History of proceedings between the parties
7.In February 2017, a few months after the split of Luv Injection 1, Winston filed an application to register the name “Luv Injection” as a trade mark, which application was successful. Then, in October 2017, he filed a further application to register that name. In early 2018, Ian applied to the UK Intellectual Property Office (UKIPO) seeking to invalidate Winston’s earlier registration and opposing Winston’s further application. Ian’s application succeeded for the reasons set out in a decision of a UKIPO Hearing Officer dated 27 June 2019 (O-359-19). In essence, the Hearing Officer decided (see, especially, at [58] of the Decision) that, at the date of the split (which the hearing Officer found was in 2016), goodwill in the name “Luv Injection” had been owned by the members of Luv Injection 1 as a partnership. On that basis, and because there had been no subsequent transfer of that goodwill to Winston, he concluded that Winston was not personally entitled to the goodwill in the name and was not, therefore entitled to register the name as his trade mark.8.After this, on 21 October 2019, Ian issued the current proceedings alleging passing off by Winston. In its original form, Ian’s claim was that he personally was entitled to bring the proceedings and that, as a result of the decision of the Hearing Officer, Winston was estopped from denying that entitlement. This argument was accepted by HHJ Melissa Clark who, on 17 June 2020, made an order striking out most of Winston’s then defence. Winston’s appeal from that Order was allowed, in part, by the Court of Appeal on 20 May 2021 (see [2021] EWCA Civ 732). In view of the decision of the Hearing Officer, the Court of Appeal agreed that Winston could not claim that he alone owned the goodwill in the name after the 2016 split. However, it found that there was nothing in the Hearing Officer’s decision to prevent Winston from relying on alternative arguments. As appears from the judgment of Lewison LJ, one of those alternative arguments was that the relevant goodwill was not owned by Ian but was a partnership asset owned by the members of Luv Injection 1 and that, as Winston was one of those members, only the partners as a whole could sue him for passing off.9.In the light of the Court of Appeal’s judgment, there was some further debate as to what was properly in issue and what Ian, as Claimant, was entitled to assert in view of the earlier decisions. This resulted in an Order of HHJ Hacon on 25 October 2021 listing various points that Ian was not entitled to put forward. A subsequent Order of HHJ Hacon, made on 1 February 2022, then sought to define exactly what was and what was not in issue in the present action.10.Ian’s case as it is now formulated in his Re-Amended Particulars of Claim is that:a.Luv Injection 1 had traded as a partnership at will which had ended with the split in October 2016 (see paragraph 3 of the Re-Amended Particulars of Claim).b.Although, at the date of the split, the goodwill in the Luv Injection name was a partnership asset owned by the Luv Injection 1 partnership (see paragraph 16 of the Re-Amended Particulars of Claim), that goodwill is now owned by Ian personally (his primary case) or, if not by him, by the Luv Injection 2 partnership such that Ian can enforce it in his capacity as one of the partners in Luv Injection 2 (see paragraph 9 of the Re-Amended Particulars of Claim). c.The pleaded basis for this change in ownership of the goodwill is that:i.After the split, Winston had done nothing to obtain his share of the goodwill of Luv Injection 1 (see paragraph 7 of the Re-Amended Particulars of Claim); and ii.“As the ‘front of house’ and prominent members of LOVE INJECTION 1, the Claimant and the other two surviving founder members (but not the Second Defendant) have appropriated the goodwill stemming from LOVE INJECTION 1. This will have occurred because the members of LOVE INJECTION 2 which were part of LOVE INJECTION 1 were individuals that were seen by members of the public as the musical members” (see paragraph 8 of the Re-Amended Particulars of Claim). d.Winston, by using the name Luv Injection for his new group (Luv Injection 3), is passing off his goods and services as those of Ian (see paragraph 27 of the Re-Amended Particulars of Claim).e.Winston, by using dub plates which “toast” Luv Injection and mention Ian and/or Billy, is also passing off Luv Injection 3 as being Luv Injection 1 or, in the alternative, passing it off as being connected with Ian (see paragraph 30 of the Re-Amended Particulars of Claim).f.A further trade mark (for Luv Injection Sound) which Winston has registered, should be declared invalid on the basis that its use also amounts to passing off (see paragraphs 34-35 of the Re-Amended Particulars of Claim). 11.Winston denies passing off whether by his use of the Luv Injection name or by his use of any dub plate and he denies that the further trade mark should be declared invalid. Further, by way of counterclaim, Winston seeks an order that the affairs of the Luv Injection 1 partnership should be wound up in accordance with s.35 of the Partnership Act 1890 and its assets (including, he says, the goodwill in the name) distributed between its partners.