Case No. IP-2022-000006

and counsel’s closing submissions, the claim to invalidity was made in general terms in relation to the trade mark, and was not limited to the Class 36 services. However, the Defendants’ skeleton argument addressed only the Class 36 services, on various alternative bases, none of which matches the conclusions I have reached above. It seems to me that offering auctioneering services is a normal adjunct to residential estate agency services, such that use of the name in relation to such services by a third party would have amounted to a misrepresentation and have been actionable as passing off. The inclusion of those services in the Claimant’s specification was therefore a notional expansion into the First Defendant’s area of goodwill. I conclude that the claim for invalidity succeeds for the whole of the Claimant’s specification, and I will make an order invalidating the mark. 80.The First Defendant also claimed that the Claimant’s trade mark application was made in bad faith. The Claimant was said to have registered it with the intention to use it to undermine, in a manner inconsistent with honest practices, the First Defendant's rights and interests in the mark. In case I am wrong on the conclusion I have reached based on s 47, I will deal with the bad faith allegation. There was no dispute between the parties as to the basis of a claim to bad faith. I bear in mind, in particular, the presumption that an application is made in good faith unless the contrary is proved, and the need to make an overall assessment of the facts in order to decide whether the Claimant acted in bad faith (Case C-104/18 Koton Magazacilik Textil Sanayi ve Ticaret AS v EUIPO EU:C:2019:724, paragraph [47]). Even where there are objective indicia pointing towards bad faith, the application may have been made in pursuit of a legitimate objective. Thomas Hayman-Joyce's evidence was that at the time of making the application, he thought that Mr Comber had expressed willingness to take a licence from the Claimant, and there was no suggestion that the Claimant then intended to stop the First Defendant from using the mark. Mr Comber’s request for joint ownership was made after the date of the trade mark application. I do not consider that making the application in those circumstances was contrary to honest practices and I am satisfied that the Claimant did not act in bad faith in making the application.81.Again, in case I am wrong on the conclusions I have reached about the validity of the registration, I move on to consider the question of whether there would have been infringement of the trade mark, if valid. There has plainly been use of a sign identical to the trade mark, as well as of similar signs in the various permutations discussed above, in relation to services which are in part identical to the services for which it was registered and in part similar to them. There could, therefore, have been infringement pursuant to sub-section 10(1) or (2) of the 1994 Act, assuming in the latter case that the use of those signs would lead to a likelihood of confusion.82.However, the Defendants relied upon estoppel and sub-section 11(3) of the Act. As I understand their case, they did not rely upon honest concurrent use as a defence to trade mark infringement, although it had been raised as an issue in the passing off claim. They did not pursue the estoppel argument, but did rely on s 11(3), which provides:“A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.For this purpose an ‘earlier right’ means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of—(a)the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or(b)the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his;and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).”83.The Claimant said that the s 11(3) defence could not apply, because the First Defendant and the partnership before it had not used the name continuously in relation to its services from a date prior to the Claimant or its predecessors’ use of the trade mark in relation to those services. It is correct that the partnership did not make use of the name prior to James Hayman-Joyce’s first use of it, but in the light of my conclusion about the abandonment or severance of James Hayman-Joyce’s earlier goodwill in the Broadway Patch, it does not seem to me that the Claimant can claim that its use in the Broadway Patch pre-dated that of the partnership. I consider that the requirements of s 11(3) would (if needed) be met, to the extent that the First Defendant has goodwill (as I have found above) and has been trading in the Broadway Patch. To that extent, I would have dismissed the claim to trade mark infringement. On the other hand, the Claimant was the senior user of the name in areas outside the Broadway Patch as to which there was never any abandonment etc of James Hayman-Joyce’s goodwill. The s 11(3) defence would therefore not have applied in relation to any trade mark infringements by the Defendants beyond the Broadway Patch.84.There is one further point on infringement. If I am wrong in rejecting the alleged implied licence to use the name, such that the First Defendant had no rights of its own, then that licence would, in my judgment, have included an implied term requiring the licensor to give reasonable notice of its intention to determine it. Setting a deadline of 31 January in the Claimant’s letter of 25 January 2021 was patently not a sufficient period of notice, and in my judgment the minimum period of notice would have been the period needed to rebrand. In the same letter the Claimant indicated that it would allow 3 months to rebrand. The Defendants did not suggest that a longer period would have been needed. On that basis there would have been no infringement prior to 26 April 2021. From that date, the First Defendant would have infringed the trade mark by its continuing use of the Hayman-Joyce name.85.86.Joint tortfeasorship87.Lastly, there is the issue of the alleged joint tortfeasorship of Mr Comber. He was alleged to be the controlling mind of the First Defendant, and to have authorised or procured all of the acts by the First Defendant complained of in the proceedings. This was admitted from the time that James Hayman-Joyce left the business, in February 2022, but denied for the time when he remained a partner in the LLP. 88.The relevant principles were not in dispute, see e.g. Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10.89.Conclusion90.My conclusions are therefore:a.The claim to passing off fails, save in relation to the matters described at paragraphs 73-4 above;b.The counterclaim to invalidate the trade mark succeeds, and the claim to trade mark infringement therefore falls away;c.d.The Second Defendant is jointly liable with the First Defendant.91.This judgment will be handed down remotely, and I will hear argument about the form of Order (if it is not possible for the parties to agree it) at a date to be fixed.Annex AList of IssuesPassing Off1.Whether by and as at November 2020, the C owned goodwill in any estate agency businessunder and/or by reference to the signs Hayman-Joyce and/or Hayman Joyce when used alone or in conjunction with the HJ Get-Up or each element thereof other than in the Moreton-in-Marsh area as defined in the Partnership Agreement. If so, what was the nature and geographic scope of that goodwill.2.Whether by and as at November 2020, D1 owned goodwill in any estate agency business under and/or by reference to the signs Hayman-Joyce and/or Hayman Joyce in November 2020. If so, what was the nature and geographic scope of that goodwill.3.Whether D1 used the HAYMAN-JOYCE Mark under an implied licence from the C and/orits predecessors in title. If so,a.What were the terms of said licence.b.Did D1 act in breach of those terms in the manner alleged in paragraph 27 of the PoC.c.When was the licence terminated.4.Whether the Ds’ use of the Signs (as defined in paragraph 32 of the PoC) or each of themeither alone or in conjunction with the HJB Get-Up or elements thereof in the mannercomplained of in paragraph 29 of the PoC constitutes a misrepresentation.5.If so, whether such misrepresentation has caused or is likely to cause the C damage.6.Whether the Ds’ use of the Signs either alone or in conjunction with the HJB Get-Up wasin accordance with honest commercial practices. If so, whether this constitutes a defence to passing off.7.Whether the C is estopped from pursuing its claim in passing off against the Ds.Trade Mark infringement – sections 10(1) and 10(2)The Ds admit that D1 has used the Signs in the course of trade in relation to services identical to those for which the HAYMAN-JOYCE Mark is registered. However, the Ds contest the validity of the HAYMAN-JOYCE Mark and argue in the alternative that they have a defence to the Claims brought. These issues are dealt with below.8.Whether the Ds have a defence to the infringement claims by reason of s.11(3) of the TradeMarks Act 1994.9.Whether the C is estopped from pursuing its claim for trade mark infringement against the Ds.Copyright10.11.Joint tortfeasance12.Counterclaim13.Whether D1 owned goodwill in any estate agency business under and/or by reference to the signs Hayman-Joyce and/or Hayman Joyce by and as at 05 November 2018. If so, what was the nature and geographic scope of such goodwill.14.Whether the Claimant’s trade mark was applied for with the intention to use it to undermine, in a manner inconsistent with honest practices, D1s rights and interests in the Mark. If so, whether it was applied for in bad faith.1 “(1) All property and rights and interests in property originally brought into the partnership stock or acquired, whether by purchase or otherwise, on account of the firm, or for the purposes and in the course of the partnership business, are called in this Act partnership property, and must be held and applied by the partners exclusively for the purposes of the partnership and in accordance with the partnership agreement.”