Case No. EWHC-11-(IPEC)

(the Domain Name); iii)the Work; and iv)(the Device). 4.The Claimant also alleges that the First Defendant has used the sign CORMETON ELECTRONICS (the CE Sign) in the course of trade in the supply and sale of mechanical fire protection equipment. The Claimant has no issue with the First Defendant using the CE Sign in relation to the supply and sale of electrical safety equipment, but wishes to prevent the First Defendant from using the CE Sign in relation to mechanical fire protection goods or services. 5.The Second Defendant is alleged to be jointly and severally liable with the First Defendant for the acts complained of, on the basis that he authorised, procured and/or directed those acts. The Defendants have admitted those allegations of joint and several liability, so I say no more about them. 6.7.I should also make clear what the Claimant does not complain about. The Claimant is happy for the First Defendant to continue to trade under the CE Sign, carrying on the supply and sale of electrical safety equipment (alarms etc). However it asks the Court to stop the First Defendant from (i) using CORMETON on its own; (ii) from using the Domain Name; (iii) from using the Work and the Device; and (iv) from using CORMETON (including the CE Sign) in relation to a mechanical fire safety business (extinguishers etc). 8.Therefore, the simply phrased question I have set out above of “who gets to use the word CORMETON and for what goods/services” requires assessment of a significant number of sub-issues. 9.The trial was heard remotely. Mr Thomas St Quintin appeared for the Claimant. Mr Tim Austen appeared for the Defendants. 10.Although this judgment will be handed down following the United Kingdom’s departure from the European Union trade mark regime on 31 December 2020, subject to one issue on estoppel/acquiescence to which I will return below, I was asked by both counsel to decide the case on the basis of the law as it stood at the time of the trial. List of Issues 11.As is usual in the IPEC, the List of Issues was set at the CMC (determined without a hearing). All remained relevant at the start of the trial. “The Work1. Goodwill and Reputation 2.Does the Mark have a reputation in respect of the goods and services for which it is registered and/or an enhanced distinctive character? 3.Have the Claimant and its predecessors generated and does the Claimant own goodwill attached to the Mark and/or the Work in respect of safety monitoring goods or services? Partnership; Separation; Consent 4.Did the Claimant and the First Defendant form and trade as a partnership? 5.If so: 5.1did the Work become a partnership asset? 5.2did any goodwill attached to the Mark and/or the Work become a partnership asset? 6.What was agreed between the parties when they ceased working together in 2003? 7.Has the agreement reached between the parties when they ceased working together been terminated? Copyright Infringement 8. Trade Mark Infringement and Passing Off 9.Does there exist a likelihood of confusion on the part of the public because the Signs and/or the CE Sign are identical or similar to the Mark, and used in respect of goods and services identical with or similar to those for which the Mark is registered? 10.Do the acts complained of affect, or are they liable to affect, one of the functions of the Mark? 11.Does the use of the Signs and the CE Sign take unfair advantage and/or is detrimental to the distinctive character and/or take unfair advantage of the repute of the Mark? 12.Was any such use of the Signs and the CE Sign in the manner set out at paragraph 11 above with due cause? 13.Have members of the public actually been confused as a consequence of the acts complained of? 14.Do the acts complained of cause a misrepresentation that damages the Claimant’s goodwill in the Mark and/or the Work? 15.Is infringement of the Mark and/or passing off avoided because of honest concurrent use? Authorisation 16.Have the acts of which complaint is made, or any of them, been conducted without the Claimant’s authorisation? Acquiescence and estoppel 17.18.Are the Defendants entitled to a defence of estoppel or acquiescence in respect of any acts that would otherwise be acts of passing off? 19.Are the Defendants entitled to a defence of estoppel or acquiescence in respect of any acts that would otherwise be acts of infringement of the Mark? Validity of the Mark 20.Was the Mark, in whole or in part (and if in part, in what part) registered contrary to section 3(3)(b) of the TMA because it was on its filing date of 12 May 2016 of such a nature as to deceive the public? Revocation of the Mark 21.Is the Mark liable to be revoked under section 46(1)(d) of the TMA because it is liable to mislead the public as a consequence of the use made of it by the Claimant or with its consent? 22.If so, from which date did the Mark become liable to revocation on the aforesaid basis?” 12.Issues 4 and 5 were conceded by the Defendant on the morning of the second day of the trial following the cross-examination of the Defendants’ witnesses and all allegations of partnership were withdrawn. 13.As will be apparent, this was a large number of issues to be determined within the ambit of the usual IPEC two day hearing. Much of the trial was taken up by only a few of the issues. Many issues were covered only briefly, and some not at all. To decide the case, it is not necessary for me to examine in detail every controversy that arose. I have therefore, in this judgment, dealt only with the issues that make a difference to the outcome of the case, and have ignored those controversies which, though fiercely argued, are irrelevant to the outcome. Witnesses 14.The Claimant and the Defendants each called two witnesses. All four witnesses were skilfully cross-examined. Michael Warburton Senior 15.Mr Michael Warburton Senior is a director and company secretary of the Claimant, a family business for whom he has worked since 1974. As various male members of the Warburton family are mentioned in the evidence before me, I will use first names to differentiate them: in doing so, I mean no disrespect. Michael Senior gave evidence that the business now operated by the Claimant was started in 1967 by his father, Mr Robert Warburton Senior. Robert Senior named the business CORMETON – a portmanteau word combining elements of CORROSIVE, METAL and the family name, WARBURTON. Michael Senior’s brother, Mr Robert Warburton Junior, took over the business in 1968, and Michael Senior took over day-to-day operations in 1974. In 2014, Michael Senior’s son, Mr Michael Warburton Junior, took over the day-to-day operations of the business. 16.Michael Senior’s first witness statement set out the establishment of the Claimant, the creation of the Work (to which I return below), and the relationship between the Claimant and the Defendants. His second witness statement responded to the Defendants’ written evidence. 17.Counsel for the Defendants criticised Michael Senior’s evidence as being “exceptionally vague”, and contended that his inability to recollect some dates meant that I should treat his evidence with some care. I disagree. First, this criticism was never put to him. Second, Michael Senior was asked to recall events from many years ago, often of doubtful or peripheral relevance to the proceedings – including, for example, what make of vans were used by the Claimant at different times. I accept that the date of creation of the design drawings on which the Claimant relied is of importance to these proceedings, but it is unsurprising that he was unable to recall precise dates for what would have been at the time unimportant events. I found him to be an honest witness, doing his best to assist the Court. This does not mean that I have accepted all of his evidence: I have not. But in my judgment his evidence was honestly given. Anne Warburton 18.Mrs Anne Warburton is married to Michael Senior, and mother of Michael Junior. She is also a director of the Claimant, and began working in the Claimant’s business in 1996. Her first witness statement set out details of what she alleged was confusion between the Claimant and the First Defendant. Her second witness statement responded to the Defendants’ witness statements. 19.Counsel for the Defendant suggested that Mrs Warburton was “less than candid” in her oral evidence. He described her oral evidence as vague and difficult to follow, and urged me to approach it with great caution. Again, I disagree. Whilst there were facts from some years ago that Mrs Warburton could not recall, she was doing her best to assist the Court. She was an honest witness. John Aitchison 20.As noted above, Mr John Aitchison is the Second Defendant and a Director of the First Defendant. In his witness statement he gave his version of the relationship between the two businesses, and the split that occurred in 2003. 21.Counsel for the Claimant criticised Mr Aitchison as a dishonest witness. Specifically, it was submitted that Mr Aitchison lied in the closing moments of his oral testimony, when he contradicted his written evidence to claim that conversations which his witness statement stated had occurred with his “staff” were actually had directly with him. It does seem to me, having watched Mr Aitchison give his evidence and having reviewed the transcript, that it is likely that Mr Aitchison’s written testimony is to be preferred on this point, because it seems to me inherently implausible that Mr Aitchison would have used the expression “a number of [the First Defendant’s] staff” when he meant himself. Mr Aitchison was professionally represented, and had assistance in preparing his witness statement. There is very little in the issue itself, as Counsel for the Claimant conceded, but he went further, suggesting that I should therefore treat all of Mr Aitchison’s evidence with care. He submitted that where Mr Aitchison’s evidence is inconsistent with another witness’s evidence, I should prefer that of the other witness. Counsel for the Claimant submitted that this included the evidence of what was agreed in 2003, and submitted that I should prefer Michael Senior’s evidence to that of Mr Aitchison. Counsel for the Defendants submitted that Mr Aitchison had been nervous, but had given his evidence honestly. I accept that Mr Aitchison’s evidence at the end of his crossexamination was not accurate. But I do not consider that that infects the remainder of his testimony to a degree that I should discount it where there is evidence to the contrary. I consider that, overall, Mr Aitchison was doing his best to assist the court. As will be apparent from what follows, there are facts on which his memory has failed him, and I have concluded that I prefer other evidence to the evidence given by Mr Aitchison on some issues. But having had the benefit of the totality of Mr Aitchison’s evidence, and in particular having seen him give his oral testimony in cross-examination, I do not conclude that Mr Aitchison was dishonest in his written testimony or in his crossexamination up to the last moments I have mentioned above. Stephen Rush 22.Mr Stephen Rush is a director of the First Defendant. He started in the First Defendant’s business in 2002, shortly before it moved out of the Claimant’s premises in 2003. He provided a witness statement setting out his views on the relationship between the Claimant and the First Defendant, and what he saw as the changes to that relationship since Michael Junior took over day-to-day management of the Claimant. He also provided some evidence which sought to suggest that the Claimant benefits from the association between the Claimant and the First Defendant. 23.Counsel for the Claimant submitted that Mr Rush’s version of some conversations he had had with Mrs Warburton was a “statement of what he wants to believe rather than a record of what was actually said”. As I have set out below, Mrs Warburton was not asked about those conversations in cross-examination, so I accept what she said about them in her written evidence. That also means that I reject Mr Rush’s version of what Mrs Warburton meant by what she said to the extent that it differs from what Mrs Warburton said in her statements. This does not, however, mean that I consider Mr Rush a dishonest witness – he was trying to assist the court, but I am unable to accept what he said about exchanges with Mrs Warburton because it was not put to her that her version of events was untrue. 24.Each of the witnesses was asked to recall conversations and events from, in some cases, many years ago, in circumstances where there was not a thorough or complete documentary record of all that happened. To the extent that there are documents, the Court can read them, and ascertain their meaning – questions to the witnesses as to what they thought those documents may have meant did not assist me. Neither counsel put to me that I should prefer any of the oral testimony to the written record where it was available. However, given the “defences” to infringement which have been raised by the Defendants, I must piece together the events that have occurred as between the two businesses since 1989, so as to ascertain the legal consequences for the parties. Of course, much of what has happened in that time is irrelevant to the determination of the issues in dispute – and each side sought to put its own spin on various events to assist its case. The Factual Matrix 25.As I understand the parties’ submissions, none of what follows under this heading was seriously contested. 26.The Claimant’s business was started and named by Robert Senior in 1967. Michael Senior was in charge of the business from 1974. The Claimant was incorporated in 1979 under the name CORMETON FIRE PROTECTION LIMITED. That business provided mechanical fire protection goods and services, including fire extinguishing systems. By 1989, the Claimant was trading from premises at the Delaval trading estate in Seaton Delaval. 27.Prior to 1989, Mr Aitchison worked in a different business, principally concerned with fire and safety electronics, including fire alarms, lighting, access control keypads and CCTV. 28.Mr Aitchison and Michael Senior met through their then work in 1989 and, shortly thereafter, decided to work together. The First Defendant was established under the name CORMETON ELECTRONICS LIMITED to carry on the supply and sale of electrical safety equipment in which Mr Aitchison had expertise. Michael Senior owned 60% of the shares in the First Defendant, and Mr Aitchison owned the remaining 40%. The First Defendant operated from the Claimant’s existing premises at Seaton Delaval. It was common ground that Michael Senior made most of the management decisions in relation to the Claimant, and Mr Aitchison made most of the management decisions in relation to the First Defendant. It was also common ground that staff and various business systems were shared between the Claimant and the First Defendant. 29.This situation continued for over 14 years. 30.The Domain Name was registered in 1998. Until 2003, the website at the Domain Name referred to both the Claimant and the First Defendant. 31.In 2003, needing more space, the First Defendant moved out of the premises at Seaton Delaval and Michael Senior was paid £240,000 for his shares in the First Defendant. The full terms on which the businesses separated were hotly contested. The Claimant asserted that the terms were orally agreed, and that they imposed on the First Defendant obligations (1) only to use CORMETON as part of the full name CORMETON ELECTRONICS LIMITED and (2) only to supply and sell under that name electrical safety equipment (and not mechanical fire safety equipment). The Defendants asserted that a formal separation agreement was negotiated by solicitors on behalf of the parties, but no such document has been found. The Defendants asserted that, under the written agreement, both businesses were permitted to use CORMETON, with the Claimant operating in mechanical fire protection and the First Defendant operating in the supply and sale of electrical safety equipment. 32.Since 2003, both businesses have continued to trade. Initially, they were on friendly terms, and co-operated. The businesses referred work to each other, and subcontracted to each other. Since 2003, the website at the Domain Name has referred only to the First Defendant. The Claimant registered its own domain name, and set up its own website at www.cormetonfireltd.co.uk in 2010. 33.In 2014, Michael Junior took over the day-to-day running of the Claimant. Relations with the Defendants soured shortly thereafter. The First Defendant made some changes to how it marketed itself, including dropping the references to ELECTRONICS LIMITED on the sides of its vans. There were also changes to the First Defendant’s website. It stopped subcontracting mechanical fire protection work to the Claimant, and instead subcontracted such work to third parties. 34.The Mark was filed in 2016. These proceedings were commenced in 2019. 35.I mention for completeness that from about 2014, the Claimant kept logs of what it said were instances of consumer confusion. The Defendants did not accept that all those instances were reliable, but did accept that there was some evidence of confusion between the Claimant and the First Defendant (indeed, they positively relied on that confusion as establishing, among other things, the invalidity of the Mark under section 3(3)(b) of the TMA). Copyright 36.The Particulars of Claim state: 5.The Work was created in or around 1982 by Michael Warburton senior, who was a British Citizen and/or was ordinarily resident in the UK and was an employee of the Claimant acting in the course of his employment in the creation of the Work. 6.In the creation of the Work, Mr Warburton senior expended a significant original and artistic effort. The Work is the expression of Mr Warburton senior’s own intellectual creation. That intellectual creation was expressed in particular through the creation of the appearance of the flame effect element of the Work, the shape, size and position of the white nearlycircular element, the selection of the colours of the Work, and the selection of the font and colour and position of the word “Cormeton” within the Work.” 37.Michael Senior was asked in cross-examination about the creation of the Work: Q: I am asking you to focus specifically on the red badge with the flame and the word Cormeton underneath it, that picture or logo was not created by you, was it? A: No. Q: It is more likely than not that at some point, perhaps shortly before 2013, the First Defendant created the Work, did they not? A: I would assume so, yes. 38.It became apparent during his cross-examination that whilst Michael Senior may have created what was referred to at the Flaming O Device (a circle with a flame in it) and the font used in the Work for the word CORMETON, he had not, in fact, created the Work as it was defined by the Claimant in its Particulars of Claim. The Flaming O Device is shown here: 39.40.Alternatively, the Claimant made what its counsel described as a “contingent application” for permission to amend its pleadings to delete the depicted Work from the Particulars of Claim, and substitute instead the Flaming O Device. 41.Counsel for the Claimant’s application also proposed to amend paragraph 6 of the Particulars of Claim as follows: In the creation of the Work, Mr Warburton senior expended a significant original and artistic effort. The Work is the expression of Mr Warburton senior’s own intellectual creation. That intellectual creation was expressed in particular through the creation of the appearance of the flame effect element of the Work, and the shape, size and position of the white nearlycircular element, the selection of the colours of the Work, and the selection of the font and colour and position of the word “Cormeton” within the Work. 42.That contingent application was made in counsel for the Claimant’s reply speech, in the last half hour of the trial. I rejected that application for the reasons I gave at the time. 43. Did the Claimant own protectable goodwill in 2003? 44.As noted above, the Defendants originally pleaded that the Claimant and First Defendant entered into a partnership when the First Defendant was established in 1989, and operated as a partnership between 1989 and 2003. That allegation became untenable following the cross-examination of Mr Aitchison, and was therefore dropped on the morning of the second day of the trial. There is therefore no need for me to decide anything about the Claimant’s goodwill in 1989: clearly, the two businesses operated side by side, and consensually, between 1989 and 2003. The Defendants admit that they were using signs which include the word CORMETON with the consent of the Claimant, and could not have done so without that consent. 45.By the end of their counsel’s closing speech, the Defendants did not contest that the Claimant owned protectable goodwill in 2003 at the time of the separation of the two businesses – indeed, they averred that the First Defendant had, by virtue of what was agreed in 2003, been granted a licence to use various indicia, a licence the First Defendant would not have needed if goodwill in CORMETON were owned by the First Defendant and which the Claimant could not give if it did not own the relevant goodwill. What was agreed when the parties separated in 2003? 46.What matters next is what happened in 2003. Both sides say that there was an agreement reached at that time between Michael Senior and Mr Aitchison, and that the terms of that agreement governed use of the Signs and the CE Sign thereafter. Both sides agree that £240,000 was paid to Michael Senior. However, both sides take different views on (a) whether there was a written agreement and (b) what the terms were of the agreement that was reached. Was there a written agreement? 47.The Defendants submitted that the agreement reached between Michael Senior and Mr Aitchison was negotiated by solicitors and partially reduced to writing, although no copy of or reference to it can be found despite each side saying that it had met its disclosure obligations. The Claimant says that the agreement was reached orally – on a hand shake - and not reduced to writing. 48.During his closing speech, counsel for the Defendants conceded that it does not matter whether the agreement was in writing (and lost) or concluded orally – what matters are the terms that were agreed. However, as the point was argued before me, and submissions were made suggesting my findings on this point may influence my findings on other issues, I will deal with the point briefly. 49.To support the existence of a written agreement, the Defendants relied on the following: i)Mr Aitchison’s evidence that each party instructed solicitors – with the First Defendant instructing Williamsons Solicitors and Michael Senior instructing Samuel Phillips & Co. ii)Mr Aitchison’s evidence that a “bill of sale” document was drawn up setting out the terms. iii)As a large sum of money was changing hands, it was submitted that it was likely that the parties would not have relied on a simple handshake. iv)A letter was found from Williamsons stating “Following completion of the purchase of shares from Mike Warburton…” but dealing with other matters. 50.To support the existence of an oral agreement, the Claimant relied on the following: i)Michael Senior’s evidence that there was no written document, but rather the agreement was “concluded on a handshake”; he said that he and Mr Aitchison were “good friends” at the time, and the split of the companies was “entirely amicable”. Advice was taken from the accountant shared by the Claimant and the First Defendant, but no solicitors were instructed. At the time, neither Michael Senior nor Mr Aitchison considered it necessary. ii)Neither side has been able to find a copy of any written agreement or any reference to it. None was disclosed (though each side criticised the adequacy of the other’s disclosure). iii)Michael Senior thought that Mr Aitchison may have been confused with the sale of shares in another company, Cormeton Fire Limited, which sale was undertaken by solicitors and reduced to writing. 51.Counsel for the Defendants described the situation as “murky”. That seems to me to overstate things. For my part, I find it highly unlikely, even taking into account the criticisms made of the disclosure on both sides, that such a document can have come into existence, and been handled by two firms of solicitors and the Claimant and First Defendant as comparatively recently as 2003, without leaving any trace, digitally or otherwise. There had been instances of actual confusion prior to 2003, and they continued once the First Defendant had relocated. Had there been a written agreement, it seems to me very likely indeed that the Claimant would have looked for it then and raised it with the First Defendant. As far as I can tell, neither party raised the existence of a written agreement until the Defendants filed their Defence. It therefore follows that I prefer Michael Senior’s evidence on this point, as it accords more readily with the business reality. A large sum of money changed hands, but there was a document trail for the transfer of the shares, and the deposit of the money. Michael Senior and Mr Aitchison were good friends, who continued to refer work to each other for more than a decade thereafter. I accept that neither felt it was necessary to pay solicitors to draw up an agreement. This was not the splitting of a partnership: one of two collocated but separate businesses decided it needed bigger premises, and moved out. That did not require the involvement of solicitors. Whilst I do not need to decide the matter, it seems to me that Michael Senior’s explanation for Mr Aitchison’s confusion it likely accurate. 52.Both counsel suggested that the resolution of this particular sub-dispute could assist me in establishing what was actually agreed in relation to use of the name. I disagree. In preferring Michael Senior’s evidence that there was no written agreement, I am concluding only that Mr Aitchison has mis-remembered, and has done so, in my judgment having watched him give evidence, without malice. Mr Aitchison’s incorrect recollection of how the agreement was concluded does not tell me anything about what agreement was concluded, particularly when the parties are agreed as to the existence of an agreement and a number of its terms. What was agreed? 53.As noted above, both sides say that an agreement had been reached. I was not asked to determine all the terms of that agreement – only those relevant to use of the name CORMETON by the First Defendant. It is useful at this point to return to the pleadings. The Claimant states: “…in 2003, the Claimant acting through Michael Warburton senior, and the First Defendant acting through the Second Defendant, orally agreed a contract under which the First Defendant was granted a licence of the following limited extent: 19.1The First Defendant was permitted only to use the word “Cormeton” as part of the term “Cormeton Electronics Limited”. The First Defendant was expressly prohibited from using the name “Cormeton” alone. 19.2The First Defendant’s business under the name Cormeton Electronics Limited would be limited to the supply and sale of electrical safety equipment, and would not undertake the supply and sale of fire protection equipment. 19.3The First Defendant was not permitted to use the Work.” 54.The Defendants in their Defence and Counterclaim allege that the terms of separation included the following: “b. The Claimant would continue to operate in the field of mechanical fire protection and the First Defendant would continue to operate in the field of fire and safety electronics; c.The Claimant could continue to trade in mechanical fire protection under the name “Cormeton Fire Protection” [and] the First Defendant could continue to trade in fire and safety electronics under “Cormeton Electronics”, and both parties could use “Cormeton” (and figurative variants), the Work and the Flaming O Device as before; d.Unless a customer required either party to carry out all fire and safety electronics and mechanical fire protection work itself, or where such sharing or work was impractical (eg in combination mechanical and electrical systems) the Claimant and the First Defendant would subcontract work to the other in the same matter as described … above. Therefore the First Defendant was, at least to a limited extent, permitted to trade in the mechanical fire protection business; … g. The First Defendant would operate its website at www.cormeton.co.uk and the Claimant was free to set up another website at a separate domain name (which was eventually set up in 2010 at www.cormetonfireltd.co.uk).” 55.It is therefore common ground that the First Defendant would operate only in the supply and sale of electrical safety equipment. 56.The portion of the Defence which I have extracted above mentions a controversy in relation to the Claimant and the First Defendant referring work to each other. Both sides claim that there had been an agreement to that effect, but that that agreement had come to an end. I therefore need say no more about it. 57.I turn now to the evidence. Michael Senior and Mr Aitchison each gave written evidence in line with the pleaded cases of the Claimant and the Defendants respectively. Each was cross-examined (as I have said, skilfully) and did not shift meaningfully from their respective pleaded position. 58.Under cross-examination, Michael Senior maintained his position that he had agreed with Mr Aitchison that the First Defendant could keep using CORMETON ELECTRONICS LIMITED “without using any of the logos, Cormeton on its own [or] with the Flaming O [Device]”. He further said: “[Mr Aitchison] asked me if he could continue using the name Cormeton Electronics Limited and I said yes, but there was no mention of using the logos or the Flaming O [Device], that was not in the conversation”. He accepted that he did nothing between 2003 and 2015 to prevent uses by the First Defendant with which he (on behalf of the Claimant) was unhappy. 59.Mrs Warburton was slightly clearer. She accepted in terms that, after separation, “both parties traded in substantially the same way as they did before separation”. Mrs Warburton said she had never seen the First Defendant’s website. She stated that the Claimant traded as “Cormeton Fire Protection” and the First Defendant traded as “Cormeton Electronics”. 60.There was also a controversy over several emails sent by Mrs Warburton to Mr Rush. That controversy went no-where, but I must address it briefly. At the time of the email exchanges (2015 and 2016), Mrs Warburton and Mr Rush were what she described as “good friends”. On 31 March 2015, Mrs Warburton emailed Mr Rush in relation to an approach to quote for electronic fire protection required for the student accommodation at Leeds Trinity University. Mrs Warburton identified the email she had received as being meant for the First Defendant. She forwarded the email chain to Mr Rush, noting: “I know it was one of the worst mistakes [Michael Senior] made by allowing logo and name to be carried on. Do you think [Mr Aitchison] would consider having your correct name for your web site? Cormeton Electronics instead of Cormeton Fire?” 61.A further email followed where Mr Rush had received an enquiry meant for the Claimant, and passed it on to Mrs Warburton. Mrs Warburton responded to Mr Rush: “Worst thing we did allowing [Mr Aitchison] to continue using “Cormeton” name. More confusion than ever with our customers due to the web address & emailing. We get at least 2-3 phone calls a day for Electronics”. 62.In addition, Mr Rush said that he had had a number of conversations with Mrs Warburton where she had raised incidents of confusion, saying “[Mrs Warburton] would often ask me to speak to [Mr] Aitchison and see whether we would consider changing our name or using an abbreviation of the name or something because [Michael Senior] wishes he had never allowed us to continue using the name and logo.” Mrs Warburton’s second witness statement denied that she had had “many” conversations with Mr Rush. She also denied that the interpretation Mr Rush put on the emails in his written testimony was the correct one: she said Mr Rush “is implying things from my emails that simply are not there”. 63.Mrs Warburton was not asked in cross-examination about the emails, or about the conversations with Mr Rush – I therefore accept what she said in her witness statements about both topics. That is, I accept that the reference in those emails to CORMETON is a reference to use of CORMETON as part of CORMETON ELECTRONICS, and is not a suggestion that the Claimant had in 2003 or by 2015 consented to the First Defendant’s use of CORMETON on its own. Put another way, Mrs Warburton’s emails are to be understood as consistent with her other evidence that the 2003 agreement was that the First Defendant could not use CORMETON on its own. I cannot find in Mrs Warburton’s email any admission that the Claimant had, in 2003 or prior to 2015, consented to the First Defendant’s use of CORMETON on its own. Nor can I glean that from Mr Rush’s written or oral testimony. I understand the emails to record that, with the benefit of hindsight, Michael Senior on behalf of the Claimant considered that he ought to have made the First Defendant rebrand in 2003 to a name which did not include CORMETON: Michael Senior accepted as much in cross-examination. The emails say no more than that. 64.Mr Aitchison’s oral evidence was in line with his written evidence. He denied that the First Claimant was to be restricted to using its full name (including Limited). He said that the First Defendant largely traded as CORMETON ELECTRONICS following 2003, but that in 2016, uses of CORMETON on its own increased, including, for example, on the First Defendant’s vans. Similarly, the website at the Domain Name mostly referred to CORMETON ELECTRONICS or the full corporate name of the First Defendant, but in 2016 started to use CORMETON on its own. Mr Aitchison was also asked about his claim in his witness statement that “hundreds” of documents sent by the First Defendant to the Claimant used just CORMETON. There were before the Court approximately five documents that fell within that category – no more had been disclosed by either side. Mr Aitchison refused to accept that there were not “hundreds” – he felt that they must have been destroyed as part of a data purge to create storage space. 65.As I have already said, all witnesses were attempting to give their evidence honestly on this point – I do not consider that any of them set out to mislead the Court. However, their versions of events differ, and they cannot all be right. 66.Counsel for the Claimant submitted that Michael Senior’s account was “by far the more likely”. Recognising that the companies would be going their separate ways, he submitted, there would be no reason to permit the First Defendant to continue to use CORMETON without qualification. He submitted that it was much more likely that the First Defendant was only entitled to use CORMETON as part of CORMETON ELECTRONICS LIMITED so as to distinguish it from the Claimant’s business. 67.In my judgment, it is most likely that the agreement reached (orally, as I have found) was that the First Defendant’s use of CORMETON could continue as before. The Claimant, as the original owner of the CORMETON name, agreed to the First Defendant continuing to use the CORMETON name as it had been when collocated at Seaton Delaval. This included the ability to use CORMETON ELECTRONICS. I consider it extremely unlikely that the agreement reached was that the First Defendant could only use CORMETON ELECTRONICS LIMITED – this flies in the face of both common business practice (which is to leave off the LIMITED except in formal business papers), and also what then happened, without complaint from the Claimant, for a further 12 or so years. 68.In relation to CORMETON on its own, Michael Senior described it as an “umbrella” brand, under which both the Claimant and the First Defendant traded between 1989 and 2003. Michael Senior gave oral testimony as follows: “I assumed that when [Mr Aitchison] left from under the umbrella of Cormeton, he would continue to use Cormeton Electronics Limited as his name without using … Cormeton on its own …”. I accept this evidence, again, because it is the only position consistent with common business practice and with what then happened for the next 12 or so years. Michael Senior had seen the First Defendant’s business grow, including because it now required new premises. He was aware that the supply and sale of electrical safety equipment was more profitable than the mechanical fire protection business. He was also aware by 2003 that there had already been examples of consumers confusing the Claimant and the First Defendant. He must therefore have been aware of the risk of “swamping” (although he may not have called it that) had he allowed the First Defendant to trade as only CORMETON, without the qualifier ELECTRONICS. Further, this is what in fact happened. I was taken to a small number of documents (as I have said, approximately 5) which counsel for the Defendant suggested prove that the First Defendant continued to use CORMETON on its own after it stepped out from under the umbrella brand in 2003. I do not accept that is what those documents do, because each also includes uses of CORMETON ELECTRONICS. Further, and more importantly, Mr Aitchison accepted in crossexamination that he had used CORMETON ELECTRONICS from 2003 until about 2016, when uses of CORMETON on its own increased. At that point, the relationship between the Claimant and the First Defendant had already broken down. I therefore do not consider that the First Defendant’s uses after 2016 tell me anything about what was agreed in 2003. 69.In relation to the Domain Name, Michael Senior agreed in cross-examination that the Claimant had agreed that the First Defendant could set up the Domain Name in May 1998. The Claimant was also aware that the First Defendant continued to use the Domain Name following the First Defendant’s relocation in 2003. Michael Senior mentioned in cross-examination that he was “certainly not happy with it” after 2003. However, he accepted both that the Claimant had no right to require the First Defendant to cease using the Domain Name, and that in fact the Claimant never objected to the First Defendant’s use of the Domain Name. No request was made for it to be abandoned or transferred to the Claimant, and no attempt was made through the Nominet dispute resolution process to have the domain name transferred to the Claimant. Rather, he said that it “would have been the honourable thing to do to change it when we separated”. 70.Michael Senior said that he is not very technologically savvy: he did not have a computer in his office, and so was not aware of what the website at the Domain Name looked like from time to time in the period from its setting up until after 2003. Even so, he accepted he was aware of the use of the Domain Name from 1998, and continuing after 2003. As I have said, he said he was “not happy with it”. But he did not take any action. Rather, in 2010, the Claimant set up its own domain name. It is inconceivable that, by that time, if the Claimant considered that the First Defendant should not have been using the domain name, it did not take steps to stop the First Defendant from so doing. In my judgment, in agreeing to “carry on as we were”, the Claimant agreed to the First Defendant continuing to use the Domain Name. 71.Both sides were agreed that from 2003 to 2015, they proceeded amicably. They were in frequent contact – and any difficulties which arose, such as customer confusion or misdirected payments, were sorted out. During this time, the Claimant largely kept to a mechanical fire safety business, and the First Defendant largely kept to the supply and sale of electrical safety equipment, sub-contracting to each other as necessary. The Claimant referred work to the First Defendant, and vice versa. This supports the position now accepted by both sides that the First Defendant would operate only in the supply and sale of electrical safety equipment. 72.Therefore, in my judgment, the oral agreement between the Claimant and the First Defendant in 2003 included (relevantly) the following terms: i)The First Defendant could continue to trade under CORMETON ELECTRONICS and CORMETON ELECTRONICS LIMITED; ii)The First Defendant could continue to use the Domain Name; and iii)The First Defendant would not trade under CORMETON, CORMETON ELECTRONICS or CORMETON ELECTRONICS LIMITED in relation to mechanical fire protection goods and services – rather it would only trade in the supply and sale of electrical safety equipment. 73.Prior to the hand-down of this judgment, a draft was distributed to the parties in the usual way. Counsel for the Defendants provided me with written submissions (to which Counsel for the Claimant responded in writing) urging me also to find that the agreement in 2003 included an additional term – that the Claimant would not offer under a name including CORMETON the supply and sale of electrical safety equipment. I had not included such a finding in my draft judgment because it was not necessary for me to do so to reach the conclusions I was asked to reach (see paragraph 13 above). However counsel for the Defendants submitted that, given the need for commercial certainty, I should have stated in my findings of fact all the material terms of the 2003 agreement. Alternatively, he submitted that I should have found that the correct term of the agreement was that the parties were each limited to their respective fields in 2003. 74.Counsel for the Claimant responded that that was not a finding open to me, because (a) there was no counterclaim to enforce any terms which placed any obligations on the Claimant; (b) the matter before the court was the scope of the licence granted by the Claimant to the First Defendant; (c) it was not part of the Defendants’ pleaded case that the agreement contained any reciprocal provisions; and (d) it was the Defendants’ case that any obligations beyond the licence from the Claimant to the First Defendant had been terminated. 75.As set out above, I had not included such a finding because it does not assist me in determining the issues before me: there was no counterclaim for any relief of that nature (including, for example, a declaration that those were the terms of the contract). I am mindful that the term was included in the Defendants’ pleaded position: as I have discussed at paragraph 54 above, the Defendants’ position was set out in the Defence and Counterclaim. But no remedy was or is sought. I am also mindful that the parties agreed a list of issues (set out at paragraph 11 above) that was then attached to an order of the Court: that list includes: “What was agreed between the parties when they ceased working together in 2003?”. That question was also included in counsel for the Claimant’s written skeleton argument, and he addressed me on it, and the Defendants’ position, in closing. 76.Had the Defendants sought a declaration as part of their Counterclaim, things might have been different. In the IPEC, such specificity is required. To determine the case before me, it is not necessary for me to address the obligations which the Defendants say were placed on the Claimant. 77.If I am wrong in that, then I would have had no hesitation in concluding that it was a term agreed in 2003 that the Claimant would not trade in the supply and sale of electrical safety equipment. As I have set out, it was Mrs Warburton’s evidence that Michael Senior and Mr Aitchison agreed that the Claimant and First Defendant would, after 2003, keep trading as they had been. It was Michael Senior’s evidence “that each company would not encroach on to the specialist area of the other (so [the Claimant] would not do electronics work, and [the First Defendant] would not do fire protection work.)” Mr Aitchison said the same thing. And that is what then happened for over a decade. I therefore am satisfied that it was a term of the oral agreement in 2003 that the Claimant would not trade under the name CORMETON in relation to the supply and sale of electrical safety equipment. 78.It therefore follows from my conclusions at paragraph 72 above that the bulk of the First Defendant’s business (that is, the supply and sale of electrical safety equipment carried out under CORMETON ELECTRONICS and the use of the Domain Name) is being carried out pursuant to the licence granted by the Claimant in 2003. The Claimant, through the evidence of Michael Senior, accepts that it cannot unilaterally withdraw that licence. That means that, in relation to that activity, the Defendants’ case in relation to honest concurrent use, estoppel, acquiescence and invalidity of the Mark does not arise. It may continue to trade under the licence granted in 2003. But I need to address the trade mark infringement and passing off case in relation to those aspects of the First Defendant’s business that fall outside the licence – that is, use of CORMETON on its own, and use of the Signs and the CE Sign in relation to the mechanical fire protection goods and services. In doing so, I also need to address the “defences” raised by the Defendants: invalidity of the Mark, revocation of the Mark, honest concurrent use, estoppel and acquiescence. Prior to considering infringement, I turn to the issue of the validity of the Mark.