Case No. EWHC-11-(IPEC)

121.The law on passing off is well known, and I do not need to set it out here. 122.Goodwill is alleged in the Mark and the Work, both in relation to safety and monitoring goods and services. In relation to the Work, as I have set out above, it was likely created by or on behalf of the First Defendants in or after 2013, and used by the First Defendants and not by the Claimants. Therefore, I reject the allegation that goodwill in the Work is owned by the Claimant. The passing off case so far as it relies on the Work therefore also fails. 123.In relation to the Mark, the Defendants have admitted protectable goodwill in the Mark, but submit that it is not owned by the Claimant. I have found, above, that the First Defendant uses the Mark as a licensee of the Claimant in relation to the bulk of its business. Still, the Defendants argue that there is no rule “in law or in equity” that the goodwill generated by the First Defendant’s use ought to be assigned to the Claimant. Rather, counsel for the Defendants submitted that “it depends on the circumstances” – as two separate companies, each trading on its own account, each of the Claimant and the First Defendant generated and owned its own goodwill. This submission appears to me to be a red herring – the Defendants have conceded that the Claimant had protectable goodwill in 2003 that has persisted since. That is all that matters. It does not matter if the First Defendant has also developed goodwill and it is unnecessary for me to decide whether or not it has (although I do not consider that it has). 124.The same reasons that give rise to infringement under sections 10(1) and 10(2) of the TMA also give rise to a misrepresentation for the purposes of passing off. The Defendants did not seriously suggest that damage would not follow. Therefore, in my judgment, the First Defendant’s use of the Mark amounts to passing off (subject to the licence I have referred to above). 125.The “defence” of honest concurrent use was also pleaded in relation to the passing off case, on the express basis of a defence, and on the alternative basis that as a result of the circumstances, passing off cannot take place. I do not need to decide whether honest concurrent use can operate as a standalone “defence” to passing off – I was not referred to any cases where that had occurred, and it seems to me unlikely. I have held above that the defence does not on the facts of this case apply to the allegation of trade mark infringement, and it similarly cannot apply to the passing off case, even if, as a question of law, the defence is able to operate. Similarly, I reject the allegation that the circumstances of the case are such that passing off cannot take place. 126.The Defendants’ uses under the terms of the 2003 licence do not constitute passing off. 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) constitute passing off.