Case No. EWHC-11-(IPEC)

127.If I am wrong that the bulk of the First Defendant’s use was and is pursuant to a licence granted by the Claimant in 2003, the Defendants rely on both estoppel by convention and estoppel by representation as well as acquiescence to enable the continuation of their conduct. As this argument does not arise on the basis of my findings above, I can deal with it briefly. It was not separately argued before me that use of CORMETON on its own or use of the Signs and the CE Sign in relation to mechanical fire protection goods and services established an estoppel or acquiescence – in any event, for the same reasons as set out above at paragraphs 117, neither use has been for a sufficient period to establish estoppel by convention or acquiescence, and there was no pleaded representation that the First Defendant could rely on to suggest that it was allowed to change its trading as it did in 2016. Estoppel/acquiescence therefore only arise in relation to the main trade mark infringement case if I am wrong that the main uses were licensed. 128.The Defendants said that they were permitted to carry on after 2003 using the same branding as they had prior to their relocation. This assumption, they say, was bolstered by the later comments from Mrs Warburton to Mr Rush by telephone and email (which I have referred to above). As a result of “this understanding, and these reassurances”, the First Defendant continued trading in the same style as before 2003, and greatly expanded its business. It would therefore be unconscionable for the First Defendant to be prevented from continuing to trade in the same manner. In relation to acquiescence, the Defendants submitted that the Claimant has stood back for over 15 years and allowed the First Defendant to assume that no objections will be taken to the First Defendant’s use of the Mark. The First Defendant, it was submitted, had relied on this position to its detriment. 129.I have some sympathy for the Defendants were these to be the facts as found. However, even on its contingent case, the Defendants’ submissions fail, because I accept the Claimant’s submission that estoppel/acquiescence cannot operate as a defence to allegations of registered trade mark infringement: Marussia Communications Ireland Ltd v Manor Grand Prix Racing [2016] EWHC 809 (Ch), per Males J at paragraphs 58 to 61 and 84 to 96; see also Coreix Limited v Coretx Holdings Plc &Ors [2017] EWHC 1695 (IPEC) per Mr Recorder Douglas Campbell QC at paragraphs 90 to 92. 130.Counsel for the Defendants accepted that “on the law as it stands, it appears that issues of estoppel and acquiescence cannot be raised as a shield to an allegation of trade mark infringement”. However, he went on to argue that the approach to date treats all types of estoppels as substantive defences, which, he submitted, is incorrect. He accepted in his closing speech that it was not open to the Defendants to run estoppel by convention as being in conformance with the TMA. But, he said, estoppel by representation is a rule of evidence, and as such, is more properly dealt with as an issue of procedural law, not as part of substantive trade mark law. 131.Those arguments were put to Males J in Marussia and rejected by him. On the basis of my findings in relation to the 2003 licence, I do not need to decide this issue. However, to the extent things go further, I record here that I gratefully adopt the position as set out by Males J and Mr Recorder Douglas Campbell. 132.Further, counsel for the Claimant submitted that the United Kingdom’s departure from the EU trade mark legal regime from 11pm on 31 December 2020 would change the position that he accepted was “the law as it stands” because the Court of Appeal would not be bound to follow the Court of Justice cases relied on by Males J and Mr Recorder Douglas Campbell QC, and may therefore take a different view. That may be a matter for the Court of Appeal in due course, but it is not a matter for me. I reject that submission. 133.that the defence of estoppel/acquiescence also applies in relation to the passing off case. This was not argued before me, but it cannot make a difference: the passing off case was based only on the Mark and the Work – it takes things no further to excuse the Defendants from passing off in circumstances where they cannot be excused from infringement of the Mark.