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
		14 April 2011

Mr. Justice Kitchin:

1. In action HC09C01611, Rockwool sought declarations:

(i) that the ISO 9705 fire test is an appropriate test to apply to and compare Rockwool's DuoRock roof board and Eurobond's Europanel with Kingspan's TR26 and Kooltherm K11 roof boards and KS1000 MR panel, and

(ii) that the fire tests depicted in the First Video were carried out in accordance with the requirements and scope of ISO 9705.

2. At paragraphs [248] and [249] of my judgment I concluded that the problem with the first declaration is that ISO 9705 is not intended to evaluate the contribution to fire growth made by non-surface products such as TR26 and K11. Moreover, the test is not an appropriate test to evaluate the contribution of such non-surface products to fire when installed as intended in a building. The second declaration suffered from much the same difficulty because the fire tests on TR26 and K11 were not carried out in accordance with the method of ISO 9705.
3. Rockwool now invites me to make a series of other declarations which are set out in paragraphs 4 to 8 of its draft order and read:

"4. The demonstrations shown during the 2007 Road Shows and 2008 Road Shows were illustrative of how the products would perform in ISO 9705 room tests.

5. Tests on Kingspan's KS1000 MR product conducted in accordance with ISO 9705 may allow conclusions to be drawn as to the consequences of using it for its intended purpose.

6. The ISO 9705 test is an appropriate test to apply to and compare Eurobond's Europanel Lite with Kingspan's KS1000 MR product.

7. The tests on Kingspan's KS1000 MR product shown in the Rockwool Videos were conducted in accordance with the method required by ISO 9705.

8. At all relevant times Rockwool did not believe that the First and Second Videos were misleading and acted in good faith in relation to the production and/or distribution of the First and Second Videos."

4. Rockwool submits that it is appropriate to make these declarations for the following reasons. First, Kingspan and Rockwool are competitors. The actions concerned comparative advertising and were hotly contested. The parties had been in extensive discussions for over a year prior to the issue of proceedings and, indeed, had agreed that the dispute between them could be determined by reference to the declarations Rockwool sought.
5. Secondly, it was only on the third day of the trial that Kingspan specifically identified the declarations of fact that it would be inviting the court to make.
6. Thirdly, it would not do justice to Rockwool if the only declarations made were those that supported the position put forward by Kingspan and no equivalent declarations were made consequent upon the findings that supported the position put forward by Rockwool.
7. Fourthly, it is necessary to make such declarations in order to bring all matters in dispute between the parties completely and finally to an end.
8. Finally, the declarations now sought by Rockwool reflect specific findings in my judgment.
9. It is clear that I do have jurisdiction to grant declaratory relief of the kind Rockwool now seeks. CPR 40.20 reads:

"The court may make binding declarations whether or not any other remedy is claimed."

10. In deciding whether or not to exercise my discretion whether to grant such relief, I must have regard to section 49(2) of the Senior Courts Act 1981 which provides, so far as relevant:

"Every court ... subject to the provisions of this or any other Act, shall so exercise its jurisdiction in every cause or matter before it as to secure that, as far as possible, all matters in dispute between the parties are completely and finally determined, and all multiplicity of legal proceedings with respect to any of those matters is avoided".

11. Further guidance as to how the court's discretion should be exercised was provided by Neuberger J (as he then was) in Financial Services Authority v Rourke t/a J.E. Rourke & Co. [2002] CP Rep 14, at 18, in these terms:

"It seems to me that, when considering whether to grant a declaration or not, the court should take into account justice to the claimant, justice to the defendant, whether the declaration would serve a useful purpose and whether there are any other special reasons why or why not the court should grant the declaration."

12. I must exercise my discretion separately in relation to each of the declarations Rockwool now seeks but, before doing so, would make the following general observations. First, I recognise that Rockwool and Kingspan are competitors, have been in dispute for a considerable period of time, have failed to resolve their differences and, accordingly, have brought these proceedings to try and secure a measure of clarity and certainty as to what they may and may not properly do by way of marketing their own products and dispelling misconceptions which they believe exist in the market as to the characteristics of each other's products.
13. Second, it is always important, and particularly so in this field, concerned as it is with the safety of building materials when exposed to fire, that any declaration the court makes is not misleading or confusing and does not create a false impression. These proceedings have revealed, all too vividly, how such a false impression can easily be created by the use of inappropriate fire tests and their presentation and associated commentaries. I am reinforced in this view by the submissions of Mr Silverleaf QC, who appears on behalf of Rockwool, in the course of which he made clear that his clients do intend to use any declarations I make for marketing purposes.
14. I come, then, to consider each of the declarations sought.

Paragraph 4

15. Rockwool submits that this declaration is appropriate in light of paragraph [133] of my judgment in which I said, in relation to the fourth alleged misrepresentation in the road shows, namely that the tests shown in the road shows showed the same or similar results as would be obtained when Kingspan's products were tested in accordance with ISO 9705:

"133. I do not think there is much in this allegation. Rockwool disputes that it represented that the same results would be obtained when Kingspan's products were tested in accordance with ISO 9705. I agree. It represented that the demonstrations were illustrative of how the products would perform in ISO 9705 room tests. That representation was true, albeit that the Kingspan products went to flashover more quickly for the reasons I have explained at paragraph [79] above."

16. In my judgment, the fundamental problem with this declaration is that, stripped of its context in the judgment, it suggests that the ISO 9705 test is a suitable and appropriate test to use generally in relation to the Kingspan products tested in the road shows, including TR 26 and K11, when it is clear from my judgment, read as a whole, that is not the case. For example, in paragraphs [26] to [37] of my judgment, I explained the scope and nature of the ISO 9705 test and the products for which it is intended. In paragraph [194] of my judgment, I concluded that the ISO 9705 test is not suitable or intended for use in relation to TR 26 and K11.
17. Moreover, I have, in my judgment, reached the conclusion that the road shows made a series of important and material misrepresentations, yet the declaration now sought may well be understood to mean that the road shows were properly used and may properly be deployed to illustrate how the products tested would perform when tested in accordance with ISO 9705. That, it seems to me, would be quite wrong and, for all these reasons, I decline to make this declaration.

Paragraph 5

18. Rockwool invites me to make this declaration in light of paragraph [206] of my judgment which addresses the alleged misrepresentation in the videos that tests carried out in accordance with ISO 9705 are appropriate tests from which conclusions may properly be drawn as to relative dangers in a fire of Kingspan's products and Rockwool's products when properly installed and used for their intended purposes. I said this:

"206. …… Accordingly, this representation is made in each of the videos and further, I believe that it is misleading. Tests in accordance with ISO 9705 are not an appropriate basis for drawing conclusions about how TR26 and K11 roof panels will behave and their dangers in a real fire when properly installed. The position in relation to KS1000 MR is different. This is a surface product and I believe that appropriate tests conducted in accordance with ISO 9705 may allow conclusions to be drawn as to the consequences of using it for its intended purpose."

19. It is to be noted that this passage reflects the fact that I was not persuaded by Kingspan that tests in accordance with ISO 9705 could not form an appropriate basis for drawing conclusions as to how KS1000 MR would behave in a real fire when properly installed. But that is not to say that the tests actually conducted by Rockwool and shown in the videos were appropriate for that purpose. Indeed, I found they were not. At paragraph [208] of my judgment, I said:

"208. …. I do not believe that the tests provide a fair comparison from which conclusions may properly be drawn as to the relative dangers in a fire of any of the Kingspan products when properly installed. The reason in the case of TR26 and K11 is self-evident; they are not surface products. The reason in the case of KS1000 MR is that it was installed on the ceiling of the test room as well as the walls and I think it is clear from the videos and the evidence that the presence of the product on the ceiling had a highly material effect on the way the product behaved."

20. Yet the declaration now sought by Rockwool in paragraph 5, when read stripped of its context in the judgment, may well be understood to be saying the opposite. Moreover, if properly and fully qualified, I do not believe such a declaration would serve any useful purpose. Accordingly, I decline to make it.

Paragraph 6

21. Rockwool submits this declaration is properly founded on paragraphs [247] to [249] of my judgment, to which I have already referred. Importantly, I made no finding that the ISO 9705 test is an appropriate test to apply to and compare Eurobond's Europanel Lite with Kingspan's KS1000 MR product. Furthermore, the declaration sought is, in my judgment, far too broad and imprecise. For example, it suggests that the test actually conducted on KS1000 MR would be appropriate to use in this comparison when it is clear from paragraph [208] of my judgment that would not be the case. Once again, I decline to make it.

Paragraph 7

22. This declaration is founded on paragraphs [195] to [204] of my judgment which address the alleged misrepresentation in the videos that the tests on each of the Kingspan products shown in the videos were conducted in accordance with the method required by ISO 9705.
23. I held that the tests on TR 26 and K11 shown in the videos were not conducted in accordance with the method required by ISO 9705, but that the tests on KS1000 MR were conducted in accordance with that method.
24. Kingspan has invited me to make an appropriate declaration to that effect in relation to TR 26 and K11. I consider that, in these circumstances, justice requires me to make an appropriate declaration which reflects my finding in relation to KS1000 MR too. I am satisfied that, absent the declarations sought by Rockwool in paragraphs 4 to 6 of its draft order, this declaration would not be misleading.

Paragraph 8

25. Rockwool seeks this declaration in light of the finding in paragraph [244] of my judgment that Rockwool did not act from any improper motive in taking the steps that it did in relation to the First and Second Videos and that it acted throughout in good faith. This finding acquits Rockwool of the allegation of malice and, in the context of the dispute between the parties, it is, I believe, an important one. In my judgment, a declaration to this effect would serve a useful purpose in making the position clear to the market and that, in the interests of justice, I should make it.
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