Case No. IP-2021-000046

129.I have set out the long history of C’s business and I am satisfied that there can be no real argument but that by June 2014 C had accrued substantial and valuable goodwill in both C’s ICE Sign and C’s ICE Logo. I am satisfied that following the rebrand in 2007, C had used C’s ICE Sign almost exclusively when referring to itself to the public, including in press and marketing materials. I am satisfied that it used C’s ICE Logo in the course of trade after 2007, and that trade was very substantial by the relevant date.130.Mr Killi in his cross-examination accepted that C’s turnover as far back as 2010 was significant and would have established it as a significant business at that time, and he further accepted that C is one of the largest independent distributors of professional cleaning equipment in the UK, and has been for the last five to 10 years. I am satisfied that is because it had carried out significant trade in retail, rental and maintenance services under or by reference to C’s ICE Sign and C’s ICE Logo such that they were recognised by the public as distinctive specifically of C’s services, and none other.131.The Ds submit: i)C’s case in passing off should be limited to C’s ICE Logo as C had failed to establish that C’s ICE Sign was a separate and different trade mark in which goodwill had accrued; andii)that such goodwill which had accrued in C’s ICE Logo by the relevant date in 2014 accrued only in relation to C’s distribution, rental and maintenance business, i.e. the sale of services, including distribution services for floor cleaning machines manufactured by third parties, and not the sale of floor cleaning machines. The Defendants distinguish between C’s sale or distribution of third-party manufactured floor cleaning machines to which, it says, no goodwill accrues to C’s ICE Logo or C’s ICE Sign relating to the sale of those goods, and the ICE Group as a manufacturer of floor cleaning machines, to which it says goodwill does accrue to D1’s ICE Logo and D1’s ICE Sign from sales by its distributors in the UK.132.I am not with the Defendants on either point. 133.In relation to C’s Ice Sign I am satisfied it is a separate and different trade mark to which goodwill has accrued: I am satisfied that C has offered goods and services through its website at www.ice-clean.com since at least April 2001, i.e. the domain incorporates C’s ICE Sign with over 12 years continual use until the relevant date for the purposes of section 5(4)(a) TMA; I accept Mr Bresnihan’s evidence that there was a strategic decision to refer to C only as ICE for marketing and brand-related purposes from 2007 and I have seen evidence to support that is what has happened ever since, as set out in my summary of the facts. Of particular support are: Mr Morton’s reference to C as ICE in the case summary of the Co-op deal produced in November 2011; photographs of C’s vans in livery incorporating C’s ICE Sign as well as, separately, C’s Ice Logo; and photographs of C’s stands at various trade shows in the UK branded with C’s ICE Sign as well as C’s Ice Logo; but there is plenty of other evidence in the trial bundles to which I have not specifically referred.134.In relation to the second point, Mr St. Ville in closing made a submission that “the earliest that you have any evidence that any products, carrying C’s square logo on, went out to people, is 2014”. I am satisfied that is not the case. Even putting to one side for the moment C’s substantial and extensive sales of third-party manufactured floor cleaning machines overstickered with C’s ICE Logo since the rebrand in 2007 up to and even after 2016, which I will come back to, I am satisfied that C also sold co-branded floor cleaning machines with Lindhaus, displaying C’s ICE Logo (albeit in black and white) in 2012 and 2013, before beginning to offer the DRYVER machines displaying C’s ICE Logo (albeit in red) in June 2014. 135.In relation to the Lindhaus machines, Mr St. Ville argued that C’s ICE Logo, applied in conjunction with the words “distributed by”, was there to inform customers that C was the distributor of the product, not the producer or manufacturer of it, but that does not answer the questions: (i) whether goodwill arose from such trade, to which I am satisfied that the answer must be yes as that trade went on for several years and in not insignificant volumes, as I have set out; and (ii) whether such goodwill accrued in whole or in part to C’s ICE Logo from such trade. I asked Mr St. Ville if he was arguing for the Defendants that goodwill could not accrue to each brand in a co-branded product, or that this was not an example of that, and he confirmed that he was arguing only the latter, but without really explaining why. I am satisfied that the goodwill arising from sales of the Lindhaus machines branded with C’s ICE Logo would accrue to each of the Lindhaus mark and C’s ICE Logo. Any sales of DRYVER machines by the relevant date would also accrue goodwill to C’s ICE Logo. However, the evidence is that although those were offered to the public from at least June 2014 they were only sold from July 2014 with the first delivery to Sainsburys in July 2014. 136.In relation to the overstickering of third party products sold to customers by C, the Defendants submit that was intended to and had the effect only of promoting C’s repair and maintenance services to the operatives of those machines, and so accrued goodwill in those services and not in the sale of those goods, but there is really no credible evidence to support that submission, in my judgment. Mr Killi says that is likely to have been the reason why WCS and CES did it, but I have Mr Edwards own evidence as to why CES did it, and that evidence is unchallenged and does not accord with Mr Killi’s view. I remind myself Mr Killi is a lay witness of fact, and not an expert. 137.Mr Edwards says it was to brand the machines themselves with CES’s brand in the hope that the customers would not notice that they were obtaining floor scrubbing machines from a different manufacturer to the usual manufacturer supplied by CES. Accordingly, his evidence is that this was a practice in the relevant market for the purpose of strengthening, or accruing goodwill to, the brand placed on the sticker.138.It is difficult to see why C would not have wanted and intended the overstickering to promote all of its business, including its sale of floor cleaning machines which was a key element of its business. Mr Bresnihan’s evidence is, indeed, that one of the reasons that C moved from overstickering to co-branding and then producing its own-brand machines was to further strengthen C’s ICE brand, but I take that as evidence that each of those steps were for the intention of accruing goodwill to C’s ICE Logo and C’s ICE Sign.139.The evidence of C’s witnesses and Mr Killi is that customers purchasing such machines were less concerned about who the manufacturer of the machines was and more concerned about whether it was the right machine for the job, and that customers sought out C and Killis for the provision of specialist advice on the appropriate machines for the job, as well as a full range of products for sale and rental, and associated repair and maintenance services. Accordingly, I am satisfied that goodwill which arose from the sale of goods went far beyond that arising from a simple big box distributor. In my judgment, it would be perverse for me to find in the circumstances of this case that although C sold floor cleaning machines branded with C’s ICE Sign and C’s ICE Logo for years before the relevant date on a very substantial scale, goodwill arising was attributable only to the provision of services and not to the sale of floor cleaning machines themselves. 140.Finally Mr St. Ville argues that C’s ICE Sign is used in relation to a company called Industrial Cleaning Equipment, whose name is shortened to I.C.E and then referred to as ICE, “but always in the context of the company’s name”. He submits that a descriptive name which is shortened to a three-letter acronym which is in itself a meaningful word, is not use of a trade mark in the course of trade. Of course the same could be said in relation to D1’s ICE Sign and Intelligent Cleaning Equipment. In any event, I do not agree. The fact that it is a meaningful word which has nothing to do with cleaning makes it less likely in my judgment that the public, when looking at it, will call the full company name in mind and consider it descriptive of that company, as they might do when considering an acronym which does not form a meaningful word, such as “BBC” which by its lack of meaning, and the fact that it must be spelled out to be said, reminds the public that it is an acronym for the British Broadcasting Corporation.