INTRODUCTION
1.This is judgment after a two day liability-only trial of a trade mark infringement and passing off dispute. 2.The Claimant, Industrial Cleaning Equipment (Southampton) Ltd (“C”) is a company which was incorporated in 1992. It operates a business providing retail, rental and maintenance services for commercial and consumer cleaning equipment. The business was originally set up in 1967 and run through another company of the same name from which C bought the goodwill and assets in 1992, but nothing turns on the identity of the entity carrying out the business at any particular time and I will refer to both as C. Over the years, C has carried out the business using the name ‘Industrial Cleaning Equipment’ and three versions of logos using the acronym ICE. 3.The First Defendant, Intelligent Cleaning Equipment Holdings Co. Ltd (“D1”) is part of the ICE group of companies whose ultimate parent company is Intelligent Cleaning Equipment Company, incorporated in the Cayman Islands (“
- INTRODUCTION
- ICE Group
- Killis
- C’s Trade Marks
- D1’s 2015 Trade Marks
- C’s claims in infringement and passing off
- The Defendants’ defence to infringement and passing off
- C’s invalidity case
- The Defendants’ counterclaim
- C’s Defence to Counterclaim
- Trade Mark Infringement
- Trade Mark Invalidity
- Absolute grounds for refusal of registration
- Relative grounds for refusal of registration
- Passing-off in the context of invalidity (section 5(4)(a) TMA)
- Acquiescence
- in use
- WITNESSES
- Darren Marston
- Mark Bresnihan
- Sean Edwards
- Michael Pang
- Alexander Schless
- Tibor Killi
- THE FACTS
- www.ice-clean.com
- ICE Machines
- DRYVER machines
- agreed
- THE ISSUES
- C’s invalidity claims in relation to D1’s 2015 Trade Marks pursuant to sections 47(2)(b) and 5(4)(a) TMA
- Relevant date
- Goodwill
- Misrepresentation
- Damage
- Conclusion in relation to sections 47(2) and 5(4)(a) TMA
- Statutory acquiescence – sections 48 and 5(4)(a) TMA
- Ds’ invalidity claims in relation to C’s Trade Marks
- C’s invalidity claims in respect of D1’s 2020 Trade Marks
- Sections 47(2)(a) and 5(2) TMA – Likelihood of confusion
- Sections 47(2)(b) and 5(4)(a) TMA – use liable to be prevented by Passing Off
- Ss 47(1) and 3(6)TMA – Bad Faith
- Issue 5 – Infringement of C’s Trade Marks
- Infringement by Killis
- Infringement by D3
- Passing-off
- SUMMARY
- Counterclaim
