Case No. EWHC-11-(IPEC)

): “fire alarms” are identical to “fire alarms”; “fire & smoke damper test and inspection” falls within “maintenance of fire detection systems” and/or “maintenance of fire suppression systems”; “weekly fire alarm testing” falls within “maintenance of fire detection systems”; and “automatic gas extinguishing systems” falls within “fire extinguishing installations”. Reputation 108. The Defendants’ Defence and Counterclaim did not admit the reputation that the Claimant claimed to have in the Mark, but their counsel did not address me on the issue. There was ample evidence before me to meet that low hurdle and I so find. The Mark has reputation, at least in relation to fire extinguishers and services related to them. Section 10(1) infringement 109. As the Defendants have admitted that the First Defendant uses CORMETON, and have admitted that it is identical to the Mark, and as I have found that the Identical Services are identical to those for which the Mark is registered, I find that there would be trade mark infringement under section 10(1) of the TMA in relation to the Identical Services (subject to the licence I have discussed above). Section 10(2) infringement 110.All four of the Signs and the CE Sign are highly similar to the Mark. The First Defendant’s Goods/Services are identical or similar to those for which the Mark is registered. There would be, in my judgement, a likelihood of confusion, such that there would be trade mark infringement under section 10(2) of the TMA (subject to the licence I have discussed above). Indeed, the Defendants pleaded confusion in their positive case on invalidity of the Mark. Counsel for the Defendants accepted that I therefore do not need to review the evidence of alleged actual confusion that was before the Court – I can find likelihood of confusion without doing so. I have no hesitation in so finding, given that the Mark is a made up word with a high inherent distinctive character, and the Signs and the CE Sign are identical or highly similar to the Mark and the goods/services are identical or similar to the goods/services for which the Mark is registered. The evidence of actual confusion supports that conclusion. 111.Enhanced distinctive character through use is set out in the list of issues, but it was not referred to before me. If found, it would serve to support the conclusion on infringement I have just reached. Section 10(3) infringement 112.Both sides accepted that section 10(3) does not take matters any further for the Claimant, and therefore it was not argued before me at any length. The Defendants accepted that there has been a link created in the minds of relevant consumers in respect of fire alarms. In case things go further, given the identity/high similarity of each of the Signs and the CE Sign with the Mark, I find a link in relation to all the First Defendant’s Goods/Services. 113.The Defendants argued that, on the facts of this case, it was the Claimant who was getting an unfair advantage from its association with the First Defendant, not the other way around. Be that as it may (and I do not need to reach a conclusion), the essence of section 10(3) is the loss of control of the trade mark owner over use of its trade mark. In my judgment, the First Defendant’s use of the Signs and the CE Sign on the First Defendant’s Goods/Services would take unfair advantage of and/or be detrimental to the distinctiveness and/or repute of the Mark (subject to the licence I have referred to above). Whist the issue of due cause was set out in the list of issues, it was not argued before me other than in relation to the “defences” I have addressed elsewhere in this judgment. The Defendants do not have due cause. Honest concurrent use 114.The Defendants rely on the doctrine of honest concurrent use to avoid a finding of trade mark infringement. As set out above, I have found that the bulk of the First Defendant’s uses do not infringe the Mark because the First Defendant is acting under a licence granted by the Claimant to use the Mark. Counsel for the Defendants conceded that if the use was licensed, it cannot qualify as honest concurrent use. However, in case I am wrong in that, I set out my conclusions on honest concurrent use below. 115.I was referred to the judgment of HHJ Hacon (sitting as a High Court Judge) in Bentley 1962 v Bentley Motors [2019] EWHC 2925 (Ch) at paragraphs 85 to 97. That judgment provides a helpful summary of the review of earlier decisions of the Court of Justice (Case C-482/09 Budejovicky Budvar NP v Anheuser-Busch Inc [2011] RPC 11) and Court of Appeal (IPC Media v Media 10 [2015] FSR 12) in the judgment of Henry Carr J in Victoria Plum v Victoria Plumbing Limited [2016] EWHC 2911 (Ch). At paragraph 74, HHJ Hacon summarised as follows: “The case law to which I have referred establishes the following principles: (i)Where two separate entities have co-existed for a long period, honestly using the same or closely similar names, the inevitable confusion that arises may have to be tolerated. (ii)This will be the case where the trade mark serves to indicate the goods or services or either of those entities, as opposed to one of them alone. In those circumstances, the guarantee of origin of the claimant’s trade mark is not impaired by the defendant’s use, because the trade mark does not denote the claimant alone. (iii)However, the defendant must not take steps which exacerbate the level of confusion beyond that which is inevitable and so encroach upon the claimant’s goodwill.” 116.Bentley Motors was refused permission to appeal HHJ Hacon’s rejection of the defence of honest concurrent use by both his Honour and by Floyd LJ in the Court of Appeal: Bentley Motors Ltd v Bentley 1962 Ltd and Anor [2020] EWCA Civ 1726. 117.Counsel for the Claimant submitted that honest concurrent use has never been successfully asserted in a case where the alleged infringer is a former licensee of the trade mark proprietor. Further, he submitted that “it cannot realistically be said that, where use was made by a defendant with the claimant’s permission, that it was “concurrent” use. It was use with the claimant’s consent.” I agree. Use under a licence is generally considered to be use that inures for the benefit of the trade mark proprietor. It would be odd indeed that a licensee, at the end of a period of trading under a licence, were able to say “I no longer need a licence because I have traded so long under the licence that you can no longer sue me for trade mark infringement: honest concurrent use protects me from infringement”. I therefore have no hesitation in rejecting the claim of honest concurrent use in relation to any services licensed under the 2003 agreement. 118.That leaves only those uses which fall without the 2003 licence – use of CORMETON on its own, and use in relation to mechanical fire protection goods and services. These, too, can be dealt with briefly. In relation to the former, whilst there were a handful of examples before the Court of uses of CORMETON on its own between 2003 and 2016, it was not seriously submitted that these were sufficient to establish honest concurrent use. For the uses that commenced in or around 2016 (the change of van livery, the changes to the website, the trading in relation to mechanical fire protection goods and services), I do not consider that the time between 2016 and the commencement of these proceedings in 2019 could be considered a “long period” within paragraph (i) of HHJ Hacon’s analysis in Bentley Motors. The time between the First Defendant’s first use with respect to mechanical fire protection goods and services and the Claimant’s complaining about it is even shorter. For this reason alone, no honest concurrent use can arise in relation to those uses. I also do not consider that that use was honest: beginning to trade for the exact services provided by the Claimant does not meet the First Defendant’s duty to act fairly in relation to the legitimate interests of the trade mark proprietor. Rather, to the contrary, the First Defendant, in starting to provide mechanical fire protection goods and services “has taken steps which exacerbate the level of confusion beyond that which is inevitable and so has encroached upon the [C]laimant’s goodwill”, to borrow the words of Henry Carr J in Victoria Plum (at paragraph 126). 119.I therefore reject this “defence” to trade mark infringement. 120.The Defendants’ uses under the terms of the 2003 licence do not infringe the Mark. The uses which fall outside the 2003 licence (being use of CORMETON on its own, and uses of the Signs and the CE Sign in relation to mechanical fire protection goods and services) infringe sections 10(1), 10(2) and 10(3) of the TMA.