Case No. IP-2020-000081

in respect of s.10(2) 85.The Defendants have not infringed the Trade Mark pursuant to s.10(2) Trade Mark Infringement – section 10(3) The law on s.10(3) generally 86.The necessary elements of a claim of infringement under s.10(3) of the 1994 Act were set out by Arnold J in W3 Limited v Easygroup Limited [2018] EWHC 7 (Ch).:“[290] Accordingly, in order to establish infringement under Article 9(1)(c) of the Regulation, nine conditions must be satisfied: (i) the trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party within the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor of the trade mark; (v) it must be of a sign which is at least similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a ‘link’ between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.”87.The points in dispute in the present case concerned (1) the reputation of the Trade Mark, (2) a link between UEPM’s sign and the Trade Mark, (3) unfair advantage being taken of the distinctive character of the Trade Mark, (4) detriment to the distinctive character of the Trade Mark, (5) due cause.88.No separate argument was advanced by the Claimants in relation to the repute of the trade mark. Reputation – the law 89.The law on reputation within the meaning of s.10(3) was considered by Fancourt J in Sazerac Brands, LLC v Liverpool Gin Distillery Limited [2020] EWHC 2424 (Ch) (upheld on appeal [2021] EWCA Civ 1207; the case under s.10(3) was not considered by the Court of Appeal):“[38] The question is likely to arise and be important in a case where the market is very broad but the trade mark has only had local exposure. This is exemplified by Waseem Ghias t/a GRILLER v Ikram t/a THE GRILLER ORIGINAL [2012] EWPCC 3, in which the market for fast food restaurants was huge and the turnover for the claimant's franchise in London and Essex was ‘miniscule’ in comparison (just over £1 million); and by Burgerista Operations GmbH v Burgista Bros Ltd [2018] EWHC 35 (IPEC), in which the claimant had only 6 restaurants in Austria and one in Germany at the relevant date, albeit with turnover amounting to €9,250,000 and over 865,000 individual transactions. The brand was however only known locally, not throughout Austria, and the proportion of the burger fast food business in the EU was considered to be ‘very small indeed’. Although the claimant had a reputation of some kind, it did not have a reputation within the meaning of art. 9(2)(c).[39] Where on the other hand only a small sector of the public is concerned by the goods in question and the goods are marketed and consumed nationally, rather than locally, there may more readily be seen to be a reputation in the trade mark if there has been a sufficiently long history of sales or substantial promotion of the brand. Whether a trade mark has a reputation in that sense must be assessed by close reference to the facts, having regard to the market share of the brand, the intensity, geographical extent and duration of its use and the size of the investment made by the owner in marketing it: PAGO International GmbH v Tirolmilch Registrierte Genossenschaft mbH (C-301/07) [2010] ETMR 5 at [25].”90.The reputation of a trade mark is to be assessed as of the date on which the alleged infringer first started to trade under the accused sign, see the discussion in Burgerista Operations GmbH v Burgista Bros Ltd [2018] EWHC 35 (IPEC), at [54]-[59]. In this case that is March 2018. Reputation – this case 91.The Claimants’ trading under the Trade Mark began in Manchester, then expanded to Preston, Leeds and Liverpool. Mr Howard gave unchallenged evidence that in the years 2014 to 2017 the turnover of the Claimants trading under the Trade Mark rose from £1,040,947 to £2,234,909. He cited several awards received by the Claimants in recognition of what he described was their position as a market leader in block management. About £450,000 has been spent on marketing and advertising since 2014. In cross-examination Mr Howard said that by 2017 the Claimants managed 950 homes in Liverpool.92.Mr Tumilty accepted that the Claimants were regarded as an experienced property management company.93.This is a case concerned with a small sector of the public, namely those conforming to the two categories of average consumer discussed above. The evidence did not establish a reputation of any significance outside the North West of England and West Yorkshire but I am satisfied that this was sufficient evidence of reputation within the UK. Link 94.It was common ground that a link is established if the accused sign brings to mind the trade mark in suit. Given the evidence of confusion discussed above, a link in the mind of the average consumer has been established. Unfair Advantage – the law 95.In L’Oréal SA v Bellure NV (Case C-487/07) EU:C:2009:378, the Court of Justice of the European Union said:“[41] As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.…[49] In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.” Unfair Advantage – this case 96.The Claimants’ argument was that when UEPM began to trade in March 2018 it was aware of the Claimants’ reputation and chose a name which included “Urban” in order to profit from the reputation. The emails from Mr Whyte and possibly that from Dr Marar indicate that there would have been no advantage to UEPM in a perceived association with the Claimants. Likewise the 25-30 phone calls received by El Paraiso. There was no evidence beyond assertion that there would have been any such advantage. The allegation of unfair advantage was not made out. Detriment to the Distinctive Character of the Mark – the law 97.In Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41, Kitchin LJ said:“[113] The Court of Justice explained what is meant by detriment to the distinctive character of a mark in Intel [2009] R.P.C. 15 at [29]:‘As regards, in particular, detriment to the distinctive character of the earlier mark, also referred to as “dilution”, “whittling away” or “blurring”, such detriment is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is notably the case when the earlier mark, which used to arouse immediate association with the goods and services for which it is registered, is no longer capable of doing so.’[114] The Court then went on (at [72]–[76]) to explain how such injury might be established. In summary, it is not necessary for the earlier mark to be unique, although the more “unique” it appears, the greater the likelihood that a later identical or similar mark will be detrimental to its distinctive character; secondly, the use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future; and thirdly, detriment to the distinctive character of the earlier mark is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened. There followed at [77] this important explanation of what is needed by way of proof:‘[77] It follows that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future.’[115] Then, at [78], the Court emphasised that it is immaterial for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.[116] The need for evidence of a change in the economic behaviour of the average consumer, or a real likelihood that such a change will occur in the future, was considered by the Court of Justice once again in Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (C-383/12) EU:C:2013:741, given on 14 November 2013 at [34]–[43] in considering the similar provisions in Regulation 207/2009. The Court said this:‘[34] According to the Court’s case-law, proof that the use of the later mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (Intel Corp , paragraphs 77 and 81, and also paragraph 6 of the operative part of the judgment).[35] Admittedly, paragraph 77 of the Intel Corp judgment, which begins with the words “[i]t follows that”, immediately follows the assessment of the weakening of the ability to identify and the dispersion of the identity of the earlier mark; it could thus be considered to be merely an explanation of the previous paragraph. However, the same wording, reproduced in paragraph 81 and in the operative part of that judgment, is autonomous. The fact that it appears in the operative part of the judgment makes its importance clear.[36] The wording of the above case-law is explicit. It follows that, without adducing evidence that the condition is met, the detriment or the risk of detriment to the distinctive character of the earlier mark provided for in Article 8(5) of Regulation No 207/2009 cannot be established.’[117] A little later, it continued:‘[42] Admittedly, Regulation No 207/2009 and the Court’s case-law do not require evidence to be adduced of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions.[43] None the less, such deductions must not be the result of mere suppositions but, as the General Court itself noted at paragraph 52 of the judgment under appeal, in citing an earlier judgment of the General Court, must be founded on “an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case”.’[118] Here the Court of Justice has explained that a serious risk of detriment may be established by deduction, but any such deduction cannot be supposition and must instead be founded properly on all the circumstances of the case and the nature of the trade in issue.” Detriment to the Distinctive Character of the Mark – this case 98.There was no evidence provided by the Claimants establishing a change in the economic behaviour of the average consumer consequent upon the use of UEPM’s Urban Evolution sign, whether direct evidence or by the use of logical deductions. The Claimants pointed to five reviews of UEPM posted online which gave UEPM one star (the minimum). I take the view that this is insufficient and went no further than what the CJEU described as “mere suppositions”.99.Lacking too was evidence from the Claimants that once UEPM started to trade, such trading under the Urban Evolution sign (as opposed to other matters) caused customers to stop dealing with the Claimants or otherwise to behave economically in a manner detrimental to the Claimants. Without Due Cause 100.Since the Claimants have not shown that the use of UEPM’s sign either took unfair advantage of, or was detrimental to, the distinctive character of the Trade Mark, I need not consider whether either would have been without due cause. However, I would add that if the Defendants’ case on consent is made out, in my view that would qualify as due cause. Conclusion in respect of s.10(3) 101.The Defendants have not infringed the Trade Mark pursuant to s.10(3) Passing Off 102.The Claimants’ case in passing off was based on the usual three requirements: establishing goodwill, a misrepresentation by UEPM through the use of its Urban Evolution sign and consequent damage to the Claimants. There was no attempt or need to pin down whether any goodwill was owned by one or other of the Claimants so I will continue to refer to them collectively.103.I am satisfied by the evidence I have referred to in relation to the Claimants’ reputation, in the context of s.10(3) of the 1994 Act, that at the relevant date the Claimants owned goodwill in their business which was associated with the trading name Urbanbubble. The relevant date is the same, see Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2015] UKSC 31, at [16].104.I take the view that the evidence discussed above in relation to the likelihood of confusion under s.10(2) of the 1994 Act does not support the Claimants’ case that use of the Urban Evolution sign constituted a misrepresentation on the part of UEPM. Applying the test relevant to passing off, the evidence indicates that at most, members of the relevant public thought that there was a likely possibility of a connection between the Claimants and UEPM, but this never coalesced into a fully-formed belief or assumption. It was common ground that the relevant public were investors and developers of the type who fell into one or other category of average consumer discussed above. The view of many members of the relevant public did not even go that far.105.The circumstance of UEPM taking over the same role as property manager in the same building on the instruction of the same developer was an important factor in the view taken by Mr Whyte and Mr Peirson of a likely possibility of a connection in the course of trade.106.There was a pleaded case of deliberate passing off on the part of UEPM but this was not put to the Defendants’ witnesses and was not pursued in closing.107.Since there was no misrepresentation, there can have been no damage. The Claimants’ case of passing off does not succeed. Further defences 108.Notwithstanding the foregoing conclusions on trade mark infringement and passing off, I will discuss the defences of consent and estoppel argued by the parties. Consent The Law 109.The leading judgment of the CJEU on implied consent to the use of a trade mark is Zino Davidoff SA v A&G Imports Ltd (Joined Cases C-414/99, C-415/99 and C-416/99) EU:C:2001:617. The Court was dealing with a referred question about the exhaustion of rights in relation to goods placed on the market in the EEA and thus primarily art.7 of Directive 89/104/EEC. The equivalent of art.7 is s.12 of the 1994 Act, as amended by The Intellectual Property (Exhaustion of Rights) (EU Exit) Regulations 2019. Neither art.7 nor s.12 is concerned with service marks.110.The Defendants in the present case rely instead on the absence of consent as an essential ingredient of infringement, see s.9 of the 1994 Act:“Rights conferred by registered trade mark9. (1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.”111.The equivalent provision in Directive 89/104/EEC was found in art.5. The CJEU was clear in Davidoff that the concept of consent was same in arts.5 and 7:“[40] Article 5 of the Directive confers on the trade mark proprietor exclusive rights entitling him, inter alia, to prevent all third parties ‘not having his consent’ from importing goods bearing the mark. Article 7(1) contains an exception to that rule in that it provides that the trade mark proprietor’s rights are exhausted where goods have been put on the market in the EEA by the proprietor or ‘with his consent’.[41] It therefore appears that consent, which is tantamount to the proprietor's renunciation of his exclusive right under Article 5 of the Directive to prevent all third parties from importing goods bearing his trade mark, constitutes the decisive factor in the extinction of that right.”112.The Court then explained the concept:“ [45] In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated.[46] Such intention will normally be gathered from an express statement of consent. Nevertheless, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights.…[53] It follows … that consent must be expressed positively and that the factors taken into consideration in finding implied consent must unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights.[54] It follows that it is for the trader alleging consent to prove it and not for the trade mark proprietor to demonstrate its absence.[55] Consequently, implied consent to the marketing within the EEA of goods put on the market outside that area cannot be inferred from the mere silence of the trade mark proprietor.”113.Thus, if consent is to be implied the court must be satisfied that the relevant facts and circumstances unequivocally demonstrate that the trade mark proprietor has renounced any intention to enforce his exclusive rights conferred by the mark.114.Counsel for the Defendants made the point that it is the demonstration which must be unequivocal, not the consent. It is not necessary that the trade mark proprietor gives unequivocal – in the sense of unqualified – consent. For instance, an unequivocal demonstration by the trade mark proprietor that he consents to the use of his mark provided it is never used in green would establish consent within the meaning of art.5, albeit qualified consent.115.The burden of proof is the usual one: the alleged infringer must show on the balance of probabilities that the relevant facts and circumstances unequivocally demonstrate consent, see Dalsouple Société Saumuroise du Caoutchouc v Dalsouple Direct Ltd [2014] 3963 (Ch), at [39].116.In Mastercigars Direct Ltd v Hunters & Frankau Ltd [2007] EWCA Civ 176, Jacob LJ considered the facts and put his conclusion this way (original italics):“[50] … But in the end, … one reaches the position that HAS, by its conduct, is shown to have consented unequivocally to the trickle of small but commercial consignments going on the market in Europe by way of local purchase in Cuba for export. The acts taken together are consistent only with such consent.”117.The language in Davidoff of unequivocal demonstration on the facts indicates, as one would expect, that this is an objective assessment of consent, not an assessment of subjective consent.118.Therefore where consent is said to have been communicated principally by words, the issue is whether on the balance of probability the words would have unequivocally demonstrated to a reasonable person in the place of the addressee a renunciation by the trade mark proprietor of his exclusive rights in the trade mark. The conduct of the proprietor and other circumstances may, where relevant, influence what would have been demonstrated by the words.119.Counsel for the Claimants drew my attention to this proposition accepted by the Court of Appeal in Mastercigars at [16(iii)]:“for there to be consent within the meaning of Art.7(1) such consent must relate to each individual item of the product in respect of which exhaustion of rights is pleaded;”120.I assume that this proposition was taken from the judgment of the CJEU in Sebago Inc v GB Unic SA (Case C-173/98) EU:C:1999:347.121.Although both Sebago and Mastercigars were addressing the exhaustion of rights under art.7(1) or equivalent in respect of goods, I see no reason why the same principle should not apply to consent within the meaning of s.9 of the 1994 Act in relation to services. It may not be so easy to identify the extent of consent to the use of a trade mark in relation to services but in my view the alleged infringer must prove that any unequivocal demonstration of consent extended to the use in issue.122.I should point out that termination of the Claimants’ consent, if it were established, formed no part of the Claimants’ pleaded or argued case.123.Finally, Counsel for the Claimants referred to Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch). The claimant (“Marussia”) was the owner of the trade mark MARUSSIA. It alleged infringement by the defendant, a “minnow” Formula One team, which had formerly used the Marussia name for its chassis before the team changed hands. A defence advanced was that Marussia’s consent to use of its name was to be implied. This was because Marussia knew that the defendant intended to use the same chassis, under the rules the defendant’s team name had to include the chassis name and it was unlikely that the defendant could obtain the agreement of the organiser of Formula One, Bernie Ecclestone, to a change in the name of the chassis. A representative of the defendant, Mr Fitzgerald, had spoken to Mr Ecclestone. Counsel drew my attention to this sentence from the judgment of Males J at paragraph 70:“For all Marussia knew, Mr Fitzpatrick had already satisfied himself that the defendant would be permitted to change its chassis name for the 2015 season so as to drop any use of the word ‘Marussia’ or the claimant’s trade mark. Far from demonstrating unequivocally a renunciation of rights by the claimant, the circumstances were consistent with confidence on the part of the defendant that it had no need of the claimant’s trade mark.”124.Counsel highlighted the second sentence and submitted that it underscored a rule of law that if the alleged infringer is of the view that he does not need consent from the trade mark proprietor, there can have been no consent.125.I reject that submission. First, I do not believe that Males J was intending to advance any rule of law. Secondly, the facts in Marussia are not consistent with the proposition advanced. The important point was not the defendant’s understanding of whether it needed to use the trade mark, but the proprietor’s relevant understanding. The passage quoted from the judgment above shows that the latter was indicative of the former but that is by the way. The real point was that Marussia did not know whether or not Mr Ecclestone had given permission to the defendant to change the chassis name and therefore could not have known whether the defendant was obliged under the rules to use “Marussia” as part of its team name. This is apparent from a later passage of the judgment:“[73] … As already noted, for all Marussia knew Mr Fitzpatrick had already secured Mr Ecclestone’s agreement to a change of chassis name. The defendant does not suggest that Mr Fitzpatrick or his team ever said anything to suggest that they had not done so or (if they had not) that they anticipated any difficulty in doing so. … Even if obtaining Mr Ecclestone’s consent was ‘unlikely’, unlikely things do often happen. People who are known to be resistant to a course of action or cautious about making a decision are sometimes persuaded to do so.[74] For this fundamental reason, therefore, the defence of consent must fail. There is no basis on which to conclude that the claimant was unequivocally renouncing rights when it had no reason to think that those rights would be infringed.”126.Thirdly, the Claimants’ proposition of law makes little sense. An alleged infringer of a trade mark may have believed that he did not require the consent of the proprietor and yet the proprietor may have unequivocally demonstrated his consent to the use of the mark. In such circumstances the alleged infringer would benefit from the consent even though he did not realise at the time that he needed it. This case 127.On 27 March 2018 Ms Caffery sent an email to Mr Tumilty which included this:“I saw your Linkedin post stating that you had opened a new company Urban Evolution, when we looked at the website, we were shocked at how similar the logo and font of the logo looked to our own.Mick has requested that the logo be changed so that it is in no way similar to ours by 12:00 Tuesday 3rd April, otherwise he will get the solicitors involved.”128.On the same day Ross Spencer, a director of UEPM, phoned Mr Howard. Mr Howard then emailed Ms Caffery and others employed by the Claimants (original asterisk):“Just to follow up, Ross has called to explain or understand.I have said to him what I have just emailed. Misunderstanding and no foul play there side (which I believe as I think Sam is an integral guy) but they have f*cked up in just not talking to us and checking their new logo was OK as close to ours.Laura – Ross is coming to see you. Ceasation of work stops until web down, logo changes (keep urbanevolution if they want but not that font) and we’re happy with it being different. …I expect this is no more than a faux pas and once above done, we can put the episode behind us and move in.”129.On the same day Mr Tumilty also spoke to Mr Howard by phone. I will return to the accounts given by each of them of what was said.130.It is not in dispute that by 29 March 2018 the New Logo had been created for UEPM and that its website had been updated, replacing the Old Logo.131.There were further discussions between Mr Tumilty and either Ms Caffery or Mr Howard, all apparently by phone. On 12 April 2018 Mr Howard sent this email to Mr Tumilty:“Regarding the logo issue.Just before Laura went on annual leave, I informed her that matters had been resolved and that business was to return to normal between UB and LCR. I am aware that she communicated this to you however, apart from a very brief call between you and I just after Laura left, the matter has not been touched up on and so, as I have said previously, I would like you to meet with Laura, for coffee or whatever, and to clear the air, in-order that operations can continue to run smoothly in Liverpool.I agree that your logo has now been changed as per my request and it is time to move on.Goodluck with your new venture Sam, it has my blessing however, I would say that I think it will be a good few years before you’re in the big league and I certainly wouldn’t go pitching to Elliot, he knows better than to place those kind of contracts with small fry who are a day old, you will only embarrass yourself, best left to the big boys.”132.On 2 May 2018 Mr Tumilty sent an email to Ms Caffery:“We have been asked by Elliot to manage the commercial units underneath the Artesian, th[r]ough Urban Evolution. I just wanted to check, out of courtesy, that you guys would not have any objections to this?”133.Ms Caffery replied on the same day:“I have checked with Menno [De Vree], we do not deal with commercial lets and so that’s fine.”134.I stated earlier in this judgment that in deciding whether consent was given by the Claimants I would be guided principally by the contemporaneous written evidence. Ms Caffery’s email of 27 March 2018 shows that she had a real concern about UEPM’s website. She must have seen from the website that UEPM was using the “Urban Evolution” trading name yet her concern was limited to the logo.135.In cross-examination Mr Howard was evasive about seeing UEPM’s website at this time, but in the end admitted that he had seen it. His email of 27 March 2018 shows that he too was concerned only with UEPM’s logo and he expressly stated that subject to a change in the font of the logo, he was content for UEPM to use the “Urban Evolution” name. That email was not communicated to UEPM but it is relevant to the likely content of phone conversations between Mr Howard and Mr Tumilty.136.The email from Mr Howard of 12 April 2018 would have given any reasonable person in the place of Mr Tumilty the belief that Mr Howard had seen the changes to UEPM’s website and in particular the logo, that he was content with those changes and had no further objections to UEPM’s trading style, in particular its use of the trading name “Urban Evolution”.137.It was suggested in closing that Mr Tumilty’s email of 2 May 2018 shows that UEPM realised it required permission from the Claimants. I do not agree. Mr Tumilty was clear in his evidence that he wanted to maintain good relations with the Claimants and his courtesy email is more consistent with that than with a need for permission. The email expressly states that “Urban Evolution” would be managing units under the Artesian building.138.In my view, if the emails were the only evidence, they indicate that the Claimants had unequivocally demonstrated their consent to the use of the name “Urban Evolution” and that the consent was not limited in time.139.There remains the evidence from Mr Howard and Mr Tumilty regarding their phone conversation on 27 March 2018. According to Mr Howard, Mr Tumilty said that UEPM had been set up to handle existing clients of LCR only and that it would not take over the block management of properties owned by Elliot. Mr Howard maintained this account of events in cross-examination, adding, for the first time, that he also insisted that the UEPM website should be changed beyond amending the logo. It was made clear by Mr Wakefield that no change was made to the website aside from the logo. Mr Howard’s new point is therefore difficult to reconcile with his email of 12 April 2018.140.Mr Tumilty’s recollection of the conversation was that Mr Howard wanted to know more about UEPM and that the only objection to its trading he raised was in relation to the logo. UEPM’s trading name was never mentioned. However, Mr Tumilty wanted to reassure Mr Howard and so he said that as a small business it was unlikely to be in a position to compete with the Claimants. He maintained this evidence in cross-examination.141.For the reasons discussed above, I believe that Mr Howard’s evidence was less reliable than that of Mr Tumilty. My view is reinforced by Mr Tumilty’s account of the phone conversation he had with Mr Howard on 27 March 2018 being much more consistent with Mr Howard’s emails quoted above than was Mr Howard’s written and oral evidence.142.I think that the communications between the Claimants and UEPM in March and April 2018 are consistent only with the Claimants having unequivocally demonstrated that they renounced any intention to enforce their exclusive trade mark rights in relation to UEPM’s use of the trading name “Urban Evolution” and that this constituted consent within the meaning of s.9 of the 1994 Act. UEPM did not believe that it needed such consent and on the findings I have reached above it did not. Consent was nonetheless given. It was qualified only in one respect: UEPM was required to change the Old Logo to a logo approved by the Claimants. This was done.143.With regard to passing off, the Claimants’ consent to UEPM’s use of “Urban Evolution” as a trading name amounted to a licence, if a licence had been necessary. Estoppel 144.The Defendants relied on promissory estoppel and acquiescence. Nothing was said about acquiescence in argument, presumably because it was to stand or fall with the Defendants’ case on estoppel.145.I was referred to Harvey v Dunbar Assets plc [2017] EWCA Civ 60. Henderson LJ, with whom Gross LJ and Sir Stephen Tomlinson agreed, cited with approval a formulation of the requirements of promissory estoppel set out in Snell’s Equity, 33rd ed. (2016), para. 12-018: “Where, by his words or conduct one party to a transaction, (A) freely makes to the other (B) a clear and unequivocal promise or assurance that he or she will not enforce his or her strict legal rights, and that promise or assurance is intended to affect the legal relations between them (whether contractual or otherwise) or was reasonably understood by B to have that effect, and, before it is withdrawn, B acts upon it, altering his or her position so that it would be inequitable to permit the first party to withdraw the promise, the party making the promise or assurance will not be permitted to act inconsistently with it. B must also show that the promise was intended to be binding in the sense that (judged on an objective basis) it was intended to affect the legal relationship between the parties and A either knew or could have reasonably foreseen that B would act on it. Yet B’s conduct need not derive its origin solely from A’s encouragement or representation. The principal issue is whether A’s representation had a sufficiently material influence on B’s conduct to make it inequitable for A to depart from it.” 146. There are difficulties with the Defendants’ case on estoppel. First, it was not available in law as a defence to the Claimants’ allegation of trade mark infringement. Males J explained why that is in Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch): “[90] As to the first question, it is clear that the Regulation operates as a complete code so far as the rights of a Community trade mark proprietor are concerned. The reason why the European Court insisted on an autonomous Community meaning of ‘consent’ in the Zino Davidoff case was, as explained at [41] of the judgment: ‘If the concept of consent were a matter for the national laws of the member states, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned. The objective of “the same protection under the legal systems of all the member states’ set out in the ninth recital in the Preamble to Directive 89/104, where it is described as “fundamental”, would not be attained.’ [91] The same unacceptable consequence would apply if, in a case where there was no consent within the meaning of the Regulation, a proprietor was nevertheless precluded from exercising its rights under art.9 as a result of some other defence available under national law. Further, as noted above, the European Court went on to say at [58] that: ‘[58] A rule of national law which proceeded on the mere silence of the trade mark proprietor would recognise not implied consent but rather deemed consent. That would not meet the need for consent positively expressed, required by Community law.’ [92] Although it would not be right to describe the principle of estoppel by acquiescence as comprising ‘a rule of national law which proceeded on the mere silence of the trade mark proprietor’ as more is required than mere silence, it is nevertheless a rule of national law which operates as a kind of deemed consent regardless of actual consent. A defendant only needs to invoke an estoppel defence when it is unable to prove actual consent within the meaning of the Regulation. While an estoppel defence may be characterised as an aspect of a wider principle of good faith or abuse of rights, to allow the possibility of such a defence would undoubtedly mean that protection would be subject to issues outside the terms of the Regulation and would vary according to the legal system concerned.” 147. A second problem is that there must have been legal relations between the Claimants and UEPM for an estoppel to operate and it was not made clear by the Claimants what the nature of that relationship was. In Harvey v Dunbar Assets Henderson LJ said: “[62] … it seems clear to me that the weight of existing authority supports the view that a promissory estoppel can only arise in the context of an existing legal relationship, as Lord Walker of Gestingthorpe said in Thorner v Major [2009] 1 WLR 776, para 5.” 148. Thirdly, UEPM did not rely on the representation by the Claimants, namely that UEPM could use the trading name “Urban Evolution”. Mr El Paraiso was clear that UEPM did not believe that it required any assurance about the use of the name and therefore UEPM cannot have acted upon that assurance to its detriment. 149.I reject the defence of estoppel for both trade mark infringement and passing off. The joint liability of Ms El Paraiso 150.It was not in dispute that if UEPM were to be liable as alleged, Mr El Paraiso, Mr Spencer and Mr Tumilty were jointly liable. The joint liability of Ms El Paraiso was denied.151.The pleaded case against Ms El Paraiso appears in paragraphs 13 and 14 of the Amended Reply and it goes no further than the allegation that she was a person with significant control of UEPM solely because she was a director of UEPM.152.In Lifestyle Equities CV v Ahmed [2021] EWCA Civ 675 Birss LJ, with whom Moylan and Nugee LJJ agreed, considered several authorities including the judgment of the Supreme Court in Fish & Fish v Sea Shepherd [2015] UKSC 10, Mentmore Manufacturing Co Ltd v National Merchandising Manufacturing Co Inc (1978) 89 DLR (3d) 195 and in particular that of the Court of Appeal in MCA Records Inc v Charly Records Ltd (No. 5) [2001] EWCA Civ 1441:[31] Turning to MCA v Charly Chadwick LJ noted (in [47]) that in Mentmore the question of whether and in what circumstances a director should be liable with the company was described as a difficult question of policy and that in the end a balance has to be struck between two considerations. The first consideration is the distinction between a company as a distinct legal person and its shareholders, directors and officers. The second is that everyone should be answerable for their tortious acts. The judge then made the point that because there was a balance to be struck in each case it was dangerous for an appellate court to attempt a formulation of the principles since it may come to be regarded as prescriptive ([48]). Nevertheless Chadwick LJ did feel able to formulate four principles which he then set out.…[36] … If the individual’s conduct does not make them liable as an accessory, then the fact they are a director in and of itself cannot make them liable when they would not be otherwise. That was also made clear by Chadwick LJ in [37] of the same judgment in which he held that it was a correct statement of the law that a director or other officer of a company may in certain circumstances be personally liable for the company’s torts, although they will not be liable merely because they are an officer: they must be personally involved in the commission of the tort to an extent sufficient to render them liable as a joint tortfeasor. Whether they are sufficiently involved is a question of fact, requiring an examination of the particular role played by them in the commission of the tort.”153.No attempt was made in the present case to establish that Ms El Paraiso was personally involved in the alleged acts of trade mark infringement and passing off by UEPM to an extent sufficient to render her liable as a joint tortfeasor. Her being a director of UEPM was by itself not enough.154.Had UEPM been liable as alleged, Ms El Paraiso would not have been jointly liable. Conclusion 155.The claim for both trade mark infringement and passing off is dismissed.