Case No. IP-2021-000046

(“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 (“