Case No. EWHC-3296-(IPEC)

Claim No. IL-2020-LIV-000001 Judgment handed down by email Before: MR NICHOLAS CADDICK Q.C.(sitting as a Deputy High Court Judge) B E T W E E N: EQUISAFETY LIMITED Claimant -and- BATTLE, HAYWARD AND BOWER, LIMITED RICHARD MICHAEL DEWEY Defendants DANIEL SELMI (instructed by Bermans ) for the Claimant SAM CARTER (instructed by Sills & Betteridge LLP) for the Defendants Hearing date: 20 th October 2021 JUDGMENT Nicholas Caddick Q.C. (sitting as a Deputy High Court Judge): Introduction 1. This is an action for infringement of a UK registered trade mark and for passing off. It concerns the mark “mercury” used in relation to certain high visibility equestrian products. 2. The Claimant company (“Equisafety”) designs, manufactures and sells high visibility products which help promote the safety of horses and their riders when on the road. Its case is that, in around February 2015, it started selling a high visibility jacket under the mark “mercury” and that, shortly afterwards, it expanded its use of that mark to high visibility rugs for horses and dogs and high visibility leg boots for horses. It says that, as a result of its activities, it acquired goodwill in the mark. 3. The First Defendant (“Battle”) is involved in the manufacture and sale of (inter alia) equestrian products. It sells predominantly to trade customers (its stockists) through its websites at www.battles.co.uk and www.hy-equestrian.com. Non-trade customers can also look at those websites to identify stockists from whom they can acquire Battle’s products. The stockists themselves may also advertise Battle's products which they are looking to sell on. 4. At some point, Battle started selling various products (a mobile phone holder, a gilet and a jacket) under the label “HyVIZ Silva Mercury Reflective” (the “HVSMR” label). For present purposes, the precise date when this happened is not particularly material, although the documents suggest that it was in late 2018 rather than in February 2019, as suggested in Battle’s Skeleton Argument for the trial. Battle’s activities came to Equisafety’s attention at some point in 2019 (again, the precise date is not material) and, on 6 June, Ms Fletcher emailed Battle demanding that it stop such use. On the following day, 7 June 2019, Equisafety applied to register the word “mercury” as a UK trade mark. The registration was duly made on 25 October 2019 as trade mark No. 3405069 in respect of the following goods: “Class 9 Helmets for bicycles;Helmets (Protective -);Helmets (Protective -) for sports;Helmets (Riding -);Protection devices for personal use against accidents;Protection helmets for sports;Protection masks;Protective caps for cameras;Protective clothing;Protective clothing [body armour];Protective eyeglasses;Protective eyewear;Protective face-shields for protective helmets;Protective headgear;Protective headgear for the prevention of accident or injury;Protective helmets;Protective helmets for sports;Protective work clothing [for protection against accident or injury];Reflecting strips for wear;Reflective clothing for the prevention of accidents;Riding hats;Riding helmets;Safety clothing for protection against accident or injury; Safety gloves for protection against accident or injury;Safety goggles;Safety headgear;Security cameras;Ski clothing for protection against injury;Sports eyewear;Sports (Protective helmets for -);Fences (Electrified -); none of the aforesaid goods being footwear. Class 18 All equine, Leg boots, exercise rugs, tail guards, neck bands, nose bands. Class 25 Clothing excluding footwear.” 5. Battle did not respond to Ms Fletcher’s email of 6 June or to her subsequent communications of 12 June and 19 June 2019. Instead, as appears from a screenshot of its website taken on 9 th September 2019, it continued to sell equestrian products under the HVSMR label and, indeed, to expand the range of such products to include a bridle, hat band, leg band and tail band. 6. Having become aware of this, Ms Fletcher issued proceedings on 30 October 2019. She did so initially in her own name and in the small claims court. In March 2020, the case was transferred to the Intellectual Property Enterprise Court and the Claim Form was amended to substitute Equisafety as the claimant. Its claim is that Battle’s activities amounted to passing off and, insofar as they occurred after 7 June 2019, to infringements of the Mercury trade mark under each of s.10(1), 10(2) and 10(3) of the Trade Marks Act 1994. The Defendants deny this and counterclaim for a declaration that the mark is invalid under s.47(1) of the Trade Marks Act 1994 because it had been registered in breach of s.3(1)(b), s.3(1)(c), s.3(1)(d) and/or s.3(6) of that Act (i.e. that the word “Mercury” was devoid of distinctiveness, was descriptive, had become customary and/or had been registered in bad faith). 7. Battle says that it has ceased using the word “mercury” and, indeed, in its Amended Defence has provided undertakings to this effect. However, as it did not admit liability for its past acts and as Equisafety points to some subsequent instances of use of the HVSMR label, the action has continued. 8. The Second Defendant (“Mr Dewey”) is Battle’s managing director and a shareholder in it. There is an issue, to which I will return, as to the extent to which he controls its activities and, in particular, whether he is liable as a joint tortfeasor in respect of the activities about which complaint is made in this action.