I am most grateful to him.

3. Witnesses

15. 4 witnesses gave evidence on behalf of the Claimants –

1. Khalid Mahmood, a director of Tubzee who gave evidence of the history of Tubzee and its trading

2. Jonathan Beech – the graphic designer responsible for the relevant features of Tubzee's get up. [Mr Beech's evidence was accepted by the Defendants and thus he did not attend and was not cross-examined]

3. Jennifer Taylor – Jennifer Taylor bought a Safron Kulfi ice cream on 1^st July 2007 believing it to be manufactured by Tubzee. She wrote a letter of complaint on 1^st July 2007 to Tubzee. She was unable to attend to give evidence as she was in Sweden. Her evidence was admitted under the Civil Evidence Act 1968.

4. LiaqatAli – LiaqatAli, bought two Safron Kulfi ice lollies at a Texaco service station in Derby on 14^th July 2007. He, too, believed them to have been made by Tubzee. He too wrote a letter of complaint on 16^th July 2007.

16. 3 witnesses gave evidence on behalf of the Defendants. Each of them have been shareholders in Safron.

1. Mohammed Khalji - Mohammed Khalji was one of the persons involved in the purchase of the shares in Safron in 2004. He gave evidence of Safron's trading and the circumstances in which the new designs and get up were introduced in 2007.

2. Mudassar Mahboob – Mudassar Mahboob gave evidence of his involvement with Safron and the circumstances in which the new design was adopted

3. Tanvir Hussain. – Tanvir Hussain gave evidence in relation to the same subject matter as Mudassar Mahboob and Mohammed Khalji.

4. The Law

17. There is very little controversy over the applicable law. Perhaps this is not surprising in that the Defendants were not legally represented at the trial. In any event, as I have indicated Mr Norris's contained a very full exposition of the law. In his opening submissions Mr Norris referred me to the decision of Kitchin J in Julius Sämaan v Tetrosyl [2006] FSR 42 (the 'Christmas Tree' case).

4.1. Passing Off

18. The requirements for passing off were summarised by Lord Oliver in Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 All ER 873 at 880 f-g (the 'Jiff Lemon' case) and:

…may be expressed in terms of the elements which the [claimant] in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplied in the minds of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically as the [claimant's] goods or services. Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the [claimant]. Whether the public is aware of the [claimant's] identity as the manufacturer or supplier of the goods or services in immaterial, as long as they are identified with a particular source which is in fact the [claimant]. For example, if the public is accustomed to rely on a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the [claimant]."

19. It is sufficient if the Defendant introduces a belief that there is some business connection with the Claimant. Furthermore Robert Walker J. (as he then was) stated in United Biscuits (U.K.) Ltd. v Asda Stores Ltd. [1997] RPC 513:

"I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, [the defendant is] taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard."

4.2. Trade Mark Infringement

20. The position is governed by Section 10(2) of the Trade Mark Act 1994 which is in substantially the same terms as Article 5(1)(b) of the Council Directive 89/104. So far as relevant Section 10(2) provides:

2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—

(a) …

(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

21. In the Christmas Tree case Kitchin J considered in some detail the requirement that there be a likelihood of confusion. In paragraph 51 he summarised the basic principles to be applied in assessing the likelihood of confusion which he described as "well-established". These principles have been reproduced in substantially the same words in paragraph 44 of Mr Norris' skeleton argument which referred to a number of authorities^[1]:

a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors (Sabel at paragraph 22);

b) the matter must be judged through the eyes of the average consumer of the goods in question who is deemed to be reasonably well informed and reasonably circumspect and observant- but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect recollection he has in his mind (Sabel at paragraph 23 and Lloyd at paragraph 27);

c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Sabel at paragraph 23);

d) the visual, aural and conceptual similarities of the mark must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive components (Sabel at paragraph 23);

e) a lesser degree of similarity between the marks may be set off by a greater degree of similarity between the goods and vice versa (Canon at paragraph 17);

f) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character because of the use made of it or per se (Sabel at paragraph 24);

g) if the mere association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section (Canon at paragraph 29).

5. The Facts

5.1. Tubzee

22. Khalid Mahmood and his brother Asif Hussain started the Tubzee business in about 2000 as a partnership. At that time there was only one competitor in the country making Kulfi ice cream. Khalid Mahmood went to Lahore and spent 4 weeks learning how to make Kulfi. When he returned he sat up a small production dairy at their current premises in Halifax.
23. In his witness statement Khalid Mahmood describes the initial problems that were encountered and overcome. After initial problems turnover has increased from £86,251 in 2002 to £1,443,697 in 2008. During this time – in 2002 or 2003 – Tubzee Ltd was incorporated taking over the business formerly run by Khalid Mahmood and his brother. There are now some 5 shareholders in Tubzee all members of Khalid Mahmood's family.
24. Since 2006 Tubzee has supplied ASDA with Kulfi. Initially the supply was to 23 stores. However by 2008 it had increased to some 85 stores. Tubzee has recently obtained a contract with Tesco.

5.2. Trade Marks

25. In November 2000 Asif Hussain applied for the registration of a trade mark – King Kulfi. The "K" of King had a crown over it. The "K" of Kulfi had the dropped 'tail' to the bottom of the letter that swept under part if the rest of the letters 'ulfi'. The trade mark GB2,251,254 was registered on 15^th June 2001 and assigned to Tubzee on 1^st December 2007.
26. In November 2001 Asif Hussain applied for the registration of Kulfi Ice. The "K" had the dropped tail and the crown over it. The trade mark GB2,286,688 was registered on 24^th May 2002 and assigned to Tubzee on 1^st December 2007.
27. On 30^th July 2007 Tubzee applied for the registration of 2 further trade marks – both of the letter K with the dropped tail. One had a crown over it GB2,462,846B and the other GB2,462,846A did not. Both were registered on 16^th May 2008.
28. On 18^th July 2007 Tubzee applied for a community trade mark for a design comprising 2 matka pots pouring a white liquid over some ice cubes. The Community trade mark was duly registered on 12^th June 2008.
29. A representation of two of Tubzee's marks is set out below:


5.3. Tubzee's get up

30. According to Khalid Mahmood the design of the stylised "K", the ice cubes and the swirl were created by Asif Hussain in about 2000. The swirl can be seen as exhibit 3 to Khalid Mahmood's witness statement.
31. In 2004 Tubzee first introduced ice to their 1 litre pack to coincide with the name "Kulfi ice".
32. Tubzee started work on re-branding in October 2005. The labels and artwork were created by Jonathan Beech. Basharat Mahmood, one of the directors of Tubzee, was the point of contact between Mr Beech and Tubzee. According to Jonathan Beech Basharat Mahmood told him that Tubzee wanted to keep the distinctive "K" that was already part of the get-up. Basharat Mahmood instructed him that he wanted 2 matka pots in the design shown pouring milk over ice. The reason was that the pots are a receptacle with ancient origins used for milking cows in India. Milk and ice are 2 vital ingredients for the manufacture of Kulfi ice cream.
33. Mr Beech worked for about 6 weeks designing and art-working the Kulfi Ice brand 1 litre tubs. The packaging and designs were later rolled out and used across the whole of Tubzee's business. Some of the notes taken during the design process dated 11^th November 2005 have been exhibited by Mr Beech.

5.4. Use of the get-up and goodwill

34. There are 5 Tubzee product ranges – 1 litre tubs, 120 ml cups, screwball cones, 5 pack ice lollies and individual lollies. In December 2005 the new design was introduced for the 1 litre tubs, the screwball cone packaging and the 5 pack ice lolly packaging. The 120 ml cup packaging was introduced in January 2008. The individual ice lolly wrapper has remained the same since 2001 due to large amounts of packaging in stock. Examples of all of these are shown as exhibit 5 to Khalid Mahmood's witness statement.
35. The re-branding of the Tubzee product has included the new designs being printed on delivery vehicles, ice cream vans and display freezer cabinets as well as the outer and inner packaging of the product.
36. The re-branding was included in a TV commercial which was shown on 3 Asian Sky networks over a 3 month period in the summer of 2007 at a cost of £40,000. According to Khalid Mahmood it was a successful campaign. The advertisement appeared 8 times an evening over the period of the campaign. It increased the awareness of the product.

5.5. Safron

37. Safron was incorporated in November 2001 as a manufacturer of Kulfi. It originally traded from Rhodes Street Halifax. The original owners worked from home and marketed the product amongst the Asian Community in Halifax. It became sufficiently popular for the family to set up a small Kulfi plant for sale to regional retail food outlets.
38. The factory from which the Kulfi was made was burned down and the business was offered for sale to Mohammed Khalji. In late 2004 Mohammed Khalji agreed to purchase the business with a number of family members.
39. There has been some debate as to the extent to which Mudassar Mahboob and Tanvir Hussain have been directors of Safron. Company searches that have been carried out reveal the following:

1. Mudassar Mahboob was appointed a Director on 23^rd April 2005. He is shown as a Director in the annual return that was filed on 15^th January 2007. He also signed as a Director a number of Form 288b's on 27^th March 2006 for submission to Companies House in relation to the resignation of 4 of his co-directors. In August 2006 he signed as a Director the accounts for the year ending 30^th November 2005. However on 8^th January 2008 there was filed at Companies House a Form 288b which indicated that he resigned as a Director on 6^th March 2006.

2. Tanvir Hussain was also appointed a Director on 23^rd April 2005. He is also shown as a Director in the annual return filed on 15^th January 2007. However on 8^th January 2008 there was filed at Companies House a form 288b indicating that he, too, resigned as a Director on 6^th March 2006. The searches also reveal that Tanvir Hussain is shown as Secretary from 23^rd April 2005 to 31^st October 2005.

40. According to all 3 witnesses called on behalf of Safron from April 2005 Safron traded as a quasi partnership between 6 relatives. They were in effect equal shareholders. They had their own tasks to perform but they all took part in management decisions when they arose. Four of them, including Mudassar Mahboob and Tanvir Hussain, were authorised to sign cheques on behalf of Safron under the rubric "Director". They drew equal sums from Safron as remuneration.
41. Both Mudassar Mahboob and Tanvir Hussain were cross-examined on the basis that they remained directors of Safron after 6^th March 2006 and that the notices that were filed in 2008 on the same day as the Defence in this action as an attempt to avoid personal liability. Both denied the suggestion.

5.6. Safron's trading

42. According to Mohammed Khalji trading started in 2005. There was a problem in that a new licence was required from the local authority for the new factory. As it was not obtained all of the product had to be recalled. As a result Safron sustained substantial initial losses. The abbreviated accounts for the period ending 30^th November 2005 show a loss on the profit and loss account of £52,319.
43. As already noted, Mudassar Mahboob and Tanvir Hussain joined Safron in April 2005. According to Mohammed Khalji the running of the business was left to Mudassar Mahboob and Tanvir Hussain as they were better educated and had what he described as "a wealth of experience and had held high management positions with their previous employers"
44. According to Mohammed Khalji Safron has seen a steady growth in its business since 2005. He attributes this to the hard work of the 6 partners and the quality of the product. He says that there has been an increase in the contacts both in the UK and Europe. No figures have been produced to verify this claim.
45. Both sides accuse the other of dirty tricks in the competition between them. Thus Safron accuse Tubzee of spreading rumours against them, of threatening to put them out of business of a price war campaign against them. Tubzee, on the other hand, accuse Safron of trying to mimic their success. They have the same range of products; they accuse Safron of delivering to their customers by pretending the usual delivery person is ill. None of these matters were investigated in detail at the trial and I make no findings in relation to them.
46. In such a state of intense competition between two rival Kulfi manufacturers in Halifax it is inevitable that both would have been aware of each other's get up.

5.7. Safron's get-up

47. Up until 2007 Safron adopted the get up of the previous owner. Examples of its packaging can be seen as exhibit 13 of "KM1". There was little, if any similarity between Tubzee and Safron's get up. In particular the Safron get up included a cartoon character; the "K" of Kulfi did not have the sweeping tail, there were no matka pots pouring white liquid and there was no swirl. There was some debate before me about the use of "ice". Safron's witnesses suggested that some of their advertisements had included ice from 2004. There is some support for this in that a poster that was produced at the trial and the Safron freezer that can be seen in the brochure reproduced on page 90 (the original of which was produced at Court) do appear to show ice cubes as part of the image.

5.8. Safron's change of get up

48. Safron decided to change its get up in the autumn of 2006 and employed Fantastic Media UK Ltd ("Fantastic Media") to produce its new designs. The only documents that have been produced in connection with the change are:

1. A letter from Jane Cullinane (the Business Development Manager of Fantastic Media) dated 1/11/2006 to Mudassar Mahboob

2. A client purchase signed by Mudassar Mahboob on 3/11/2006

3. A project implementation plan

4. An e-mail dated 16/11/2006 from an employee of Fantastic Media to Tanvir Hussain.

49. It emerged during the hearing that there was at least one further e-mail exchange between Mudassar Mahboob and Tanvir Hussain about the design. Those e-mails have not been disclosed.
50. According to the Project Plan:

It is my understanding that [Safron] requires Fantastic Media to produce one new design style for Safron current ice cream packaging to be used across all four of the Safron [range]

…Fantastic Media will produce and present you with 3 conceptual designs for the new packaging and from these we will provide you with one design you can send to the packaging company …

We understand that the current cartoon character on the existing packaging needs to go and is not to be replaced. The brief is an open design and the current Safron logo is to remain as it is.…

51. The document made it clear that the packaging art work would be ready by 17^th November 2006.
52. The e-mail that was sent to Tanvir Hussain enclosed a proof for the revised ice cream packaging and included:

The design is now circular and features images relating to the flavour of the ice cream. I've also included the traditional pots/jugs pouring cream into the ice-cream 'swirl'.

53. No-one from Fantastic Media was called to give evidence and thus there is no direct evidence from Fantastic Media as to their instructions. Equally there is no evidence as to the nature of the other 2 designs.

Mohammed Khalji's evidence

54. Mohammed Khalji said that Mudassar Mahboob had researched a number of companies on the internet and had spoken to Fantastic Media over the phone. Mudassar Mahboob was not involved with the selection of the design. He said that he and Tanvir Hussain had visited Fantastic Media at their offices. He agreed that he had given instructions to include matka pots. He said that the idea of the pots had come to him when visiting Birmingham after he had been to another Kulfi manufacturer – Everest. He said that at a restaurant in Birmingham he saw some ice cream in matka pots. That gave him the idea to incorporate traditional pots into the get up.
55. He said that Fantastic Media came up with the design. They liked it and told Fantastic Media to go ahead. They did not show them anyone else's design. He said he had 2 meetings with Fantastic Media and did not tell Fantastic Media what to incorporate in the packaging.

Tanvir Hussain's evidence

56. Tanvir Hussain's evidence was much to the same effect. He agreed that Mudassar Mahboob had selected Fantastic Media but had not been involved with the design. He agreed that he had visited Fantastic Media and that they were told of the matka pots. He said that they were traditional pots from Pakistan. He said that he was not aware of Tubzee's design when the re-branding took place. He denied copying.
57. He said the decision over the design was a joint decision. He agreed that there might have been e-mails other than the e-mail that had been disclosed. He said Safron shared a server and they might have been deleted.

Mudassar Mahboob's evidence

58. Mudassar Mahboob agreed that he found Fantastic Media after carrying out some research on the internet. It was important to him that the Company he selected would do the work within the budget (£1,000) and speedily as he was going to China to appoint a printer.
59. He said he had nothing to do with the design work. When he was shown the documents from Fantastic Media he agreed he had met Jane Cullinane, had shown her the old design, and told her that he wanted a new design leaving out the cartoon character.
60. He had nothing else to do with the selection of the design. However he agreed that when he was in China he had received an e-mail from Tanvir Hussain enclosing the new design. He said he liked it and told Tanvir Hussain to go ahead. He agreed that it was a joint decision to go ahead and that he was part of that decision.

5.9 Features of the new design.

61. There can be no doubt that there are differences between Tubzee's get-up and Safron's new get-up. In particular all of Safron's designs incorporate the yellow Safron logo. The Safron litre tubs are circular rather than the rectangular tubs used by Tubzee. Safron's litre tubs have the words "Unlock the Secret of the East" whereas Tubzee's have "A True Taste of the East" on them.
62. Tubzee however rely on a number of features of the new Safron designs to demonstrate the likelihood of confusion.

The "K" of Kulfi

63. Safron's new design adopts a "K" with a dropped tail extending under the letters "ulfi". Safron accept that this is so but make the following points about the "K" adopted in the Safron get-up.

1. In all of the Tubzee products the "K" appears under a crown, whereas the Safron "K" appears under the yellow Safron logo.

2. The font of the "K" is different. Safron use what they describe as a distinctive purple font whereas Tubzee use a blue font.

3. The Safron "K" uses an italic angled font as opposed to the straight font of the Tubzee "K". The Tubzee "K" is wider or chunkier than the thin Safron "K".

4. Whilst it is true that the Safron "K" has a dropped tail it does not pass under all the letters of "ulfi". The font used by Safron is such that the "f" crosses the dropped tail of the "K".

The matka pots

64. Both designs show 2 circular pots pointing inwards pouring a white liquid in a vertical stream. Safron accept this but make the following points:

1. Tubzee's get up shows the liquid being poured over ice whereas Safron's shows it being poured into the swirl. The ice in Safron's get up is in a different place.

2. Although both of the pots are brown the 2 colours are different and the detailed design of the pots is different.

The swirl

65. Both of the Tubzee and Safron get up incorporate a swirl device. Whilst Safron accepts that both incorporate a swirl it contends that the 2 swirls are of different design. The Safron swirl is an image representing milk rotating in a clockwise whirlpool. The Tubzee swirl is far less pronounced.
66. Thus whilst Safron accepts that the similarities exist it contends that there is no likelihood of confusion and thus no passing off and no infringement of Tubzee's trade marks.

5.10. Evidence of confusion

67. Safron introduced their new get up in June 2007. Within a very short space of time Tubzee received 2 letters showing confusion from members of the public. One, dated 1^st July 2007 was from Jennifer Taylor, the other from Liaqat Ali dated 16^th July 2007.

Jennifer Taylor

68. According to her letter Ms Taylor attended Worldwide Foods on 1^st July 2007 in the Wirral and bought 4 small 120 ml tubs of Kulfi ice (2 original and 2 mango). She says she was aware of the Tubzee packaging and design as she had bought it in her local ASDA store.
69. When she ate the ice cream she was disappointed and inspected the packaging more closely. She discovered it was a Safron product. She complained that she was shocked to find that she had bought a Safron product when intending to buy a Tubzee product. She complained that Tubzee would not knowingly allow another company to sell a lower quality product in such similar packaging as theirs.
70. Ms Taylor signed a witness statement on 4^th June 2008. The contents of the witness statement are to all intents identical to her letter.
71. Ms Taylor was not available to be cross-examined and her statement and letter were admitted under the Civil Evidence Act 1986.
72. Safron challenge the evidence on 2 grounds. First it makes the point that it does not sell Kulfi in 120 ml tubs. It sells in 125 ml tubs. Second it does not supply Worldwide Foods with 125 ml tubs. No evidence or other documents were produced to show what goods were supplied to Worldwide Foods. It was not suggested that Ms Taylor was known to Tubzee or that she would have any reason to write a letter in those terms if she did not in fact buy Safron tubs.

Liaqat Ali

73. Liaqat Ali is a director of an estate agent practising in Nottingham. According to his letter on 14^th July 2007 he stopped for fuel at a Texaco Service Station in Derby. He said he decided to pick up what he thought was Kulfi Ice pistachio stick from the freezer. He was disappointed with the result and looked in detail at the wrapper to discover it was manufactured by Safron and not Tubzee.
74. He described himself as very familiar with the Kulfi Ice design and packaging and under normal circumstances would not consider the need to look closely at the wrapper as he recognised the product so well. He described himself as being fooled by a completely inferior imitation.
75. Mr Ali signed a witness statement on 12^th June 2008. The contents of the witness statement are to the same effect.
76. In cross-examination he agreed that he knew Khalid Mahmood and Tubzee. He made it clear that he had in fact bought two sticks rather than the one mentioned in his statement and he produced the two wrappers. He said that he went to the fridge and picked up the two wrappers. He agreed he did not read the wrappers. He repeated he was familiar with the Tubzee wrapping. He assumed he was getting a Tubzee ice. It was the only Kulfi he had had in that type of wrapping.
77. In re-examination he was asked what it was about the wrapping that he recognised. He referred to the "K" and the presence of the matka pots on the wrapping.
78. Safron challenge Mr Ali's evidence first on the basis that he is known to Tubzee and thus not independent. It is also suggested that he did not know any other manufacturer of Kulfi and thus assumed that any Kulfi that he bought must be manufactured by Tubzee.

5.11. Pre-trial correspondence

79. It is not necessary to go through the pre-trial correspondence in any detail. On 31^st July 2007 Tubzee's patent agents sent a detailed letter before action to Safron complaining of passing off and breach of copyright and demanding undertakings and delivery up. On 15^th August 2007 Safron's patent agents wrote disputing liability on a number of grounds. It is, however, worth noting that in their explanation of the matka pots logo they assert (wrongly) that they were first introduced in 2006 and that the design had been used prior to this.

5.12. The proceedings

80. The proceedings were issued in November 2007. The initial claim was based on passing off. The claim was subsequently amended on 30^th June 2008 to include claims against Mudassar Mahboob and Tanvir Hussain and also to allege trade mark infringement.
81. In the original Defence it was suggested that the matka pots were first used by Safron in a marketing exercise in December 2005. No evidence of that marketing exercise was adduced before me.

6. Findings of Fact

82. There are 2 areas where it is necessary for me to make findings of fact. The first relates to the intentions of Safron in adopting the design features complained of by Tubzee. The second relates to the evidence of Mr Ali and Ms Taylor.

6.1. The evidence of the Defendants

83. As already noted it is Safron's case that they made no attempt to copy Tubzee's design. They thought of the matka pots without knowing of Tubzee's design and it is a coincidence that Fantastic Media adopted the other design features to which Tubzee objects. They expressly deny that they suggested those features to Fantastic Media and in approving them did not appreciate that they were features of Tubzee's get up.
84. I cannot accept that evidence. There are a number of reasons for this:

1. Safron have failed to call any evidence from Fantastic Media or to disclose all of the documents or designs that must be in Fantastic Media's possession.

2. It is also clear that I have not seen all the e-mails that have passed between the quasi partners.

3. On any view Tubzee and Safron were serious trade rivals selling to the same market in the same town. It is inevitable that all of the Safron partners/directors would have known the Tubzee product and its get up. They would have known in particular that the "K" had a long dropped tail extending under the letters "ulfi" and the 2 matka pots with a white liquid pouring down vertically. It is to my mind too much of a coincidence to accept that in adopting a K with a dropped tail and the 2 matka pots with white liquid falling vertically down they were not aware that they were adopting features contained in Tubzee's get up.

4. The evidence of Mudassar Mahboob and Tanvir Hussain over their resignation as Directors is unsatisfactory and inconsistent with the documents referred to. I agree it casts a question mark over their credibility

85. It is true that there are significant differences between Safron's get up and Tubzee's get up. It is also true that there are significant differences between Tubzee's "K" and matka pots and those of Safron. I have identified the differences earlier in this judgment. However there are also the similarities that have been identified. I am satisfied that in approving the designs Safron and both Mudassar Mahboob and Tanvir Hussain were aware of the similarities and were in the position of someone who has taken a conscious decision to live dangerously.

6.2. The evidence of Liaqat Ali and Jennifer Taylor.

86. Even though Ms Taylor was not cross-examined there is, in my view no reason not to accept her evidence. I regard the mistake she made over the size of the pot as being of no importance. Equally I cannot begin to see why she should have written the letter she did if she had not in fact bought 4 125 ml pots of Safron Kulfi ice believing it to be Tubzee Kulfi. There is no suggestion that she had any connection with Tubzee or knew Khalid Mahmood. She knew the Tubzee product, intended to buy the Tubzee product and did in fact buy the Safron product. She was of the opinion that Tubzee's design had been copied although she does not identify the parts that she says were copied.
87. Even though Liaqat Ali was not a wholly independent witness there is no reason not to accept his evidence. He was aware of Tubzee's packaging. On any view he did not read the wrappers closely in the fridge. It is clear from his evidence in re-examination that he associated the product with Tubzee because of the "K" and the matka pots. I accept this evidence and reject the suggestion that he thought that all Kulfi was manufactured by Tubzee.
88. I am satisfied that both of these customers were confused by Safron's get up into believing that they were buying a Tubzee product.

7. Liability

7.1. Infringement of Trade Marks

89. I have set out the provisions of section 10(2) of the Act in section 4.2 above. It is, to my mind, plain that Safron are using in the course of trade a "K" and a device showing 2 matka pots pouring a white liquid vertically which are similar to the registered trade marks of Tubzee. Thus the critical question is whether there exists a likelihood of confusion on the part of the public. I approach this question by considering the summary of Kitchin J's judgment set out above.

1. I have to consider the matter globally. Thus the fact that there are differences between Safron's "K" and Tubzee's "K", and Safron's matka pots and Tubzee's matka pots is by no means conclusive. The matter has to be looked at globally taking account of all relevant circumstances including my finding that Safron decided to live dangerously.

2. I have to look at the matter through the eyes of the average consumer of ice cream. I assume he or she is reasonably well informed, reasonably observant and circumspect but who did not have the opportunity to make a direct comparison between Tubzee's marks and Safron's get up and has to rely on "imperfect recollection". In this connection it seems to me I can attach considerable weight to the evidence of Jennifer Taylor and Liaqat Ali. It is true that Liaqat Ali did not examine the freezer closely before he selected his Kulfi lolly. On the other hand he did recollect the Tubzee "K" and the matka pots. One of the points raised by Khalid Mahmood is that a significant part of the market is the older Asian market who do not have good literary skills in English. Thus the concept of the matka pots is more important than the Safron logo in Safron's get up.

3. There are considerable conceptual similarities between the 2 "K"s and the 2 matka pots. The concept of the dropped tail of the "K" is identical. Similarly the concept of the matka pots in Safron's get up is exactly the same as that of Tubzee. The matka pots give the idea of something from India or Pakistan and the liquid falling vertically gives the idea or concept of the use of milk. There is a difference in that Tubzee's liquid falls on ice whereas Safron's falls on the swirl. To my mind the concepts are very similar.

4. The goods sold by Tubzee and Safron are identical and thus a lesser degree of similarity between the marks can give rise to a risk of confusion. Furthermore the dropped tail of Tubzee's "K" is to my mind a distinctive feature which has been used by Tubzee since 2000.

90. When I take all these matters into account I have come to the clear conclusion that there is a likelihood of confusion caused by Safron's use of the "K" with the dropped tail and the 2 matka pots with a white liquid falling vertically.
91. It follows that claim for infringement of Tubzee's registered marks succeeds.

7.2 Passing off

92. Very similar considerations apply to the question of passing off. I am satisfied that by June 2007 Tubzee had established a goodwill in their goods by association with their get up. The particular features of the get up which are to my mind are important are the distinctive dropped tail to the "K" and the 2 matka pots with the white liquids falling from them. For my part I doubt whether the swirl or indeed the presence of ice cubes are sufficiently distinctive to be associated with Tubzee's products. Secondly I am satisfied that the use of these two features in Safron's new get up amounts to a misrepresentation. For reasons I have given I think looking at the get up as a whole there is a risk of confusion in the public that Safron's goods are associated with those of Tubzee. This view is fortified by my view that Safron decided to live dangerously. It is plain that Tubzee have suffered some damage in that at least 2 purchasers have bought Safron Kulfi when they intended to purchase Tubzee Kulfi.
93. It follows that the claim for passing off succeeds.

7.3 Personal Liability of Mudassar Mahboob and Tanvir Hussain

94. It is plain that both Mudassar Mahboob and Tanvir Hussain were involved in the choice of Safron's new get up. They both described it as a joint decision of the 6 quasi partners. It is, however clear that initial instructions to Fantastic Media (including some instructions about the design) were given by Mudassar Mahboob. It is further clear that Mudassar Mahboob was sent the designs and joined in the decision to adopt them. Tanvir Hussain was involved in instructing Fantastic Media and approving the design. Both Mudassar Mahboob and Tanvir Hussain were involved in the decision to continue trading with Safron's new get up in the face of the claims being made by Tubzee and their advisors.
95. I have already indicated that the evidence regarding the resignations of Mudassar Mahboob and Tanvir Hussain as directors is unsatisfactory. If, contrary to my view they ceased to be actual directors they were in my view de jure or quasi directors. I find as a fact that they remained and remain part of the management of Safron. Indeed they both recognised that the 6 shareholders took all the decisions about the management of Safron jointly.
96. In those circumstances I am satisfied that both Mudassar Mahboob and Tanvir Hussain have incurred personal liability in respect of the passing off and the infringement with Tubzee's trade marks. In my view they have each procured Safron to commit the tort.^[2]

JOHN BEHRENS

Tuesday 7 October 2008

Note 1   See Sabel BV v Puma AG [1998] ETMR 1, Canon Kabushiki Kaisha v metro-Goldwyn-Mayer Inc[1999] ETMR 1, Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel B.V. [2000] F.S.R. and Marca Mode CV v Adidas AG [2000] ETMR 723    [Back]

Note 2   See the discussion in paragraphs 5-76 to 5-80 of Clerk & Lindsell on Torts – 19th Edition.    [Back]