Introduction
1.This action is about the right or otherwise of the First Defendant (“UEPM”) to provide property management services under the name “Urban Evolution”.2.The Claimants trade in the same field under the name “Urbanbubble”. The First Claimant owns UK Trade Mark No. 3116646 in the form of the word URBANBUBBLE, registered as of 7 July 2015 in respect of “Property (real estate-) management” (“the Trade Mark”). The Claimants allege that because of UEPM’s trading it has infringed the Trade Mark and passed off its services for those of the Claimants. The Second to Fifth Defendants, all at one time directors of UEPM, are said to be liable with UEPM as joint tortfeasors.3.The Second Claimant is now in liquidation and took no active part in the trial. There was an unchallenged written assignment, to which the liquidator was party, of all the Second Defendant’s intellectual property rights to the First Claimant.4.The Defendants deny the allegations. Their defence includes the argument that the Claimants consented to UEPM’s use of the trading name Urban Evolution and/or that the parties’ conduct created an estoppel on which the Defendants can rely.5.Stephanie Wickenden appeared for the Claimants, Amanda Michaels for the Defendants. I received thorough written submissions and helpful oral argument for which I am grateful.
- HIS HONOUR JUDGE HACON
- Covid-19 Protocol: This judgment was handed down remotely by circulation to the parties’ representatives by email and released to BAILII. The date and time for hand-down is deemed to be 10.30 a.m. on Tuesday 25th January 2022.
- Introduction
- Background Facts
- The Witnesses
- The Issues
- Trade Mark Infringement – section 10(2)
- Trade Mark Infringement – section 10(3)
- Passing Off
- Further defences
- Consent
- Rights conferred by registered trade mark
- Estoppel
- Conclusion
