Case No. IP-2021-000046

) considered Budvar and Heitec (which it acknowledged did not bind it). Arnold LJ noted at [39] of Combe, without criticism or adverse comment, the four prerequisites for the running of a period of limitation from Budvar which I set out above. Arnold LJ also considered other binding authorities pre-dating the UK leaving the EU: Case C-145/05 Levi Strauss & Co v Casucci SpA [2006] ECR I-3703 and Case C-561/11 Federation Cynologique Internationale v Federacion Canina Internacional de Perros de Pura Raza [EU:C:2013:91] before reaching the following conclusions:i)The “administrative or court action” envisaged by the Court of Justice is one brought by the proprietor to oppose the use of the later mark and to remedy the alleged infringement of its rights (per [50] of Heitec, emphasis added by Arnold J at [45]. See also [54]);ii)The bringing by the proprietor of the earlier trade mark of a cancellation action in respect of the later trade mark is not sufficient to preclude acquiescence by the proprietor of the earlier trade mark in the use of the later trade mark (at [57]);iii)Merely sending a warning letter is not enough, but if the warning letter is followed within a reasonable period by administrative or court action or other action capable of leading to “a legally binding solution” (per Heitec) (such as invoking an arbitration clause, perhaps) then the sending of the warning letter will stop time running (at [47]);iv)Acquiescence in the registration of a later trade mark which is not being used does not give rise to a defence under section 48(1) (at [59]).39.In addressing the finding at first instance that the bringing of a cancellation action of the later mark by the proprietor of the earlier mark was sufficient to stop time running as it was not a passive act, Arnold LJ explained why he disagreed at [69], saying “That is true so far as it goes, but what the CJEU was referring to in Budvar at [44] was a failure “to take measures open to him to remedy a situation of which he was aware”, namely the use of the later trade mark. As I have explained, that can only be remedied by an infringement action, not by a cancellation action. The same message is conveyed by the Court of Justice’s reference to the proprietor being inactive “when faced with a situation which he would be in a position to oppose” [per [49] of Heitec]. Arnold LJ described this as the difference between objecting to registration and objecting to use, and found as a matter of law that there was “a sharp distinction” between the two (at [73]).When does the 5 year period in section 48(1) start to run?40.This is the first dispute of law between the parties.41.Mr St. Ville’s primary post trial submission is that the Court of Appeal in Combe held that the relevant date from which to consider the question of acquiescence was the date of deemed registration, relying on [7], [13] and [103] of Arnold LJ’s judgment. 42.I do not agree that it made that finding. [7] simply states that the later UK trade mark in that case, as a clone of the defendant’s EU trade mark which came into existence automatically on 31 December 2020 as a consequence of Brexit, was deemed to have been registered as of the filing date of the defendant’s EU trade mark. [13] merely gives the history of the defendant’s application for and registration of its EU trade mark. Neither paragraph tells me anything about when time runs for the purposes of acquiescence. That is, no doubt, because this was not in issue on appeal in Combe. In Combe, the defendant did not trade in goods bearing the later mark into the UK until December 2013, which was after both the filing date (and deemed date of registration) and registration date of the relevant mark. However, it does not appear to have been disputed, and Johnson J found at [174] of the first instance judgment, that the period only begins to run when the four conditions set out in Budvar have been satisfied. His finding on this point was not an issue on appeal. The parties made slightly different submissions as to on what date “all the elements necessary for the section 48 period” were in place (at [177]) but the claimant accepted it had knowledge both of the existence of the later mark and of its use in the UK from January 2014 (at [178] of the judgment at first instance). 43.[103] of the judgment of Arnold LJ in Combe is not about acquiescence at all, but about a section 11(1) TMA defence. It notes that at first instance the defendant had only argued a section 11(1) defence as that section had been amended by the Trade Marks Regulations 2018 (SI 2018/825) with effect from 14 January 2019, and they sought also to argue it as originally enacted in relation to acts committed prior to 14 January 2019. In [105] Arnold LJ goes on to set out an acquiescence argument run by the claimant, arising from the defendant’s submission that it had a defence under the originally enacted section 11(1) TMA, namely “… that it followed that Combe [the claimant] were not in a position to oppose use of the Wolff UKTM prior to 14 January 2019, and therefore their claim for infringement of the Combe Trade Marks could not be barred by acquiescence applying the reasoning in Budvar…”, but he did not determine the point as he held it was not necessary to do so, given his conclusion that the defendant’s section 48(1) defence had failed. 44.The Defendants’ secondary post-trial submission is that paragraphs [57] – [67] of Combe support the Defendants’ position on construction of s48(1) TMA that it is not a pre-requisite for a period of acquiescence to begin to run that the proprietor of the earlier mark has knowledge of the registration of the later comparable mark (as opposed to there being, as a matter of fact, registration of the later comparable mark). Of course, this would have to follow from the Defendants’ primary submission that the date for acquiescence to start is the filing date as the deemed date of registration of the later mark, since, as Ms Messenger notes, the Defendant could have no knowledge of registration of the later comparable mark on the deemed date of registration, which is by definition earlier than the date the decision to register it was made and published. The Defendants’ primary submission only works, therefore, if there is a severing of the connection between the knowledge of the earlier owner of the use of the later mark, and his knowledge of the registration of the later mark. Accordingly, Mr St. Ville draws a distinction between the earlier mark owner’s knowledge of the use of the later mark, and its knowledge of the registration, relying on [65]- [67] of Combe. 45.Although the question of when acquiescence began was not in issue as I have stated, the Court of Appeal in Combe:i)noted that in Budvar the Court of Justice held that the concept of acquiescence implied “a person who remains inactive when faced with a situation which he would be in a position to oppose”; ii)cited all four conditions from Budvar without adverse comment, including the fourth condition that there must be knowledge by the proprietor of the earlier trade mark that the later trade mark has been registered and used after its registration; iii)applied those criteria in the matters that it did have to determine, including in the manner in which I will go on to explain, and so in my judgment approved them; and iv)made clear that Budvar remained binding law. 46.As Arnold LJ explains in Combe at [59]-[62], the defence is founded upon acquiescence in use of the later, registered, trade mark, not acquiescence in registration. That the acquiescence must be in respect of the use of the later, registered, trade mark, can be discerned from the two consequences he identifies as arising from that acquiescence in section 48(1)(a) and (b) TMA, and discusses at [60] and [61]. Those are that the proprietor of the earlier trade mark ceases to be entitled: (i) to apply for a declaration that the registration of the later trade mark is invalid; and (ii) to oppose the use of the later trade mark; unless the later mark was applied for in bad faith. Of course, the proprietor of the earlier trade mark does not begin to be entitled to apply for a declaration that the registration of the later trade mark is invalid until after the date of registration of the later trade mark, and is not in a position to do so until he is aware that the later trade mark has been registered. 47.Accordingly, I am satisfied that, as the Court of Justice stated in Budvar and as the Court of Appeal appears to have approved in Combe, time starts to run for the purposes of section 48(1) TMA once: (i) the later mark has been registered; (ii) the proprietor of the earlier trade mark knows that the later trade mark has been entered onto the register; and (iii) the proprietor of the earlier trade mark knows that the later registered trade mark has been used. 48.However, the wording of the statutory provision itself requires “acquiescence… in the use of a registered trade mark in the United Kingdom, being aware of that use” so I am satisfied that even without the assistance of Budvar and the helpful guidance of Arnold LJ in Combe it would be perverse to construe it in the manner that Mr St. Ville asks me to construe it, so that it can encompass ‘acquiescence in the use of a mark which is then, or later but within the statutory period, registered in the United Kingdom’. The natural meaning of the words is exactly what it says, that the earlier owner must acquiesce in the use of the registered trade mark, being aware of that use, for the statutory period before the defence can succeed. That requires: (i) use of a registered trade mark after registration; and (ii) the earlier owner to know both of the registration of the trade mark and the use of it after registration. That is the conclusion that Budvar comes to, and Combe does not undermine, and indeed supports in my judgement, as I have set out.49.Mr St. Ville for the Defendant submits that paras [65]-[67] of Combe do undermine Budvar because they are inconsistent with the fourth pre-requisite in Budvar, and are consistent with the Defendants’ arguments advanced at trial. 50.Again, I do not agree. In these paragraphs, Arnold LJ goes on to discuss, secondarily, “the broader purpose of the legislation as explained by the CJEU” and highlights three aspects, which he says are inter-related: (i) the intention of striking “a balance between the interest of the proprietor of a trade mark to safeguard its essential function, on the one hand, and the interests of other economic operators in having signs capable of denoting their goods and services on the other” ([65]); (ii) to “limit protection to those cases where the proprietor [of the earlier mark] shows itself to be sufficiently vigilant by opposing use of the signs by other operators likely to infringe its mark” ([66]); and (iii) the need for legal certainty, to prevent rights being enforced if the rights holder does not take action for five years, to forestall stale claims but also to incentivise the earlier trade mark to prevent long use of a conflicting sign which may affect the average consumer’s perception of the earlier trade mark, which has potential consequences not only for the proprietors of the respective trade marks, but also the consuming public. In doing so, he is explaining and expanding the reasoning at [47]-[50] of Heitec (and distinguishing it to some extent, see the discussion about ‘continuous’ use from [76] of Combe which is not relevant for the purposes of this case). This discussion and that in Heitec are both, in my view, made in the context of the later trade mark being a registered trade mark. See the references in Heitec at [48] and [50] to the later mark being applied for in good faith, and Arnold LJ in Combe discussing an action for a declaration of invalidity being insufficient to oppose the use of the later trade mark at [62] and elsewhere, arguments to which he expresses [65]-[67] to be secondary.Do invalidity proceedings bring acquiescence in the use of a mark to an end?51.The second dispute of law between the parties has, it seems, been resolved by the Court of Appeal in Combe. This was a key plank of C’s submissions in closing, but C now accepts that: (i) invalidity proceedings in and of themselves are insufficient to bring a period of acquiescence to an end, as Arnold LJ explains at [57] – [72] and as summarised above; and (ii) the Court of Appeal held that the principles from Heitec (also as summarised above) should be applied to cases before the UK Courts. WITNESSES52.As is usual in IPEC, the statements of case stand as evidence. I heard from the following witnesses for C at trial:i)Darren Marston, C’s Executive Chairman. He speaks to the factual evidence in the Particulars of Claim dated 21 September 2021 and C’s Reply and Defence to Counterclaim of 15 December 2021 (as amended on 26 May 2022 and re-amended on 7 October 2022) as a signatory of those documents. He attended court and was cross-examined. He was a good clear witness, a man of few words, who appeared to be both credible and reliable.ii)Mark Bresnihan, C’s Managing Director since 2008 and previously C’s National Sales Manager since 1997. He also signed and speaks to the Particulars of Claim and C’s Reply and Defence to Counterclaim. He has provided further evidence in two witness statements dated 22 July 2022 and 7 October 2022. He attended court and was cross-examined. I thought he was also a good witness. He was candid about what he could remember and what he could not, although I thought his recollection was generally good. He answered questions honestly and to the best of his ability, in my assessment.iii)Sean Edwards, C’s UK Sales Director (since June 2022) and previously Business Development Manager and then Managing Director of Corporate Accounts from 2017 to 2008. Before that, from 1997, he was the owner of a distributor of cleaning machines and consumables called Cleaning Equipment Services Limited (“CES”) which was bought by C at the end of 2016, and he gives evidence of his awareness of and involvement with C, D1 and distributors of D1’s products in the UK while employed first at CES and later at C. He filed a witness statement dated 22 July 2022. Mr Edwards came to court to give evidence but was not questioned by the Defendants. Accordingly his evidence is unchallenged.53.The Defendants rely on the evidence of:i)Michael Pang, founder of the ICE Group of companies and Vice-President of Production of ICE Group since 2018. Previously he was the Vice-President for Export. He speaks to the factual evidence in the Defendants’ Amended Defence and Counterclaim of 18 November 2021 and the Defendants’ Response to C’s Part 18 Request dated 5 May 2022, although he did not sign them for the Defendants. Those were signed by Mr Simon Chen, CEO for D1 and Mr Schless for D2. He also provided a witness statement. Mr Pang attended court and was cross-examined. I am satisfied that he gave honest evidence to the best of his ability but much of what I am concerned with he had no direct involvement with. It became apparent that Mr Pang did not know very much about what was happening in the UK with the ICE Group’s distributors at the relevant time. He was also not at key meetings. It may have been more helpful to have heard from Mr Chen, but I am grateful to Mr Pang for travelling to the UK and providing the evidence that he did.ii)Alexander Schless, head of the EMEA Division of ICE Group, director of D2, and CEO of ICE Robotics EMEA BV, another ICE Group company. He joined the ICE Group in October 2019. He filed two witness statements. He attended court and was cross-examined. I thought he was another straightforward witness who sought to give truthful evidence to the best of his ability. I do not think that his recollection of the Las Vegas trip was entirely reliable, but I do not have any concerns about his honesty.iii)Tibor Killi, Director of D3 and Managing Director of Killis. He signed the Defendants’ pleadings on behalf of D3 and Killis. He filed two witness statements. He attended court and was cross-examined and re-examined. Mr Killi was a lay witness, but I found his witness statements to contain rather a large amount of opinion evidence such that an expert might give, commentary on documents or other witness statements, and material which amounted to advocacy. I have sought to put that to one side and focus on his evidence of fact. In giving oral evidence, he was a good witness, straightforward, credible and reliable. THE FACTSThe Claimant and its current position in the marketplace54.C was founded in 1967 and has been selling and renting commercial cleaning equipment in the UK under the brand name ICE and various iterations of a logo consisting of or including the word ICE since its inception. C says that it has offered its goods and services through its website at www.ice-clean.com (“C’s website”) since April 2000. I accept this on the balance of probabilities: I have seen evidence that this domain was registered on 6 April 2000 and a screenshot from the wayback machine showing use by C of the domain for e-commerce purposes on 4 April 2001. The previous date available on the machine is March 2000, before the inception of the domain. 55.C pleads that it believes it is currently the largest independent provider of cleaning equipment in the UK, and Mr Killi (witness for D3 and Killis) accepted as much in cross-examination. C has provided annual turnover figures for the last 15 years showing that it had a turnover of over £4.1m in 2007, £11.8m in 2018 and of £17.7m in 2020. In fact, as Mr Bresnihan states in his witness statement, this does not include turnover attributable to C’s machine rentals business, which was accounted for in a different group company, Simplify Rental Ltd, for some years. He estimated that part of the business turned over another £2m in 2013.56.C says that it has extensively marketed and advertised its goods and services under and/or by reference to the brand name ICE and different logos incorporating the word ICE, including C’s ICE Logo since 2007. It has provided documentary evidence of its marketing and advertising over the years, including photographs of attendance at trade shows in which it has taken promotional stands, and also provided figures showing that its marketing spend has risen fairly steadily in that time from £74,107 in 2007 to £152,687 in 2020. I will set out further details of this evidence below, but I accept it. Development of C’s business and use of the ICE brand57.Mr Bresnihan provides useful evidence of the development of C’s business and C’s use of the brand name ICE and various logos since he started working for the company in 1997. 58.It is convenient to note here his description of the different parts of C’s business and categories of C’s customers. 59.As C’s business currently stands, he describes it as involving 5 different business streams:i)Rental: short and long term equipment rental;ii)Managed services: service, maintenance and repair of customer equipment, which may have been purchased or rented from C, or from a third party;iii)ICE Direct: trade business;iv)Solutions: sales of a range of own-branded machines;v)Co-Botics: a range of robotic cleaning equipment branded ICE CO-BOTICS.60.He describes C’s customers as falling into three broad categories:i)Direct customers, who rent or purchase equipment from C for their own use (e.g. Amazon, Marks & Spencer);ii)Re-sellers, who are distributors which sell C’s products;iii)Service providers, who are facilities management companies and contract cleaning companies with contracts to provide cleaning and FM services to other companies (e.g. Mitie, OCS). These businesses buy or rent equipment from C and the end users of the machines are the operatives employed by the service provider. 61.In more recent years, with the introduction of C’s Dryver and On Demand series of own-brand machines, he says that customers have expanded to include consumers. I accept this evidence, and the further evidence of Mr Bresnihan summarised here:i)When he first joined C in 1997, he knew it as I.C.E. (pronounced “I-C-E” with the initials spelt out loud rather than as the word “ICE”) although it was transitioning to the use of the word “ICE” internally and with its customers at around this time. C was at that time carrying out distribution, sales and rental of commercial cleaning equipment in a fairly limited geographical area in and around Southampton and Hampshire.ii)At that time it was using a red and black circular ICE logo (“C’s Initial ICE Logo”). The first significant brand change was in 2003, when C rebranded to a dark blue circular ICE logo heavily based on the Initial Ice Logo (“C’s 2003 ICE Logo”), to modernise the look: C’s Initial Ice Logo C’s 2003 Ice Logoiii)The second significant brand change was in 2007, when C instructed a marketing agency named Trigger Media to do a full rebranding. Trigger Media designed an entirely new ICE logo ( “C’s ICE Logo”), which has been used ever since. C moved away from using its full company name of Industrial Cleaning Equipment or “I.C.E’ for short, and the marketing and sales teams began consistently referring to C as ‘ICE’. He says that this caused a definite shift in C’s customers calling C ‘ICE’. This marketing shift can be seen in, for example, an article in C&M Magazine in November 2012 showcasing Mr Bresnihan, who is described in the headline as “managing director of ICE”. The half-page photograph of Mr Bresnihan is set against the backdrop of C’s ICE Logo.iv)After 2007, he says that C was still operating with a focus on the same limited geographical area centred around Southampton, although I have seen a list of C’s vehicles from 2008 showing their base locations stretching from Scotland, Leeds, Liverpool, Sheffield and Birmingham down to Stevenage, Dorchester, Crawley and Dartford in the South, albeit the majority were based in Southampton. I accept there was a regional focus, but I am satisfied there was a national presence. However, he says, that regional focus changed to a national focus from about 2009/2010 and certainly by 2013, as C began to win national contracts. v)In November 2009, C won a contract with the facilities manager Mitie (Retail) Ltd to put machines in every one of the 3000 Co-operative Stores nationwide, and it won other national contracts for machines including with Waitrose/John Lewis. I have seen a case study of the Co-op deal dated November 2011, in which Simon Morton, Operations Director of Mitie (Retail) Ltd, describes C in 2010 as becoming Mitie’s sole supplier of cleaning machinery, and describing the Co-op deal with C as “the largest ever single machinery order placed by MITIE for the Co-operative Group stores”. Mr Morton also goes on to describe using C from 2010 to supply machinery into large-format Tesco stores in the South East and South West as well as all Tesco-express stores nationally. vi)C later won servicing contracts to service cleaning machines of all makes and origin with Fitness First, Regent Office Care, Toys R Us, and Jani King who cleaned nationally for Odeon and Hollywood Bowl. vii)Mr Bresnihan drew a distinction between the sorts of distributors of third party machines which just shipped in boxes for onward sale to customers, and the business of C which was much more around provision of advice to customers about the best machine for a particular job, selling or renting those machines, and providing servicing, spares and maintenance services for those machines. He said that C was successful in developing relationships of trust with customers such that they would take their advice on which machines to buy to meet their needs. I accept that distinction which is clear from a number of documents in the bundle, including the Co-op case study previously referred to.viii)By 2013, C: had 60 employees, a satellite building in Warrington as well as a workshop refurbishment centre in Eastleigh, Hants; was attending national and international trade shows; had vans driving around the country with C’s ICE Logo on it; was advertising in national publications; and had a fully functioning website. I have seen photographs of the vans in the livery of C including C’s ICE Sign and C’s ICE Logo, presence at the trade shows on stands branded with C’s ICE Logo, and advertisements in national publications. ix)From the earliest stages of the business up to 2013, C sold and rented third party machines from well-known brands, which it bought in and overstickered with the ICE brand. I have seen photographs of examples of this going right back to the 1980s. In 2012 it developed a partnership with a manufacturer called Lindhaus, and developed a range of jointly-branded machines showing the Lindhaus logo, the words “distributed by” and then C’s ICE Logo in black and white. x)In 2013 a strategic decision was taken by C to further develop and promote the ICE brand. Accordingly, in 2013 C began speaking to an Italian manufacturer TMB S.r.l (within the Comac group of companies) about manufacturing private label, ICE-branded cleaning machines (“ICE Machines”). xi)The first such machines were designed in 2013 using the “DRYVER” sub-brand, in a pale grey and red colourway (“DRYVER machines”). I can see from the photographs in evidence that it was proposed in a quotation from TMB dated 1 April 2014 that each machine would be prominently branded with C’s ICE Logo in red, however, the information sticker giving details of the serial codes, model number etc show the manufacturer TMB’s name, address and logo. The Defendants submit that there is no evidence before me of the physical appearance and branding of the machines actually delivered to C, but I accept Mr Bresnihan’s evidence in cross-examination that the DRYVER machines as delivered were branded with C’s ICE Logo in red. Mr Bresnihan was unshaken in cross-examination that this was the first example of own-product branding that C had undertaken.xii)C says it placed its first order of DRYVER machines in March 2014, offered them to the public from at least June 2014 and sold them from July 2014 to 2017. I accept that evidence. It says that it delivered its first such machines to a customer (Sainsburys) in July 2014, and I am satisfied that, as Mr Bresnihan accepted in cross-examination, no DRYVER machines came into the UK before July 2014. Over the next 3 years the evidence suggests that C sold almost 1700 units, despite, as Mr Bresnihan accepts, the DRYVER machines not being promoted on C’s website.xiii)It was put to Mr Bresnihan in cross-examination that no-one would have known about the DRYVER machines in the market except those of C’s customers who bought them, which he initially agreed to. However, in answer to a question from the Court about whether C had ever shown them to customers who decided not to buy them, Mr Bresnihan said that C must have shown them to its “key customer demographic” to have sold them in some quantity as it did. I accept that evidence. xiv)From 2016, C took the decision to consolidate the look and feel of the branding of the ICE Machines and make the range more cohesive with how they were using the ICE brand elsewhere in the business. They changed manufacturer, and over the next years developed a range of machines which were cohesive in style, manufactured in a silver and black colourway, with C’s ICE Logo in blue prominent on each (“On Demand Machines”). The earliest photograph of these being presented to the public which has been put before me is, I think, one of January 2017 showing the C’s ICE Robo 2 or ICE Robo 3, according to Mr Bresnihan, with text talking about “our brand new ICE branded machines”. I have also seen photographs of C’s stand at the Cleaning Show in March 2017 showing the new On Demand Machines. xv)Mr Bresnihan described this development as “absolutely fundamental to our brand now” and agreed in cross-examination that it was a “sea-change” for C and “completely different” from the DRYVER machines. The range eventually extended from floor-scrubbing machines to vacuum cleaners to carpet cleaners to floor rotary machines to external sweepers to escalator cleaners and beyond. He said, “we were probably the first retailer in this space to move into labelling our own products (augmenting the significant goodwill that we already had from our servicing and sales of ‘co-branded’ products), which made us quite unique.” It was put to Mr Bresnihan that “In so far as anyone is now confused between square ICE logo products and ICE Group products, that is because of that change, is it not?” to which he replied, “The confusion comes from them being very similar” and used in relation to floor cleaning machines.xvi)Since 2014, C has sold and rented its ICE Machines alongside third party machines, but the proportion of the business attributable to its ICE Machines has increased over time. In 2020 he said that the majority of the business was attributable to its ICE Machines. As at the trial date, Mr Bresnihan estimated that approximately 90% of its sales, rental and maintenance business is related to C’s ICE Machines, and 80-90% of its customer base falls into the service provider category.62.Mr Edwards was employed by CES in 2014 when discussions started with C which eventually led to C’s purchase of CES at the end of 2016. He said in 2014 there was “no doubt in my mind that [C was] operating on a national scale” – they had big retail customers like Morrisons and shopping centres and were quite active placing machines in the retail market. He says that by then, CES was not big enough to compete with C or manage the big service contracts C had.63.Mr Killi accepts in his witness evidence that from 2013 C was servicing potential customers across England, but says that it did not have a significant nationwide presence, and draws a comparison with the market awareness of Karcher, a large manufacturer of consumer and professional cleaning equipment. The fact that a large global cleaning equipment manufacturer that advertises its consumer products on daytime television has a high recognition amongst potential customers really has nothing to do with whether or not C had a national operation at the time. It is a non sequitur. In oral evidence he accepted that for at least the last five to ten years C has been one of the largest independent distributors in the UK along with Killis, and that it was a major supplier with a turnover of over £9,000,000 in 2010. 64.I am satisfied that C did have a significant nationwide presence and was servicing customers all across the country from at least 2013.The Ice Group business and branding65.Mr Pang joined the ICE Group (then called International Cleaning Equipment, not Intelligent Cleaning Equipment), in 2010. ICE Group had been founded by Mr Simon Chen, with whom Mr Pang had worked at Mr Chen’s previous venture, Viper Group. Viper Group had been purchased in 2007 by Nilfisk-Advance, a Danish cleaning equipment company. Mr Pang is based in Dongguan City, Guangdong, China where the ICE Group’s production facility is located.66.Mr Pang’s evidence is that the logo which was later registered as D1’s ICE Logo was designed for the ICE Group in December 2010, by Robert Russell, a graphic designer based in Michigan, USA. The ICE Group designed and manufactured its own products, and production and sales first began in 2012. Mr Pang says that this logo has been used continuously by the ICE Group on its products, packaging material, promotional materials, product documentation and advertising materials over the years until today. There are multiple examples of the use of this logo in the trial bundle, the earliest of which appears to be on an operator manual for a model 120B/120BT cleaner from January 2012.67.Mr Pang says that he was responsible for exports to Europe, including the UK, up to and including 2019. He says sales to the UK for that period were made directly from Guangdong or from Hong Kong. In 2013 he was introduced to John Elmore who ran Worldwide Cleaning Services (“WCS”), and Mr Elmore subsequently visited ICE Group in China. ICE Group appointed WCS as exclusive distributor of the ICE Group products in the UK for the period from 1 June 2013 to 31 December 2014, and I have seen a letter notifying WCS of this dated 4 September 2013. WCS continued as an exclusive distributor after 31 December 2014, and I have seen another letter of appointment dated 7 April 2016 continuing this appointment until 31 December 2017. Although there is a break in the documentation I accept the Defendants’ evidence that WCS was the exclusive UK distributor of ICE Group products from 1 June 2013 to 30 December 2017.68.Mr Pang describes the process which the ICE Group undertook to protect D1’s ICE word mark and logo as a trade mark in different jurisdictions of the world, including by filing International Registrations under the Madrid Protocol on 18 June 2015 (based on their two US trade mark registrations which had been filed on 5 March 2014 and registered on 7 April 2015), which were registered on 18 June 2015. It is these EU registrations which were later designated as comparable marks in the UK. 69.Mr Pang’s written evidence is that when the ICE Group applied for trade mark protection they had no idea that C was using ICE as an abbreviation of its company name, and they were not aware of C’s ICE Logo. He says that the ICE Group had very little knowledge of the UK market at the time, and he was not alerted to the fact that C used C’s ICE Sign or C’s ICE Logo, or C’s Marks until C sent the Ice Group a cease and desist letter on 2 July 2019.70.However, I am satisfied that Mr Pang’s evidence on this point is not accurate, and he accepted this in cross-examination. I have seen an email from Mr Elmore of WCS to Mr Pang of October 2014, when Mr Elmore tells him that there is a “company called I.C.E. already established in the UK market” and that he has “overcome the legals on this matter” by “marketing the brand as International Cleaning Equipment in the UK”. Accordingly I am satisfied that Mr Pang did know from October 2014 that C was established in the UK market and abbreviating its company name to ICE, or I.C.E, and that his UK distributor had identified this as a legal issue which led him to market the ICE Group’s brand under the full brand name, which was then International Cleaning Equipment. I also note that a few months earlier, in July 2014, Mr Marston of C had emailed Mr Chen of the ICE Group (and Mr Pang accepted in cross-examination that he was copied into, and saw, that email) in which Mr Marston drew attention to the similarity in their company names and their identical abbreviation. I will come back to that email.The Ice Group’s UK sales 2013-2019 – WCS as UK distributor71.Mr Pang says that from 2013 until 2019, WCS made regular purchases of ICE Group products and ICE Group invoiced WCS sums ranging from under US$32,000 in 2013 to almost US$248,000 in 2016, down to US$167,000 in 2018 and just US$792 in 2019. These products were all purchased ex-works by WCS. 72.Mr Bresnihan describes WCS as “a very small player”, “essentially a website”, “a minnow” and “a simple webshop type business operating on a drop shipping type of model with little or no stock in the UK… they were certainly not a competitor or anything we had to be concerned about”. Mr Bresnihan said that between 2014 and 2018 C was experiencing the most significant growth period in its history, and “[WCS] just wasn’t significant enough to pay any attention to”. 73.Mr Edwards’ unchallenged evidence supports this: he says that in around September 2014 (shortly before he placed an order with WCS for D1’s machines from his previous employment at CES) WCS was operating as a web shop/to order with really limited supplies in the UK, and that he did not view them as a competitor even to CES. I remind myself he characterised C as so much larger than CES at this point that CES could not really compete with them. Mr Killi in his second witness statement takes objection to the characterisation of WCS as a minnow, saying that WCS, although small, was a privately owned local company which had a presence that was felt in the market, and it and John Elmore, its CEO, were known to Killis, in the trade in which, he says, “everyone knows everyone”. I accept that as a fair description of the company, whether it was considered by others as a minnow or not is not really the issue. It was small and operated locally.74.Mr Bresnihan says that the information that he has now seen about the number of ICE Group’s machines that WCS sold in the UK between 2013 and 2018 (being a total of 1,456 units) was about what C was selling in a month. Mr Edwards can identify a fair number of those sales as being to him at CES, and says he was one of only a few customers for the ICE Group’s products in the UK at the time. Mr Killi says that Killis was another, buying ICE Group equipment from 2014 until it became the exclusive distributor in March 2019.75.Mr Pang says that WCS with ICE Group exhibited at large international trade shows in Amsterdam and China, of which I have seen evidence, and that WCS had informed ICE Group that it was also exhibiting ICE Group products at some of the main industry trade shows in the UK. I do not have evidence of the latter and it does not appear to be in Mr Pang’s personal knowledge, so I cannot accept this. I do accept that UK-based trade professionals and large customers attended Interclean Amsterdam, and I have seen photographs of the ICE Group’s stand there in 2014, 2015, 2016 and 2018.C’s awareness of ICE Group selling into the UK76.Mr Edwards’ unchallenged evidence is that he first became aware of the ICE Group on attending the Amsterdam cleaning show for CES in May 2014, where the ICE Group had a stand and was showing equipment. He said he spoke to people on the ICE Group’s stand and took its brochures away. He said that he later struggled to find, but did find, the ICE Group website by searching for “International Cleaning Equipment”. However, Mr Edwards says that his impression was that it was not a UK website, and he did not think that any of its machines were available for sale in the UK. Nor did he believe that the ICE Group was, or was connected with, C as he knew it was a manufacturer from Asia. 77.Mr Edwards says that his colleague at CES followed up with Mr Chen at the ICE Group, who put them in touch with WCS as their UK distributor. He said he knew of WCS, but thought of it as a parts supplier rather than a machine supplier at the time, with a very poor website. Of course, at this time Mr Edwards had no connection with C and was working at CES (eventually bought by C in December 2016), so his knowledge cannot be attributed to C. 78.Mr Bresnihan’s first memory of hearing about D1 selling machines in the UK was that in July 2014 he and Mr Marston tried to arrange a meeting with Simon Chen in China, the purpose of which, he thought, was to explore business opportunities with the ICE Group. 79.Mr Marston sent Mr Chen an email asking for a meeting on 21 July 2014. In it, he opened by noting that they had met briefly in the past, and then saying, “You will also note the similarity in our company names, the abbreviation of which is of course the same”. He described C as being in business for 50 years but seeing dramatic growth in the previous decade and that it “now occup[ies] a prominent position in the UK with significant market share in large contractor sector particular [sic] serving the retail arena”. He says that C has “known of your success particularly with your previous company and observe with interest your latest venture and Asian manufacturing generally. It may be that there are some strategic opportunities for us to pursue particularly bearing in mind the coincidence of the name and brand”. He asks if it would be possible to meet in China. 80.Mr Bresnihan was shown this email in cross-examination and said he knew that the ICE Group was selling products bearing D1’s ICE Logo in the UK when the email was sent. He does not think that he did meet Mr Chen in 2014, and if he did, it was not in China, as he has still never been to China. Mr Pang agrees that Mr Marston did not make it to China for a meeting and I accept that the proposed China trip in 2014 never happened. 81.I find on the balance of probabilities that he did not meet Mr Chen in or around 2014, as I am satisfied neither he nor Mr Marston went to China at that time, and it is not the Defendants’ case that he or anyone else from C met Mr Chen around that time. 82.Although Mr Bresnihan says he did know that the ICE Group was selling products into the UK under D1’s ICE Logo, contemporaneous documents appear to show that he did not seem too concerned about it, in my judgment. I can see that there is a bit of talk on C’s internal emails about the optimum timing for a trip, and consideration of going to China at the end of November 2014. On 1 September 2014, Mr Bresnihan suggests that he doesn’t need to go on the trip and Mr Marston should go with another colleague. In these internal emails to and fro, there is no mention of concern about the ICE Group’s use of the ICE brand. That may be because, as Mr Elmore reported to Mr Pang, he was marketing the ICE Group Products by reference to the full name International Cleaning Equipment. In any event, the meeting seems to be about possible future business opportunities. For example, Mr Marston says on 2 September 2014 that Mr Chen’s “interest in the international market and knowledge of the culture will be invaluable”. 83.This fits with Mr Pang’s evidence. He says that he did not understand from the email that Mr Marston sent to Mr Chen in July 2014 that C was raising any concern about the use of D1’s ICE marks: quite the contrary, he said, he saw Mr Marston as seeking to introduce C and pitching for an opportunity for the parties to work together. He says that although Mr Marston referred to the fact that C used the abbreviation ICE, “I do not recall if we paid any attention to those comments at the time but certainly it never occurred to us that there would be any conflict in the market in the UK between the branding of our products and a local distributor that uses ICE as an abbreviation of its company name”. Although I accept that might have been the case then, I am satisfied by the time Mr Elmore of WCS emailed Mr Pang in October 2014 and mentioned that C was established in the UK market and using the abbreviation I.C.E, such that WCS was marketing the ICE Group products under its then full name of International Cleaning Products, he was fully aware that there was a potential conflict in the market with C. 84.Mr Bresnihan says that he does remember meeting Simon Chen, but this was at a short meeting at the PULIRE trade show in Verona in May 2015. In oral evidence he was fairly sure that he did know by that time that the ICE Group was selling into the UK using WCS as distributors. However, Mr Bresnihan said that he does not think he had any awareness at this time that they were putting D1’s ICE logo on the machines, or what they were calling them, and this contradicts his earlier evidence that he knew they were doing so in at the time of the July 2014 email. He says that in his short meeting with Simon Chen he is sure that they never talked about branding or about them using their ICE brand in the UK. He describes himself as “relatively naïve about branding” back then.85.Mr Pang’s evidence, which he says arises from enquiries he made of Simon Chen in the course of preparing his witness statement, is that the parties did not meet at the PULIRE exhibition in Verona. I am satisfied on the balance of probabilities that they did as I prefer the evidence of C’s witnesses on this point, but the fact that Mr Chen is reported not to have remembered this meeting supports, in my judgment, Mr Bresnihan’s evidence that there was no discussion of trade marks or branding. I am satisfied that it is more likely than not if there was discussion about D1’s use of the ICE brand in the UK, Mr Chen would have remembered this meeting.WCS sales of ICE Group Products in the UK 2013 - 201986.Mr Edwards’ unchallenged evidence as a purchaser of ICE Group products while at CES, is that he did not think that any of the ICE Group’s spare parts sold in the UK were ever branded as ICE, save perhaps paper vacuum bags, but the ICE Group’s machines all came with an ICE round sticker on them which CES would remove and replace with a CES sticker before sending them out. He said that he bought the ICE Group’s products for customers who had previously had Tennant machines, as they looked very similar, and his customers were familiar with them. He says that part of the reason why he removed D1’s ICE branding was because CES didn’t really want to let on to their customers that they were no longer supplying Tennant machines. For the same reason, he said, when invoicing customers CES would generally call D1’s machines “WCS” machines. He said that he also wanted to make sure that people were coming to CES for parts rather than to try and source parts themselves through WCS or the ICE Group directly. 87.Mr Killi, who says that Killis bought ICE Group products from WCS from 2014, remembers that some of the large ICE Group scrubber dryers were promoted by WCS with reference to the WCS brand name, and not ICE Group, but does not remember this being the case for any of the smaller machines which were advertised as ICE. He says that all of the ICE Group machines bought by Killis from WCS came branded with D1’s ICE Logo. 88.At the end of 2016 C bought CES. 89.C’s parts department started buying the ICE Group’s parts from WCS in around 2017 in order to fix ICE Group machines which C had become responsible for, pursuant to various customer service and maintenance contracts. For example, Mr Edwards’ evidence is very clear that CES sold ICE Group machines to Grosvenor (who was a serviced provider with contracts to clean large shopping centres such as Westfield White City) and independently of C’s acquisition of CES, C won the service and maintenance contract from Grosvenor which meant they were contractually obliged to maintain and repair those machines. Also in 2017, Mr Edwards says, the CES business (now owned by C but run quite independently of C for several years after the acquisition) stopped buying ICE Group machines, although continued to buy parts as it continued to service them for customers. 90.Mr Bresnihan was taken in cross-examination to various emails both to and from him and his team members in 2017 which he accepted showed him discussing ICE Group products with a battery supplier called Battery Services in March 2017 and his team member Lee Owen dealing with ICE Group Products in April 2017. 91.The Defendants rely on promotion of the ICE Group products in articles in the industry press, but of the press cuttings relied on, only two are from the UK. The first is an article in Handling & Storage Solutions Magazine in March 2015. This refers to “The new ICE (Intelligent Cleaning Equipment) SMART line range of scrubber-driers from Worldwide Cleaning Support” and is illustrated by a picture of a ride on scrubber drier on which D1’s ICE Logo is prominently displayed. This is the only UK press article before the Court which dates from the time that WCS was distributor. The second is an article in cleaning-matters.co.uk of 14 May 2019 (which Mr Bresnihan describes as one of the industry’s main publications) called “Killis – The rise of the machine”. This refers to Killis as bringing “new, ground-breaking products to the market” including “the new range of ICE machines”. There is a description of ICE and its products over two columns headed “ICE – INTELLIGENT NOT INDUSTRIAL”, illustrated with two photographs of ICE Group machines in which D1’s ICE Logo can be seen on the front and side of each machine. I will come back to that article. The Ice Group’s UK sales – Killis as UK distributor92.Mr Pang says that it was Mr Schless who introduced the ICE Group to Mr Killi of D3 and Killis, and on 1 March 2019 Mr Pang appointed D3 as exclusive distributor of ICE Group products in England, Wales, Scotland and Northern Ireland.93.Mr Schless was not working for the ICE Group at the time the introduction was made. He joined in October 2019 as head of the ICE Robotics EMEA division, becoming a board member and managing director on 29 May 2020. However he says that he had started becoming involved in the ICE Group business in early 2019, and knew Mr Killi and his companies from his previous work for various cleaning machine and vehicle manufacturers in Germany and the Netherlands. I will return to ICE Robotics. 94.Mr Bresnihan’s evidence is that Killis ‘launched’ a wide range of ICE Group machines at The Cleaning Show in the UK in March 2019, each of which prominently displayed D1’s ICE Logo. Mr Killi agrees that it did, and notes that consumer reaction to this branding raised concerns with some of the attendees, stating in his second witness statement: “However, seeing that some customers associated the “ICE” branding with the products sold by the Claimant under its own ICE brand and wishing to avoid any such association with the Claimant’s products, I was inclined to reduce the emphasis on the “ICE” branding on the machines. Around April or May 2019 I asked Michael Pang if the ICE Group could supply us with machines not displaying the “ICE” logo. In response to my request, a number of machines (specifically 125 units) were sent to us from the ICE Group in China, between 10 September 2019 and 15 October 2019, with much of the ICE branding (although not all of it) removed from the machines or replaced with the words “Intelligent Cleaning Equipment”. During the same period, we also continued to place orders with ICE Benelux (which was able to deliver products a lot more quickly) and those products were delivered to us as fully branded with the “ICE” Roundel Logo and name. never tampered with this branding (except perhaps adding a sticker with the Killis details).” 95.Mr Bresnihan was then, in April 2019, forwarded a Linked-in post from Killis saying that it had set up a special profile for “ICE (the Intelligent one with the enviable, good reputation around the world for great service and product quality)” and in May 2019 he saw the article in Cleaning Matters to which I have already referred, in which Killis said it was launching a partnership with “ICE (Intelligent Cleaning Equipment)… Intelligent not Industrial”. The language appears to have caused discontent within C. Mr Bresnihan’s evidence is the language signalled to him that the ICE Group intended to take on the UK market offering a wide range of machines under D1’s ICE Logo, through a more established distributor in the UK than WCS. He obtained legal advice and sent a cease and desist letter to Killis in July 2019. C brought invalidation proceedings at EUIPO in relation to D1’s European trade mark registrations on 12 November 2019.ICE Robotics, Whiz and Softbank96.Mr Schless says that his main mission when he joined the ICE Group in October 2019 was to develop the ICE Robotics business in Europe, and develop the market for the ICE Group’s intelligent cleaning equipment with autonomous capabilities as well as smart, data-driven maintenance. He says that would impact the business model by shifting strongly to a rentals and service model where the supplier has full control over the maintenance and asset management. To that extent, therefore, it could be seen as moving the ICE Group closer to C’s original business model of rentals and service, at the same time as C had moved more towards being a supplier of own-brand equipment. 97.At that point, at the end of 2019, ICE Robotics was operating as a business division of ICE Robotics LLC, a US entity, and utilising a domain ‘icerobo.com’ registered on 19 July 2019, but in May 2020 the ICE Group incorporated ICE Robotics EMEA B.V in the Netherlands as a business unit to take responsibility for sales to the Europe, Middle East and Africa region. This is the company led by Mr Schless. 98.Mr Schless says that much of his initial work with the ICE Group was in the context of ICE Robotics’ relationship with Softbank Robotics EMEA, the robotics development business of Softbank, a Japanese technology investor, where they were collaborating in the development and design of an autonomous cleaning product line called “Whiz”. 99.Mr Bresnihan’s evidence is that Softbank had approached C in mid 2019 to discuss C’s potential involvement in the Whiz project. Softbank told C that they were already talking to Killis and the ICE Group. Stefano Bensi of Softbank emailed Mr Bresnihan and Mr Schless on 25 October 2019 saying that Softbank had decided to use “ICE Robotics as European Distributor” and telling C that if they wanted the Whiz, they would have to sign up with ICE Group and deal with their “new entity”. This is probably a reference to Ice Robotics EMEA B.V.Meetings between C and the Defendants in London and Las Vegas, November 2019100.After their introduction to each other, on 7 November 2019 Mr Schless and Mr Bresnihan arranged a meeting to discuss Whiz in a restaurant at Kings Cross in London on 12 November 2019. Mr Bresnihan forwarded the email correspondence to Mr Marston and asked if he wanted to attend. He said he did, and that it reminded him that the trade mark position still had not been concluded. He said he would deal with it that afternoon. 101.The three met on 12 November 2019. They discussed Whiz, which Mr Schless accepted in cross-examination had not been launched in the US or the UK at that point, although he said the product was in a warehouse available for end users. Mr Bresnihan is adamant that there was no discussion of cobotics or cobots at that meeting. He says that he was not shown or given any documentation about Whiz and Mr Schless does not dispute that. On the afternoon of 12 November 2019, after that meeting, C filed its invalidation actions against D1’s 2015 Trade Marks at the EUIPO. 102.Mr Bresnihan and Mr Marston arranged to meet with Mr Schless and Mr Chen at a breakfast meeting at the ISSA Las Vegas cleaning show on 20 November 2019. There was some confusion in some of Mr Schless’s witness evidence about who was at this breakfast meeting, but I am satisfied that is the list of participants. Mr Bresnihan says that “We talked about their use of the word ICE and I remember clearly at the meeting they accepted they would stop using “ICE” in the UK to promote their machines and would instead use “Intelligent Cleaning Equipment”. He says this was confirmed by Mr Killi when he met with him later at his booth at the same show. Mr Bresnihan says that C thought they observed the Defendants “stopping use of ICE [in the UK] in the short term, and its probably fair to say that it was a good few months that they pulled back from using ICE. The pandemic then made all of use cool down operations after March 2020 and so not much happened after an incredibly difficult period for all of us. It didn’t take long, however, for us to notice that the word ICE started to appear on the Killis website and on social media, and so forth.”103.C’s position that the Defendants agreed to stop using ICE branding in the UK, at those meetings in Las Vegas, is disputed. Mr Schless accepts that the trade mark issue was raised, and that C’s representatives complained to him and Mr Chen about “aggressive marketing” by Killis. He remembers them as being upset. He says that the parties did not reach agreement on any issue in this meeting, or the afternoon meeting with Mr Killi which focussed entirely on the Whiz/Softbank opportunity. However, he says: “…the sentiment of the discussion was that if we were going to work together (on WHIZ) Killis should probably avoid using the marketing messages that can be perceived by the Claimant as aggressive. There was also a discussion about use of the full name “Intelligent Cleaning Equipment” in relation to the ICE Group products in the UK. Again this was in the context of trying to find ways to work together and the Defendants made no such offers or promises. We certainly did not suggest (let alone agree) that we would stop using “ICE” in the UK. The discussion was about using the full name in our marketing in the UK but there was never any suggestion that we would stop using “ICE” or the ICE Roundel Logo on our products… this would have been entirely contrary to our position. By the time we met with Messrs Marston and Bresnihan in Las Vegas we had already decided that we were going to resist the Claimant’s threats of legal proceedings and that the Defendants would continue using the “ICE” branding and the “ICE Roundel Logo in the UK”.104.Mr Schless said in his witness statement that he “cannot believe that this was their understanding from our discussions”, and in cross-examination was adamant that “We said that we would not stop using our ICE mark… we told them that we would not stop using our ICE mark”. He denied allowing Mr Marston and Mr Bresnihan to leave that meeting thinking there was a scope for a commercial solution which involved the ICE Group not using the sign ICE in the UK. He said “I think for me there were two parts to it: finding an amicable solution, is there a possibility to work together on the basis of Whiz, and I think in that meeting we just made clear that we would not stop using our ICE mark and there was no agreements, no further… procedures defined, I think there was a statement from both sides and that is it”. However, later in cross-examination, Mr Schless suggested that there may have been discussions of possibilities such as adding “Intelligent” or “Intelligent Cleaning” to the ICE Group branding.105.Mr Killi says that he was present at an afternoon meeting in Las Vegas between Mr Schless and Mr Bresnihan, but he was not at the breakfast meeting, so he cannot assist me with what was said there. He says that the afternoon meeting was: “strictly to discuss the Whiz product… we did not discuss the trade mark dispute”, and in his second witness statement said “I was never told that there was going to be any offer by ICE Group to stop using “ICE” in the UK and that we would only use the full name “Intelligent Cleaning Equipment” on ICE Group products… I certainly did not ‘confirm’ to them that we would agree to discontinue the use of “ICE””.106.Mr Killi agrees with Mr Schless that despite the initial concerns he had raised, and his request of April or May 2019 that ICE Group should supply product to Killis stripped of the ICE branding, this decision had already been overturned by the time he and Mr Schless met with the C’s representatives in Las Vegas. He said in his second witness statement: “Later, in October 2019, when Alex Schless joined the ICE Group, we had another discussion on the issue and it was decided that we should revert back to using the “ICE” branding and the ICE Roundel Logo on all ICE Group products to be sold in the UK. The fact that some products were supplied to us with the “ICE” branding largely stripped off or replaced was not a response to the meeting with the Claimant’s representatives in Las Vegas in November 2019. By November it was already decided that we will continue using “ICE”…”.107.Mr Bresnihan says that they also talked about Whiz with Mr Killi in the afternoon meeting. Mr Killi agrees they did, but says that is all they discussed, and when that meeting was over he was left with the impression that the meeting had gone positively and C was keen on the Whiz opportunity.108.Mr Bresnihan says that in Mr Schless’s follow-up email to him after Las Vegas, on 14 December 2019, Mr Schless did not mention the agreement that ICE Group would stop using the brand “ICE”, he referred to the new entity as ICE Robotics UK, and his email sign-off was ICE Robotics. All these matters concerned him from a trade mark point of view.109.Accordingly, Mr Marston of C wrote to Mr Chen of ICE Group on 19 December 2019. He included reference to what he says was agreed at the breakfast meeting in Las Vegas: “fundamentally, we must protect the ICE acronym in our space which very much includes robotics. We were happy with your suggestion that your organisation uses the full name Intelligent Cleaning Equipment in the UK so I am hopeful that we can move forward in that way”. Mr Schless describes that as self-serving, but says that he did not read that email as Mr Marston claiming that the Defendants had agreed at that meeting to stop using “ICE” in the UK, as Mr Bresnihan now claims. Mr Marston also wrote that “We… welcomed the open and constructive discussion and appreciate your pragmatic view in terms of the trademark challenge which we face together”. Mr Schless in cross-examination said that he was unable to explain that reference, but said that although the Defendants had shown a pragmatic view, they “had not found any solution or made any commitments regarding the brand”. The email also suggested that the parties should have further commercial discussions relating to the Whiz products, and proposed that C suspend the EUIPO invalidation proceedings to enable those discussions to take place. Mr Schless says that suggested to him that C was “not serious with regard to its objection to the use of the ICE brand in the UK”, but accepted in cross-examination that he thought, at the time, that C would continue to pursue its challenge to D1’s 2015 Trade Marks.110.Mr Schless accepted in cross-examination that no response to Mr Marston’s email was made by Mr Chen or anyone else at the ICE Group.111.Let me make some findings. On the balance of probabilities I am satisfied that although several issues were discussed at the breakfast meeting in Las Vegas, including:i)C’s clear concerns about use of the ICE sign by the Defendants in the UK and use of the ICE sign by the Defendants in the sphere of robotics;ii)Mr Chen’s suggestion that they might use their full company name or add “Intelligent” or “Intelligent Cleaning” to their branding;iii)the possibility of collaboration together on the Whiz project; andiv)that C would suspend their EUIPO proceedings to allow for those commercial discussions;and although I accept C’s evidence that Mr Bresnihan and Mr Marston believed that an agreement had been reached with Mr Chen that they would stop using the ICE sign in the UK, I find that no concluded agreement was reached. 112.I am satisfied that at the Las Vegas breakfast meeting:i)C left Mr Schless and Mr Chen in no doubt about the scale of C’s trade mark concerns; ii)Mr Schless and Mr Chen indicated and may have gone so far as represented to C’s representatives that the ICE Group and Killis would consider reducing and/or ceasing their use of the ICE brand in the UK or using it together with Intelligent or Intelligent Equipment as Mr Schless suggested in cross-examination; but iii)this was no more than a negotiating tactic to leave the door open for what might be a new collaboration with C over Whiz and to accept the offer from C to suspend the EUIPO invalidation actions; because iv)they had previously agreed between themselves and Mr Killi that they would not reduce or cease their use of the ICE brand; and v)that is why they did not mention trade marks in their follow up emails, but did mention Whiz. In fact no deal was agreed with C about Whiz either then or later.113.On 24 January 2020 C filed a UK trade mark application for C’s ICE Co-Botics Logo in classes 35 and 37. Mr Bresnihan says that C had been involved in the development of autonomous cleaning machines since 2009 or 2010 in partnership with Cleanfix for the production of the “Cleanfix Robo” later known as Robo 40. The Defendants dispute that C was significantly involved in the development of Robo 40, rather C had an involvement in the promotion of it, and I accept that given Mr Bresnihan’s responses to questions in cross-examination. In any event, Robo 40 was trialled with MITIE at Manchester Airport in November 2010 who was an existing customer of C and I accept C had some involvement in that trial. In August 2011 Cleanfix developed a new iteration, the ROBO 20S, which went into production around April 2012 with the intent of launching into Tesco stores, again with MITIE. The development continued, with the launch of the ROBO 2 which was developed in around 2014 – 2015 and launched at Interclean in May 2016. This started life branded as Cleanfix but in late 2016 or early 2017 it was branded the ICE Robo 2, using C’s ICE Logo. That was further developed into an ICE Robo 3 in November 2018. Given the evidence I have heard I am satisfied that C had a 10 year interest in and involvement with robotic cleaning equipment, and had been selling robotic cleaning equipment to the public since at least 2016. 114.Mr Bresnihan says that C was looking for the next innovation in robotic cleaning products. As well as being interested in getting involved with Whiz/Softbank, he met with a manufacturer called Gaussian Robotics at the 2019 Las Vegas show whose product line really excited his interest. I have seen Mr Bresnihan’s follow-up email to Mr Marston on 25 November 2019 telling him about that meeting, and titled “ICE Co-Botics”. The intention was for C to launch those machines at Amsterdam in March 2020, but that physical show was cancelled due to the pandemic so they received a virtual launch in May 2020. They are in C’s grey and blue livery and display C’s ICE Logo, and as Mr Schless accepts, are sold by C as their products. 115.Mr Schless says that C took the cobotics idea from him after he used it at the Las Vegas meetings with Mr Marston and Mr Bresnihan. He says that he had been using the term ‘cobot’ and ‘cobotics’ since about 2016, while working for Future Cleaning Technologies B.V. which had secured a trade mark registration for a logo featuring the word ‘co-botics’ in 2018. Mr Schless says that he promoted the ‘Cobotics’ concept within the ICE Group, as meaning a robot which works as a co-worker alongside a human worker. In evidence are various slide packs produced by Mr Schless at this time: one from September 2019 of an internal presentation at ICE Group which makes no reference to cobots or cobotics, and another of December 2019 of a presentation of the Whiz product aimed at potential partners, which he relies on, and which does refer to cobotics. Mr Schless accepts that he did not show either of the slide packs to Mr Marston or Mr Bresnihan at Las Vegas, but says that he recalls talking about cobots and cobotics with them in Las Vegas. I remind myself that Mr Schless originally remembered Mr Killi being at the breakfast meeting in Las Vegas when everybody else appears to have remembered that he was not, and so I am not sure how reliable his memory is for the detail of that meeting. Mr Bresnihan says he has no recollection of Mr Schless using the terms, Mr Marston says he did not use them. Mr Pang does not mention that cobotics was discussed and nor does Mr Killi in relation to the afternoon meeting (although he was not at the breakfast meeting).116.In cross-examination, Mr Schless accepted that an outsider would have expected him to include the concept in the September 2019 slide pack if he had already been using it at that time. He also accepted that the December slide pack presents cobotics as a brand-new idea. His own evidence states that the ICE Group’s branding moved from ICE Robotics to ICE Cobotics “since 2020”. Taking all the evidence into account I think it is more likely than not that Mr Schless did not refer to cobotics or cobots in his Las Vegas meetings with C’s representatives. The fact that those terms were used by other cleaning equipment manufacturers (including Mr Schless’s previous employer) since at least 2016, and publicly since 2018, suggests that Mr Bresnihan could have come across the term in some other way and I think given C’s interest in robotics generally, it is more likely than not that he did. C’s 2020 Trade Marks117.C filed the application for C’s ICE Co-Botics Logo on 24 January 2020.118.D1 filed the applications for D1’s ICE Cobotics Logo and D1’s ICE Robotics Logo on 18 May 2020. 119.In May 2022, the ICE Group took a stand at the 2022 Interclean Amsterdam Show and branded it with D1’s ICE Cobotics Logo. Following that show, several C’s customers and contacts contacted it expressing their concern, and confusion: i)On 12 May 2022 Steve Caddell of OCS emailed Mr Bresnihan saying that he had “visited a stand hosted by “ICE Cobotics”, believing it was your company… only to find, after me asking where you were, that they were a “different” ICE… My confusion was compounded because the “other” ICE, apart from the name, shared the same branding and colour scheme (grey and light blue).”;ii)On 13 May 2022 Jim Melvin, Group Chief Executive and Chairman of the British Cleaning Council emailed Mr Marston saying “I visited the Interclean show in Amsterdam this week as, amongst other reasons, I am extremely interested in our cobotic approach. I was therefore surprised to see the ICE Cobotics display. I naturally assumed it was your company given not only from the name [sic], but also from the company colours, brand and general appearance. It came as a surprise to find out it was nothing to do with ICE and was a completely separate entity. I have known ICE for some fourteen years and so it was on the basis of my surprise that I felt I should drop you a note, as I am sure I will not be on my own in that regard…”iii)On 13 May 2022 Jamie Hall at Birking Cleaning Services Ltd emailed Mr Marston commenting “I just got back from… Interclean…was surprised and a bit confused by the stand from “ICE Cobotics”. Seeing the name, branding etc went over to say hi to you and your team to then be told a different… company?? Not sure if aware but thought would mention.”