[2023] EWHC 2176 (IPEC)

British Insulated Callender’s Cables was formed in 1945 upon the merger of two existing British cable businesses. According to the Claimant, the company was renamed BICC plc in 1975. The details of the company structure prior to 1999 are not of any real significance in this case, as it is common ground that for many years the company's business included construction services provided under the name Balfour Beatty and a separate business of the manufacture and sale of cables and cable components. The components business was based at Prescot on Merseyside and was at some stage known as BICC Components. Again it is common ground that prior to 1999 the BICC group's branding included use of the brown and orange "hamburger logo" shown below:

In April 1999, BICC plc sold its energy cables business in the UK, including the cable components business. That much is common ground. However, the identity of the purchaser and the terms and impact of the sale of the business were hotly disputed issues before me. It seems likely that BICC Components Ltd ran the components division of the BICC business up to 1999, and Dr Spiller exhibited some documents which supported his recollection that BICC Components Ltd was a subsidiary of BICC Plc. Otherwise, the relationships between the various BICC companies in 1999 and the extent of each one’s business in the UK was not clear to me. It was the Claimant's case that by February 2000 the BICC cables business and the goodwill in the name BICC was owned by General Cable Corporation and that between April 1999 and February 2000 the cables business had been continued under the name BICC General. In February 2000 the business was acquired by Pirelli Cavi E Sistemi SpA through a share purchase agreement, and the cables business was rebranded under the name BICON.

In October 2000, an application was made to register the word BICON as a trade mark in the UK. I do not know the identity of the applicant, but the mark was duly registered and is now owned by the Claimant under No. 2250558 for:

Documents in evidence appear to relate to various different Pirelli companies, and Mr Clarke in his witness statement identified some of these, some of which were previously BICC companies. References to “Pirelli” in this judgment may therefore refer, according to the context, either to the Italian company Pirelli Cavi E Sistemi SpA or to one of its UK subsidiaries. According to the Claimant's director, Dr Darren Spiller, in July 2005 the shares in the Pirelli cables business were sold, and the company was renamed Prysmian Cables & Systems Ltd.

One of the main questions which it is necessary for me to decide is whether the goodwill in the BICC name, which it was common ground existed prior to April 1999, was acquired by Pirelli and is vested in the Claimant. The claim was limited to the name, as no claim was made based upon any possible goodwill in the hamburger logo. In any event, the Defendants claimed that if it had passed to Pirelli at all, the BICC name and any associated goodwill was abandoned when the rebrand to BICON took place in 2000. As a result, as the Defendants pointed out, this is an unusual case, in that apart from selling off some old BICC stock, Pirelli/the Claimant has never traded under the BICC name in which it claims goodwill subsists and upon which its central passing off action is based.

Figures were supplied as to turnover in products sold under the BICON name. These varied from over £3m p.a. in 2007-8, and over £2m p.a. in 2009-14, down to around £1-2m p.a. from 2015 on. It was common ground that the Claimant has goodwill in the BICON name.

The First Defendant is a partnership based in India, which supplied some components to BICC during the 1990s, and later supplied glands and other cable components to Pirelli/the Claimant from about 2005 to 2012. The Second Defendant is a partner in the First Defendant partnership.

In about 2015, the First Defendant started to use the BICC Components name in relation to its own cable components. At first it sold these abroad, and in particular in the Middle East, but in 2017 it started to offer its cable components for sale in the UK under the name BICC Components, and in conjunction with the following device:

In 2008, the Third Defendant had been incorporated as a UK company by a gentleman called Martin van der Zwan, who had been employed by BICC Plc and then by Pirelli/the Claimant. The purpose of that incorporation is unclear, as the company does not appear to have traded whilst in Mr van der Zwan’s control. In 2010, Mr Sanghvi acquired all of the shares in the Third Defendant and in 2017 the shares were passed to his son Neil, who became the sole director of the Third Defendant in 2017. For most if not all of the period since its incorporation, and at the time it was bought by Mr Sanghvi senior, the Third Defendant company appears to have been dormant. Nevertheless, it was common ground that the Third Defendant is and was responsible for a website at the URL www.bicccomponents.uk.com. Initially, this advertised the First Defendant’s cable components for sale in countries other than the UK, but it seems that it began to target the UK market in 2017. One sample page from the website annexed to the Particulars of Claim which (I think) was dated about July 2022, stated:

“The advancements in products and technologies are driven by an ever-evolving human nature to strive for excellence and to constantly improve on what is already available. This is the concept that was driving BICC group over the last fifty years as one of the prestigious business house based out of UK. We at BICC Components have inherited this very Legacy to re-introduce our complete range of cable accessories …”

The Claimant complained, in the Particulars of Claim, that this gave a false impression that the products on offer were those of the owner of the original BICC business or were connected to that business.

The Defendants’ activities came to the Claimant’s attention in 2015, when the First Defendant began to sell BICC Components parts in the Middle East. Dr Spiller said that his colleagues were having to explain that the First Defendant's products were not the “products of the historical BICC group" and the Claimant decided to put out a press release disclaiming any connection to those products. The Claimant's Sales Manager based in Dubai sent out various letters to customers, which had been drafted for him by the Claimant. One such example, dated December 2015, said,

A similar letter signed by Dr Spiller was provided by the Claimant to its distributors, dated 1 March 2016. He said,

Dr Spiller’s letters seem to me to be consistent with a letter exhibited by Mr Clarke, which was written by Jonathan Rawlinson, a manager at Pirelli (I do not know which Pirelli company this was) to a customer in Hong Kong on 5 July 2001, as Mr Rawlinson said “… the glands are manufactured by Pirelli Components (previously BICC Components) … all Gland products will progressively move to Pirelli BICON branding … This change has been done to comply with the conditions of the business sale; the BICON brand and trademark are now the property of Pirelli and have been chosen in order to keep a link to the BICC heritage.”

The Claimant first wrote to complain about the Defendants’ activities in December 2016. It seems clear that at that stage the same or similar points about the legacy of the BICC Components business to those annexed to the Particulars of Claim were made on the Third Defendant’s website, as the Claimant’s trade mark attorneys, Maucher Jenkins, wrote to the Third Defendant on 1 December 2016, saying:

On 11 January 2019, Mr Sanghvi applied to register a UK trade mark for the Defendants’ BICC Components logo. This proceeded to registration under No. 003366406 for “Common metals and their alloys, hardware, sheet metal components” in Class 6 (“the Defendants’ Mark”).

As I have said, the Defendants commenced selling their goods in the UK under the BICC Components name and using their own BICC Components logo in 2017, initially on a small scale. Some point in 2017 was the relevant date for the purposes of assessing the merits of passing off proceedings. Nevertheless, it was not until 4 March 2019 that the Claimant's attorneys wrote again to the Third Defendant complaining of its activities. That letter was in similar terms to the letter of 1 December 2016, and again complained of the misleading nature of the narrative on the Third Defendant's website. There was no allegation of passing off or trade mark infringement. Again, I am not aware of any response from the Defendants.

It is not clear to me when the Fourth Defendant (“SWA”) became involved in the distribution of the First Defendant's products in the UK, but by June 2020 it was promoting itself as the exclusive distributor of BICC Components. One example of its marketing materials (probably dating from 2021) stated “The BICC brand originated in 1945 … BICC is synonymous with quality cables and components and, whilst the cabling side of the business no longer exists, BICC components continues to produce some of the highest quality components in the marketplace.”

In July 2020, the Claimant’s trade mark attorneys, Maucher Jenkins, wrote a letter of claim to SWA. The letter claimed that the Claimant owned goodwill in the BICC name. They did not say that the name had been acquired with the business, as such, but that “in view of the consistently high quality of goods produced by our client, and the consistency with which our client has followed the style of the BICC cables and components, and also in view of the widespread publicity which it attracted at the time of its acquisition of the BICC cables and components businesses, and the continued knowledge, by consumers of the acquisition, by our client, of the BICC cables and components business, our client has acquired a substantial goodwill and reputation in the name BICC in the cables and components businesses.” There was no allegation of trade mark infringement. No substantive response was sent by SWA, but in September 2020 it referred the Claimant to the First Defendant as the owner of the BICC Components trade mark.

It was not until 17 June 2021 that a letter of claim was written to the First Defendant and Mr Sanghvi. Again, a claim was made to goodwill in the BICC name, without asserting that the name had been acquired along with the cables business. Instead, the letter stated that “due to the extensive advertising and publicity which surrounded the acquisition by Prysmian/Pirelli of the BICC cable and components business, the name BICC is still synonymous with our client.” There were similar complaints about misleading statements on the Defendants’ website and the use of the Defendants’ logo. No allegation was made of trade mark infringement in relation to the use of the BICC Components name, although there was an allegation of infringement of another mark, Telcleat (the Defendants admitted liability for infringement of that mark shortly before trial). The letter asserted the invalidity of the BICC Components mark.

These proceedings were issued on 8 July 2022. The claim alleged not only passing off, by use of the BICC Components name and logo, but also infringement of the BICON registered trade mark. The Particulars of Claim stated that the name BICC is still associated with the Claimant. More information was given about the claim to goodwill in response to a Part 18 Request, and at that stage the Claimant alleged that the goodwill associated with the BICC name had been transferred by BICC Plc to General Cable Corporation and thence to the Claimant. The Claimant sought an order for invalidation of the Defendants’ Mark on the basis that it was registered in breach of sub-sections 5(2), 5(3) and 5(4)(a) of the 1994 Act, and that the application was made by Mr Sanghvi in bad faith, contrary to sub-section 3(6) of the Act. A claim was made against Mr Sanghvi as a joint tortfeasor, which was dropped at trial.

Despite a number of references to it in these proceedings, and comments on its similarity to the BICC Components logo (and the Defendants’ mark), no claim was made based upon goodwill in the old BICC hamburger logo.

In their Defence and Counterclaim filed on 26 September 2022, the Defendants denied that any goodwill of the original BICC business had passed to the Claimant, and alleged that any goodwill had been abandoned or extinguished. They admitted that the First Defendant sold various cable accessories, and that SWA distributed them, but denied infringement and passing off. They raised various defences. There was a claim to an estoppel based upon the 2015 letters stating that the Claimant had not acquired the BICC name. A section 11(1) defence was dropped at trial, as was a defence of honest concurrent user. A counterclaim for partial revocation of the BICON mark was also not pursued.

A List of Issues was agreed at the CMC in January 2023. So far as those issues remained live at the close of the trial, they are set out in the Annex hereto.