Case No. IP-2020-000081

9. (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.