Case No. IP-2020-000081

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them (whether contractual or otherwise) or was reasonably understood by B to have that effect, and, before it is withdrawn, B acts upon it, altering his or her position so that it would be inequitable to permit the first party to withdraw the promise, the party making the promise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.