Case No. IP-2014-000051

in Joined Cases C-414/99, C-415/99 and C-416/99 [2002] CH 109, [2002] RPC 20. Mr Moody-Stuart relies on Lewison LJ’s summary of the principles to be gleaned from this case in Honda Motor Co Ltd v Neesam at paragraph 5:“In the joined cases of Zino Davidoff SA v A & G Imports Limited and Levi Strauss & Co v Tesco Stores Limited… the European Court of Justice said that the concept of consent for this purpose was to be uniformly interpreted across the whole of the EU. The ECJ made a number of important points. First; consent amounts to renunciation of the right to the trademark proprietor, and must, therefore, be unequivocally demonstrated. Second, and intention to renounce will normally be gathered from an express statement. Third; there may be circumstances from which consent may be inferred, but it is an actual consent and not a deemed consent, that must be established. Fourth; it is, in almost all cases, for the trader to prove consent, not for the trademark proprietor to prove the absence of consent. Fifth; consent cannot be inferred from the trademark proprietor’s silence, nor from the fact that the goods carry no warning, nor from the fact that the trademark proprietor originally placed goods on the market without any further restriction on the onward sale of those goods.”135.Mr Harbottle makes the following additional points:i)The need to unequivocally demonstrate consent does not affect the standard of proof, which is the normal civil standard, but it does mean that a proved act which is merely consistent with consent, but also consistent with its absence, is not enough (Mastercigars Direct Ltd v Hunters & Frankau Ltd [2007] RPC 24 at paragraph 19);ii)Effective consent for these purposes can only be given by someone with authority to give such consent. There is apparent authority if: (i) Oran has expressly represented to the Defendants by words or conduct that the person who is supposed to have given consent had Oran’s authority to do so; and (ii) the Defendants did in fact rely on that representation (Chitty on Contracts, 32nd ed paragraph 31-056). Submissions 136.The Defendants accept that the 7.12.11 Email does not use the words ‘consent’, ‘licence’ or ‘Oranmore’. However Mr Harbottle submits that the email as a whole can be read as an unequivocal, permanent, unconditional renunciation of Oran’s rights in respect of the use of the Oranmore name by the Defendants. He particularly relies upon John Dooley’s statements “I really don’t have a problem with the overall situation now that it’s out in the open”, “I’m sure there will be opportunities for both companies to help each other out going forward” and “I believe if we all pull together and be straight up about things we shouldn’t have any problem. Again, I do wish ye luck with it.”. He asks me to consider the email in the context that Richard Burke and Ross Melville understood Oran to have decided to cease selling Hollowcore in the UK in April 2011 and so it would be ‘unsurprising’ that Oran’s directors would have no objection to the operation of a competing UK Hollowcore company run by members of their own families. Of course I have found they did not make that decision.137.Oran’s position can be fairly summarised, I think, by a single one of Mr Moody-Stuart’s submissions: “Hopeless”. Conclusion 138.In his closing submissions Mr Harbottle conceded that if I accepted John Dooley’s evidence that on 7 December 2011 he was told that the trading name of Oranmore was “a work in progress”, it made consent ‘very difficult’. I have accepted that evidence. Even if I had not, however, I would have found this email to be a very long way from complying with the stricture in Davidoff at paragraph 53 that: “it follows… that consent must be expressed positively and that the factors taken into consideration in finding implied consent must unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights.”. In my judgment this email is nothing more than an acknowledgement by John Dooley that Ross Melville is starting a new company, an expression that perhaps it can work with Oran in the future, and some handsome good luck wishes. There is nothing whatsoever in it, in my view, which can be interpreted as a trade mark licence at all, let alone the wide ranging one for which the Defendants contend. I accept Mr Moody-Stuart’s submission. Issues 15 - 20 – Acquiescence 139.I will deal with this shortly. In light of my findings on the Copyright Licence and the 7.12.11 Email, and in the context of my finding that at the time of the 7.12.11 Email John Dooley had no knowledge of the likely trading name of Oranmore, the Defendants’ contention that the Copyright Licence and the 7.12.11 Email amounted to: (i) encouragement to Oranmore to trade under the name of ORANMORE; or (ii) assurances that Oran would not object to Oranmore trading in Hollowcore in the UK under the name Oranmore and the First Defendant’s Device, must fail. No other acts of encouragement are pleaded or relied upon. Conclusion on infringement 140.It follows that Oran has established the conditions for infringement under section 10(2) of the 1994 Act. Had I not found that Oran was precluded from bringing the Registered Mark infringement claim by operation of the Compromise Agreement, I would have given judgment to Oran on the infringement claim. PASSING OFF 141.Oran also relies on passing off pursuant to the ‘classical trinity’ of that tort as described in the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL), namely goodwill, misrepresentation leading to deception and damage. As previously stated, goodwill is not in issue. 142.Insofar as the passing off claim concerns the use of the ORANMORE Signs with and without the First Defendant’s Device, both parties rely on the same submissions in respect of whether the use of the signs constitutes a misrepresentation likely to lead to deception on the part of the public as they did in relation to confusion. I am satisfied that my findings in respect of confusion for infringement of the Registered Mark are equally as persuasive of deception of the public for the part of passing off, in particular given the support provided by the examples of actual confusion relied on by Oran. Accordingly I am satisfied that use of the ORANMORE Signs is a misrepresentation to the public which leads or is likely to lead the public to believe that the goods or services offered by it are the goods or services of Oran.143.I will deal briefly with the issue of Oran’s own use of its OP Device. I do not find it to be conceptually very similar to the First Defendant’s Device such that the use of the First Defendant’s Device alone is a misrepresentation likely to lead to deception. It is, in my opinion, the ORANMORE Signs that cause the misrepresentation, and that misrepresentation is not negated by the addition of the First Defendant’s Device. 144. Finally, I accept Mr Moody-Stuart’s submission that such misrepresentations are likely to damage Oran’s trade or business, as Oran and Oranmore are direct competitors in the UK market and there is some evidence before me that Oran has already suffered lost sales in the UK by reason of Oranmore’s trade. Accordingly it follows that Oran has made out its case in passing off. Had I not found that Oran was precluded from bringing the passing off claim by operation of the Compromise Agreement, I would have given judgment to Oran on the passing off claim in accordance with the paragraph above. OVERALL CONCLUSION 145.It follows from my findings in respect of the Compromise Agreement in paragraph 98 above, that I dismiss the claim. Annex 1 First Defendant’s Device (and ORANMORE Sign plus First Defendant’s Device): Oran’s OP Device: