INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| THE NATIONAL GUILD OF REMOVERS AND STORERS LIMITED
|- and -
t/a INTRANSIT REMOVALS AND STORAGE
- and -
TDL 2013 REALISATIONS LIMITED
(formerly THOMSON DIRECTORIES LIMITED)
Thomas St Quintin (instructed by Backhouse Jones) for the Defendant
Hearing dates: 4th and 5th February 2014
Crown Copyright ©
Judge Hacon :
(1) Infringement of TM 238
(2) Infringement of NGRS's copyright in the logo registered as TM 238
(3) Passing off by Mr Milner in the form of a misrepresentation that he was still a member of NGRS.
(a) on the facts Mr Milner was personally responsible for both; alternatively
(b) the publishers of the Salisbury Advert, Thomson Directories Limited ("Thomson") and the creators of the Website, British Telecom ("BT"), had both acted as agents of Mr Milner and therefore he was liable for the torts alleged; alternatively
(c) Mr Milner had procured the torts complained of and was therefore jointly liable for them.
(d) With regard to copyright infringement and the Salisbury Advert, Mr Milner had authorised the infringement and was therefore liable.
(1) TM 258 and three other marks owned by NGRS, namely UK Registered Trade Mark nos. 2130351 ("TM 351"), 2299722 ("TM 722") and 299710 ("TM 710") were invalidly registered on the ground of bad faith, contrary to section 3(6) of the Trade Marks Act 1994, because at the time of filing of each them NGRS had intended to use the mark as a collective mark, not a trade mark;
(2) All four trade marks were liable for revocation for non-use.
Third Party Claim
The Salisbury Advert
"5.6 If you want to change part of the Content [of the proposed advert] you must send written details of the change to the Publishing Department at our Head Office. The Publishing Department must receive the details before the Directory Close Date.
6.1 In addition to any statutory rights you may have to cancel your Order, you may cancel part or all of your Order by giving notice in writing to Customer Services at our head office. We must receive this notice by the Directory Close or within 14 days of the date of the Order, whichever is earlier. This applies whether or not your Order is for single year or multi-year advertising."
"YET AGAIN LOOKING FOR CONFIRMATION THIS HAS BEEN RECEIVED AND AWAITING A PROOF. I RECEIVED A GENERIC ARTWORK ATTEMPT FROM YOURSELVES WHICH IS NOT TO BE USED IN THE PUBLICATION
PLEASE LET ME KNOW ALL IS OK AND PROOF BACK"
"cust called to make us aware he does not want to use the advert we have made for the salisbury and swindon book because there are logos on there that he is not allowed to have on there."
"cust is going to send us his own advert once he has put it together."
Alleged consent by Mr Milner
"An "apparent" or "ostensible" authority, on the other hand, is a legal relationship between the principal and the contractor created by a representation, made by the principal to the contractor, intended to be and in fact acted upon by the contractor, that the agent has authority to enter on behalf of the principal into a contract of a kind within the scope of the "apparent" authority, so as to render the principal liable to perform any obligations imposed upon him by such contract. To the relationship so created the agent is a stranger. He need not be (although he generally is) aware of the existence of the representation but he must not purport to make the agreement as principal himself. The representation, when acted upon by the contractor by entering into a contract with the agent, operates as an estoppel, preventing the principal from asserting that he is not bound by the contract. It is irrelevant whether the agent had actual authority to enter into the contract."
See also ING Re (UK) Limited v R & V Versicherung AG  EWHC 1544 (Comm);  2 All ER (Comm) 870, at .
"My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion."
"Due to unforeseen circumstances when placing my associated adverts with you it is with regret that I have to inform you that from Midnight on 30th November 2010 The National Guild of Removers and Storers (NGRS) have terminated our membership.
Where possible, any association with the NGRS including the use of their logo's inclusive of the ombudsmans scheme logo have to be removed immediately, and my company cannot be referred in conjunction with the NGRS in any way."
Breach of contract
"Associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts and to sue and be sued, as well as legal persons governed by public law "
(i) A collective mark will not be registered if the public is liable to be misled as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a collective mark (para. 4(1)).
(ii) The registrar may require that the mark includes some indication that it is a collective mark (para. 4(2)).
(iii) The applicant must file with the registrar the association's regulations governing the use of the mark (para. 5(1)).
(iv) The regulations must at least specify the persons authorised to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including any sanctions against misuse (para. 5(2)).
(v) The regulations must not be contrary to public policy or accepted principles of morality (para. 6(1)((b)).
(vi) The applicant association must file the regulations with the registrar and pay the prescribed fee (para. 6(2)).
(vii) If the applicant fails to satisfy the registrar that the requirements of the regulations imposed by Schedule 1 of the Act and related rules are not met, the application will be refused (para.7).
(viii) The regulations submitted by the association are published and may be raised in an opposition to the grand of the collective mark (para. 8).
(ix) If the collective mark is granted, the regulations remain open to public inspection (para. 9).
(x) Any amendment to the regulations must be filed with the registrar and are not effective unless accepted by him (para. 10(1)).
(xi) The registrar may elect to publish proposed amendments; if he does, third parties may file a notice of opposition in relation to them (para. 10(2) and (3)).
(i) the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public as regards the character or significance of the mark (para. 13(a)); or
(ii) the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark (para. 13(b)); or
(iii) an amendment of the regulations has been made such that they no longer comply with the rules or are contrary to public policy or accepted principles of morality (para. 13(c)).
IPO Practice Amendment Notice PAN 2/01
"If applications in the same ownership are made to register an identical (or essentially the same) mark as both a collective mark and as an ordinary trade mark (or vice versa) for the same goods/services, objections should be taken to the later filed application under Section 3 (1)(a) and Section 3 (3)(a) and/or (b). If the later mark is a collective mark an objection should also be taken under Section 49.
An objection should be raised under Section 3 (1)(a) as the mark would be incapable of distinguishing goods and/or services of a particular trader from members of an association (if it is a collective mark) .
The filing of an identical mark, or essentially the same mark, as both a trade mark and collective mark for the same goods/services would be contrary to Schedule 1, Paragraph 2 which states:
- "In relation to a collective mark the reference in Section 1 (1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed or interpreted as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings."
and hence Section 3 (1)(a).
An objection should also be raised under Section 3 (3)(a) or (b) as a trade mark [or] collective mark shall not be registered if it is contrary to public policy and/or of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or services).
The basic rule is that we should not register identical marks of different statuses for identical goods/services in any circumstances. Whether there is consent or they are in the same name is irrelevant because the Section 3 (3)(a) objection and (depending of the status of the later application) Section 3 (1)(a) [or] Section 49 are insurmountable."
" Thus, the wider interpretation, according to which the source may be either the proprietor or an exclusive licensee, would not be at variance with customers' perceptions. Customers are well used to the practice of licensing of trade marks. When they see goods to which a mark has been affixed, they understand that the goods have been produced either by the owner of the mark or by someone else acting with his consent.
 Nor does the wider interpretation undermine the protection which a trade mark is intended to afford customers. For their quality assurance customers rely on the self-interest of the owner. They assume that if a licence has been granted the owner can be expected to have chosen a suitable licensee and imposed suitable terms. They also assume that during the currency of any licence the licensee, as well as the owner, is likely to have an interest in maintaining the value of the brand name. Customers are not to be taken to rely on the protection supposedly afforded by a legal requirement that the proprietor must always retain and exercise an inherently imprecise degree of control over the licensee's activities."
Lord Nicholls concluded that the sale of goods bearing a trade mark under a bare exclusive licence to use the mark did not render the trade mark liable to mislead public within the meaning of s.46(1)(d) of the 1994 Act.