Case No. EWHC-1798-(IPEC)

.” It continues “I hereby warrant that any interest or claim of ownership I have or may have had in such properties works or interests shall be passed in it’s [sic] entirety to Alan Williams’ Ent. Ltd…” (emphasis added). Mr Williams gave evidence that he had prepared the agreements and that he had not received any legal advice on their terms. Each is an agreement between an individual shareholder and a third party purporting to transfer interests in a company.128.The construction of the provisions set out above at paragraph 127 was not discussed in any detail during the hearing. The pleadings suggest that the parties’ view was that the agreements would (if valid) transfer an interest in property owned by the 1976 Company (and possibly also each individual’s relevant shares) to AWEL. Counsel did not address how property owned by the 1976 Company would be transferred by such an agreement between shareholders.129.In the absence of any agreement signed by the 1976 Company, or any explanation as to how the transfer of corporate assets is argued to have happened without such an agreement, I conclude that irrespective of the status of any agreement between AWEL and Mr Clarke and Mr Richardson respectively, the goodwill owned by the 1976 Company remained with that company. As the 1976 Company is now dissolved, the goodwill for the period before 1983 passed to the Crown under section 654 of the Companies Act.1983 – present130.It is common ground that from 1983 to 2018 AWEL was responsible for all the business arrangements of the band which performed initially as the ‘the Rubettes’ and, after 2002, as the ‘the Rubettes featuring Alan Williams’. Mr Clarke was a performer with that band from 1993 to 1988 and subsequently from 1993 to 2018. Mr Richardson became involved from 2000 and maintained his involvement until 2018. The evidence is that, during that time, other musicians also performed with the band and that a band using the name ‘the Rubettes’ performed from time to time without any of the Defendants as, for example, during an Australian tour in 2017.131.AWEL has been responsible for negotiations with promoters and has borne the costs associated with the band. The evidence supports Mr Smith’s submission that it was AWEL and Mr Williams who were responsible for promoting the band. Promotion is an essential part of the trading activities of any band (or of any entertainer). Since 1983, AWEL has traded through the band and has accrued goodwill in ‘the Rubettes’.132.The critical question is whether, at any time between 1983 and the autumn of 2018, either Mr Clarke or Mr Richardson accrued any concurrent goodwill.133.Mr Colbey’s submission is that they did. He points to the pleading at paragraph 35 of the Amended Defence as the basis of his clients’ case:“Paragraph 35 is denied. Whilst it is admitted that the Defendants were describing themselves as “the Rubettes”, it is denied that in the circumstances this was any representation that they were “using good and services of the First Claimant” (by which it is assumed the allegation is that they were using such goods and services in which the first Claimant has intellectual property rights rather than using its physical property). It is denied, if it be alleged, that there is any association in the eyes of members of the public between the Rubettes and the first or the second Claimant, save that the second Claimant has at times been a member thereof.”134.Having reviewed that portion of the pleading in context, it is far from clear that it goes to the ownership of goodwill during the period from 1983 to 2018. It appears to relate to the facts pleaded immediately above, in paragraph 34 and therefore to the question of misrepresentation rather than to the ownership of goodwill itself (which is dealt with at paragraph 33). Paragraph 35 of the Amended Defence is expressly said to be a response to paragraph 35 of the Amended Particulars of Claim. That paragraph is directed to misrepresentation rather than to the ownership of goodwill.135.Mr Colbey may, however, have had paragraph 33.4 of the Amended Defence also in mind. As mentioned above, that paragraph pleads that because Mr Clarke and Mr Richardson have continued to perform as the Rubettes they have built up and now own a substantial goodwill in ‘the Rubettes’. 136.Mr Smith objects to this pleading on the basis that it specifically responds to paragraph 34 of the Amended Particulars of Claim. That paragraph is said to deal with performances after the autumn of 2018. Mr Smith argues that the Defendants cannot rely on trade after the date on which the infringement is alleged to have commenced as giving rise to goodwill: the date at which passing off is to be assessed is the date on which the alleged infringing conduct commenced. While I accept that this is correct, the pleading point is arguably not well taken as paragraph 33.4 of the Amended Defence refers not only to performances as alleged in paragraph 34 of the Amended Particulars of Claim, but also adds the catch all “and otherwise”.137.It is not necessary to enter into a detailed discussion of the adequacy of the pleading as, even if the defence of concurrent ownership between 1983 and 2018 were pleaded, I have seen no evidence that either Mr Richardson or Mr Clarke was, while performing with the Rubettes, operating as a sole trader in a way which would entitle either of them to accrue goodwill relating to the trading activities of the band. While the limited evidence (summarised below) suggests that Mr Clarke and Mr Richardson were operating as sole traders supplying musical services, no reasoned basis was put forward as to why this would entitle them (as opposed to any of the other freelance musicians who worked with AWEL under the name ‘the Rubettes’ from time to time) to accrue goodwill in the trading activities of that entity.138.The evidence of Mr Clarke and Mr Richardson was that they each pursued interests separate from the Rubettes. There were lengthy periods after 1983 when neither of them performed with the band. They were paid a fee per performance when they did appear, but bore no costs relating to their participation. The evidence of both was that they were interested in performing but not in the business of arranging tours or dealing with the business aspects of the band, acknowledging that the business risks involved were for Mr Williams (either directly or through AWEL) to bear. Neither Mr Clarke nor Mr Richardson put forward any evidence that they had been involved in promoting the Rubettes.139.I accept the submissions of Mr Smith that the fact that Mr Richardson and Mr Clarke were members of the original Rubettes line up does not of itself give them any special status. Goodwill relates to rights which accrue to business and trade as otherwise it would lack any sensible defining boundary. It is for that reason that goodwill accrues to trading undertakings including, on occasion, individuals engaged in the relevant business as a trader. While in appropriate circumstances one or more musicians trading as individuals might accrue rights concurrently in the same band name either with each other or with another body primarily responsible for trading as that band, or both, there is no evidence that that has occurred here, either (as concluded above) in the period up to 1983, nor in the period between 1983 and late 2018.The effect of the 2002 Agreement on goodwill in ‘the Rubettes’140.Mr Colbey’s submission was that the 2002 Settlement Agreement following the litigation between AWEL and Mr Hurd had a significant impact on the position of the Claimants because that agreement prevented AWEL from trading as ‘the Rubettes’. Consequently, it was said that since 2003 AWEL has been able to build up goodwill only in ‘the Rubettes featuring Alan Williams’. Mr Colbey states that it must follow that the Claimants cannot stop the Defendants from using the ‘the Rubettes’ as the Claimants have no right to use that name themselves.141.Mr Colbey relies on paragraph 30 of the Amended Defence as the pleaded basis for the Defendants’ case on this issue. That paragraph responds to paragraph 30 of the Amended Particulars of Claim.142.Paragraph 30 of the Amended Particulars of Claim follows a few short paragraphs setting out a brief history of the litigation with Mr Hurd, its settlement and the knowledge of the Defendants about such matters and reads:“Both the First and Second Defendants were fully aware of the litigation for breach of the Settlement Agreement, the facts and circumstances giving rise to it and the eventual outcome.”143.Paragraph 30 of the Amended Defence follows a series of short paragraphs responding to the equivalent paragraphs of the Amended Particulars of Claim. Those paragraphs take issue with the Claimants’ pleading as to the knowledge of the Defendants about the detail of the litigation and note that the Claimants have from time to time performed as ‘the Rubettes’ without any suffix, including during a tour when none of the Defendants was present.144.The Amended Defence then reads:“Paragraph 30 is denied, MC and JR were only told in outline what was going on. In or around 2002, the second Claimant specifically did say to MC and JR that he could never be in a band called just “the Rubettes”, but explicitly stated that MC and JR could as they were not bound by that agreement. On one occasion the second Claimant withdrew from a concert in the Brentwood Centre for a Falkland Island Charity on the basis that it had been marketed as by “the Rubettes” and that therefore he could not participate, but he encouraged MC, JR (and another band member) to perform under that name.”145.During closing submissions, Mr Colbey argued that the pleadings at paragraphs 30 and 35 of the Amended Defence set out the Defendants’ case that the Claimants cannot prevent them from using ‘the Rubettes’ at any time after 2003.146.Mr Smith did not devote much of his initial skeleton argument to this issue. In his closing submissions he argued that, if it is the Defendants’ case that the 2002 Settlement Agreement resulted in the Claimants abandoning or otherwise losing their post 1983 goodwill in ‘the Rubettes’, then that case is not pleaded. If relevant at all, the facts relied on can go only to the question of misrepresentation rather than to the question of ownership.147.In addition, Mr Smith submitted that, even if such an argument were open to the Defendants on the pleadings, it could not succeed as a matter of law. It was his position that a bilateral agreement between two parties as to their use of a brand makes no difference to their respective positions as against third parties. He did not refer to any direct authority for this proposition but relied by way of analogy on McAlpine, submitting that, while Sir Robert McAlpine Ltd had obtained an injunction preventing Alfred McAlpine Plc from using ‘McAlpine’ without qualifying it with ‘Alfred’, nobody would suggest that that restriction between the two parties opened the way for third parties to enter the relevant market under the name ‘McAlpine’.148.Finally, Mr Smith noted that in any event the Defendants have pleaded that the Claimants continue to use simply ‘the Rubettes’ from time to time, which is wholly at odds with any case of abandonment or evaporation of the Claimants’ interest in the goodwill in ‘the Rubettes’.Assessment149.I prefer Mr Smith’s submissions. The Defendants’ pleading does not support a case that at some point after in or after 2002 the Claimants ceased to accrue or abandoned any goodwill in ‘the Rubettes’. The passages pleaded go to the question of misrepresentation and damage rather than to the ownership of the goodwill as such. I agree with Mr Smith that the mere fact of a bilateral agreement between two parties as to the way in which they will trade does not of itself mean that either party automatically abandons its rights against third parties in any goodwill it may own. The Defendants plead explicitly that the Claimants continued to trade (albeit intermittently) as ‘the Rubettes’ without any suffix. That may expose the Claimants to a breach of contract action by Mr Hurd, but it also suggests that, given an opportunity (for example, if that agreement were to be renegotiated), the Claimants would seek to resume trading under ‘the Rubettes’.150.While it is possible that goodwill might evaporate over time, counsel did not address that possibility, nor was there any meaningful discussion of the factual circumstances in which any that abandonment or evaporation might have occurred nor of the relevant legal test.151.To the extent that Mr Colbey was in fact seeking to rely on the events surrounding the concert at the Brentwood Centre for a Falkland Island Charity as the factual basis for such a case, I do not regard that as sufficient.152.I note the Claimants’ pleading (in the Amended Reply, paragraph 16(b)) denying that Mr Williams ever explicitly stated that the 2002 Settlement Agreement meant that Mr Clarke and Mr Williamson could perform as just ‘the Rubettes’. I also note the further pleading (Amended Reply, paragraph 16(c)) admitting that Mr Williams had withdrawn from the concert owing to his contractual obligations to Mr Hurd. The paragraph admits that Mr Williams did not object to other members of the band performing at that concert and goes on to plead:“The concert was for charity and it was too late to cancel the performances as a whole. It is denied, if it be alleged, that in so doing, the Second Claimant (whether on his own behalf or that of the First Claimant) waived his / its rights to prevent the Defendants from using the name “the Rubettes” or variations thereon in the future.”153.This issue was raised with Mr Williams by Mr Colbey during cross-examination. Mr Williams’ evidence was consistent with the pleading. He acknowledged that neither Mr Clarke nor Mr Richardson was bound by the same contractual constraints as he was; explained that he was aware of his particular position in the light of the Tomlin Order; and said that, as far as he was concerned, he was happy for Mr Clarke and Mr Richardson to carry on with the concert as it was for a charity. He did not say that he had given any wider permission to perform as ‘the Rubettes’ nor that he (or AWEL) was unable to takes steps to prevent others from trespassing on their goodwill. Neither Mr Clarke nor Mr Richardson addressed this issue in their evidence.154.Neither the pleading nor the facts support a case that the Claimants’ contractual arrangements with Mr Hurd meant the abandonment of goodwill in ‘the Rubettes’. Indeed, it was unclear whether this was in fact the main thrust of Mr Colbey’s submissions, which seemed to be more focussed on misrepresentation and whether the activities of the Defendants could confuse relevant third parties when they never referred to themselves by the name under which AWEL now principally traded.155.In any event, I have reached the conclusion that the circumstances surrounding the charity concert do not establish a waiver of any rights of Mr Williams or AWEL in ‘the Rubettes’. In my view this establishes, at most, a limited permission to Mr Clarke and Mr Richardson to perform as ‘the Rubettes’ without Mr Williams performing alongside them, fulfilling an engagement arranged by AWEL and in respect of which goodwill would accrue to AWEL.156.To the extent that Mr Colbey was submitting that the Claimants’ goodwill in ‘the Rubettes’ had dissipated over the period since 2003, neither the pleading nor the evidence provide sufficient basis for that submission. Indeed, it is unclear whether either counsel had this possibility in mind and neither referred me to any relevant authority, even though it was raised explicitly in Byford v Oliver at [25].157.Mr Colbey provided me with the general chapter on passing off from Clerk & Lindsell which contains a brief comment on the dissipation of goodwill, noting:“It is a question of fact whether goodwill has been dissipated through non-use or whether there remains any residual goodwill; the issue would appear to be whether the original customer connection continues to exist”. (at 25-06, internal references omitted).158.None of the evidence goes to this issue. It is apparent that AWEL has continued to promote the 2000 Band since 2003 and to negotiate and trade with the same promoters as previously. The Defendants have pleaded that promoters continued to advertise the band in respect of which AWEL is trading as ‘the Rubettes’ without more, from time to time. These facts suggest that the goodwill has not been dissipated and that the customer connections established by AWEL through its trading continued to exist. I therefore conclude that the defence of dissipation (even if pleaded) would not, on the balance of probabilities, have been established on the facts.159.Finally, the Defendants have suggested (albeit without significant conviction) that the Claimants abandoned any goodwill in ‘the Rubettes’. On their case, this was when Mr Williams sent the 1 July email to Mr Clarke saying:“Due to recent activities undertaken by certain people my position has become untenable and as a result I am disbanding my present band line up as of now and as a result I must inform you that your services will no longer be required.”160.The construction for which the Defendants contend is a strained interpretation of this email. The context is discussed in more detail below. To the extent that the Defendants’ evidence is that they understood the email this way, it is no more than inference on their part.161.Mr Colbey did not engage with the authorities referred to in the extract setting out the general law on passing off from Clerk & Lindsell on which he relied in general terms. These establish that both non-use of the goodwill and the lack of any intention to resume the former trade will generally be required to show abandonment of goodwill (Star Industrial Co Ltd v Yap Kwee Kor [1976] FSR 256 per Lord Diplock; and