[2023] EWHC 2176 (IPEC)

In this case, there were about 17 years of complete non-use of the BICC mark before the First Defendant started selling its BICC Components goods in the UK. However, in my view it is significant that the Claimant had not simply informed the market that the BICC brand was being discontinued, but had sought to trade off the lengthy BICC heritage by informing customers that BICON products were or would be made according to the same standards, etc. It therefore relied at least to some extent on the reputation of the BICC brand and that may have kept BICC’s reputation alive. The Claimant also relied on the fact that (as Mr Montgomery explained) specifications in building projects may have used the name BICC to refer to products now made by the Claimant, and so repeat orders may have used those codes too, or led to requests for BICC products. Mr Montgomery gave some examples, mostly from Saudi Arabia, some of which asked for a quote for goods identified by the name “BICC BICCON”, which I do not find relevant. However he produced a small number of inquiries from his UK customers which did refer to BICC and a part number, supporting the point about continuing use of BICC codes. Mr McEvoy gave what he said were similar examples, although, as he accepted in cross-examination, these did not necessarily make any use of the BICC name, so that it is clear that this is not a universal practice. The Defendants said that such uses of BICC were to identify a particular product rather than as an indication of origin, but it seems to me that even so they may have kept the BICC reputation alive.

It therefore seems to me that BICC retained some level of reputation in the UK even in 2017 when the First Defendant’s products were first sold here. I have no doubt that this was the Defendants’ belief. It is abundantly clear that the Defendants sought to make a link to the old BICC heritage in using the name BICC Components, as is shown by the references to the BICC “legacy” on the Third Defendant’s website set out at [10] above. Doubtless that was because the Defendants thought that there was some commercial advantage attaching to the old BICC’s reputation. Similarly, Dr Spiller’s letters discussed above indicate that the Claimant also considers it worthwhile referring back to the BICC legacy in relation to its BICON products, as does Mr Montgomery’s company E-Tech Components UK Ltd, at least on the 2023 version of its website in evidence.

However, reputation is not the same as goodwill. In order to have goodwill, it is necessary to have customers in the UK. See e.g. Starbucks (HK) Ltd v BskyB (No 2) [2015] UKSC 31, [2015] 1 WLR 2628 at [21]-[26, [32]-[36] and [52]. Most of the cases cited in those passages related to businesses based abroad, claiming to have goodwill in the UK. None, so far as I am aware, dealt with the unusual position here. The Claimant has customers in the UK (as well as abroad) for its products sold solely under the BICON mark, and between at least 2001 and 2017 it educated them to know that it has no rights in the BICC name. It has made no other use of that brand. Yet it claims goodwill in the UK attached to the BICC brand.

I accept that BICC retains some reputation in the UK, but the question is whether that reputation is just a ‘folk memory’ (as Mr Purvis put it), or whether customers would rely on the quality of the old BICC products from the years up to 2000 when considering whether to buy goods marked BICON, so that it is the reference to BICC which attracts custom. I am satisfied that the parties to this dispute consider that there is an advantage in referring back to the BICC name and heritage. There was also a little evidence before me to suggest that some people in the industry perceive there to be an association between the Claimant and BICC. For instance, a Mr Leach of Cableglands UK Ltd, an important customer of the Claimant, who Mr McEvoy said was aware of this dispute, wrote to him in late 2021 saying that he was aware of that connection. But if the Claimant has never claimed the right to use that name, but has expressly disavowed such a right in the course of promoting its BICON products, it seems to me that it cannot be said that the Claimant has any goodwill in BICC. The alternative is that the Claimant can claim goodwill in a mark which it has not used, because of a reputation built up many years ago by its predecessors in business. I am not persuaded that such a solution can be right, and I conclude again that the Claimant does not have goodwill in BICC.

The Defendants submitted that if the Claimant can claim goodwill, it is no more than trivial and hence not protectable by a passing off action (see e.g. Knight v Beyond Properties [2007] EWHC 1251 at [27]). In light of both sides’ attempts to gain some advantage from referring back to BICC and its heritage, I do not agree. If, contrary to all of my findings above, the Claimant has goodwill in the BICC brand, it is not so very trivial as not to be capable of protection by a passing off action.

This takes me on to the question of misrepresentation, assuming that the Claimant has goodwill in BICC. The Claimant submitted that the questions of misrepresentation and damage answer themselves. It said that the Defendants adopted the sign BICC Components so to create the connection with the historical BICC goodwill. I accept that such was the Defendants’ intention. Mr Sanghvi said that he saw the brand as “an unwanted child” and wanted to revive it. That plainly involved making reference to the original BICC business and the Defendants did exactly that.

The Claimant produced limited evidence of actual instances of confusion. Mr McEvoy in particular provided evidence of what he said was confusion on the part of UK distributors and customers, exhibiting a number of email chains and referring to some telephone conversations he had held with customers. Some of these, for instance in his contacts with a Mr Brian Patterson, yet another ex-BICC employee working in the industry, do not seem to me to show any confusion as to the origin of the BICC Components goods. Mr Patterson seems to me simply to have been drawing SWA’s marketing materials to the Claimant’s attention and, in another email, telling someone at Mr Montgomery’s company that the quality of the Defendants’ goods was not great. He was not confused at all. I think that the Claimant accepts he was at most a “wonderer” (as Jacob LJ put it in Reed Executive plc v Reed Business Information Ltd [2004] RPC 40 at [111]). As for Mr Leach, who I have already mentioned, the Claimant accepted that he too fell into the category of a wonderer rather than someone who was actually confused. I am not sure he was even a wonderer, in the light of the documents, but in the circumstances I need not take that further. The same applies in my view to a query from Chris Gooden, a lady who has also worked in the industry for many years.

Mr McEvoy was also cross-examined about an alleged instance of confusion, where his exhibit showed Mr Locke of Jointing Tech Ltd seeking BICC parts, and apparently attaching a BICC Components’ datasheet to the email inquiry. It was put to Mr McEvoy that his exhibit was incomplete and that there must have been additional emails in the chain, and it was also suggested that it was unclear that the datasheet had been attached by Mr Locke. Mr McEvoy accepted that he could not be sure that the chain was complete, but I do not consider that he or the Claimant can be criticised for this, as the Defendants sought to suggest. However, Mr McEvoy’s evidence about a telephone conversation with Mr Locke was also rather vague. I do not consider that I can safely find that Mr Locke was actually confused as to the origin of the BICC Components products or, if he was, why that was so. Mr McEvoy said that Mr Locke said his colleagues at Jointing Tech told him that BICC was linked to the Claimant, but as Jointing Tech is a customer of the First Defendant, this seems rather odd. In the absence of evidence from Mr Locke himself, the position seems to me to be somewhat unclear.

Given the thousands of inquiries received by the Claimant annually, the examples of alleged confusion discussed above are not persuasive in showing confusion caused by the Defendants’ use of the mark BICC Components amongst the important category of distributors and wholesalers of these parts.

However, the evidence showed that in addition to the larger scale and doubtless better informed distributors and wholesalers, there is a category of customers who are the end users of the goods, perhaps small or medium sized electrical businesses or individual electricians, likely to buy relatively small numbers of the components, some of which sell for a few pence each. Such consumers are likely to be less knowledgeable about the changes in BICC over the years, and also less likely to pay a high degree of attention to the provenance of the goods. In my view, there is a real likelihood that such customers, assuming they were aware of the old BICC name, as might be the case if they looked at either the Third or Fourth Defendants’ websites, would be confused as to the origin of goods marked BICC Components. Accordingly, I find that use of BICC Components for cable components would amount to a misrepresentation of some connection to BICC.

The Claimant also complained of the statements on the Third Defendant’s website which gave the misleading impression that BICC Components had inherited the legacy of BICC. In my view, the statements on the website went well beyond what was justified by the First Defendant having been a manufacturer and supplier of the BICC/BICON products. I find that this was also a misrepresentation and would be liable to lead to confusion.

Such instances of confusion would plainly be liable to cause damage to the Claimant’s business.

I conclude, overall, on passing off, that the Claimant does not have the necessary goodwill to sustain a passing off action based on the BICC brand. If I am wrong on that, then I find that there has been or is likely to have been misrepresentation, and this would cause damage.

I should deal briefly with the pleaded claim by the Defendants that the Claimant was estopped from relying on any goodwill in the BICC brand, in the light of the Spiller letters stating that it had no rights in the name. The difficulty with that defence is, in my view, that the pleaded case that the Defendants had relied upon the representations about ownership of the brand in those letters was not made out on the evidence. First, Mr Sanghvi said that he first saw such letters only in 2019, so perhaps 2 years after the Defendants started selling their goods in the UK. Secondly, it seems to me clear from his first witness statement that the Defendants did not rely upon the letters. He said he had not thought much of the letters at the time, as they reflected what the Defendants already knew. I do not consider that the estoppel defence is made out.

The Claimant claimed that the Defendants’ use of BICC Components also amounted to a misrepresentation likely to deceive the relevant trade into believing that the Defendants’ goods are the Claimant’s goods on the basis of its admitted goodwill in BICON. I analyse the similarity of BICC Components to BICON below in connection with the allegation of trade mark infringement. I do not consider the similarities sufficient to give rise to any misrepresentation. I dismiss the claim that there is also passing off based upon the admitted goodwill in the BICON mark.

Trade mark infringement

It was alleged for the first time in the claim form that the Defendants’ use of the BICC Components sign infringed the Claimant’s registered BICON mark, in breach of sub-sections 10(2) and 10(3) of the 1994 Act.

There was no dispute as to the law relating to a claim for infringement under sub-section 10(2). In order to establish such infringement, six conditions must be satisfied: (i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion.

The principles applicable to the assessment of a likelihood of confusion are well-established. The position was set out recently by Arnold LJ in Match Group LLC and others v Muzmatch Limited and another[2023] EWCA Civ 454, [2023] FSR 18, as follows:

“27 … In order to try to ensure consistency of decision making, a standard summary of the principles established by these authorities, expressed in terms referable to the registration context, has been adopted in this jurisdiction. The current version of this summary (see e.g. Sazerac Brands LLC v Liverpool Gin Distillery Ltd [2021] EWCA Civ 1207, [2021] ETMR 5 at [8]) is as follows:

“(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f)

and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and

(k)

if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.”

The parties disagreed as to the similarity of the BICON mark to the Defendant’s BICC Components sign. The Claimant submitted that I could ignore the “Components” element of the sign, as being wholly descriptive. I decline to do so. I accept that the acronym BICC is the dominant element of the sign, but I am satisfied that it would be inappropriate to ignore the word “Components” or indeed the device element of the sign, as in my judgment neither of these are negligible elements of it. That being so, I consider that the mark and sign are visually different, or have at most an extremely low level of visual similarity due to the presence of “BIC” in both. I consider that the mark will be pronounced as two syllables BUY-CON, and the sign as 7 syllables, B – I - C - C – Com – po - nents. The Claimant accepted that this would be the usual pronunciation of them. Even the first two letters of the acronym would, therefore, be pronounced differently from the registered mark (“Bee Aye” rather than “Buy”). In my view, there is virtually (and realistically) no aural similarity between them. The parties were agreed that the marks had no conceptual meaning, so that this was a neutral point. I conclude that there is, at most an extremely low level of overall similarity between the Mark and the sign. I am satisfied that to the extent that there is any similarity between the Mark and the sign, the differences between them are far more significant. I am not persuaded that there is sufficient similarity overall to pass the ‘threshold’ test of similarity between mark and sign.

The Defendants accepted that they had been selling goods which were identical or highly similar to those in the Claimant’s specification. This factor may, of course, counterbalance a very low level of similarity of the sign to the Mark, if I am wrong in considering that the mark and sign are, overall, dissimilar.

There was some disagreement as to the average consumer in this case and the level of attention with which they might purchase the Defendants’ goods. As I have said, the Claimant submitted that there were two classes of customers. First, a class consisting of distributors and wholesalers. Both sides accepted that such consumers would appear be likely to be reasonably well-informed and make their purchases with a reasonable level of care and attention. The Claimant said that there was a second class consisting of end users, such as small independent electricians, who would be less well informed, and would perhaps purchase small quantities of the goods at modest prices, and accordingly give the marks a low level of attention. I accept the evidence about such purchasers and accept they will pay no more than a moderate degree of care and attention to their purchases.

The Claimant sought to bolster its case on likelihood of confusion by submitting that there was a greater likelihood of confusion in this case because the context in which the sign is used includes the fact that the BICC name is associated with the Claimant, and BICON is known as the successor brand to BICC. My first concern with that submission is that, in my view, it is rather different to the Claimant’s pleaded case. The point pleaded at paragraph 17(iii) of the Particulars of Claim was that there was a likelihood of confusion because of “the association in the industry between the sign BICC and the Claimant’s range of products under the sign BICON.”

The relevance of the context in which a sign is used was considered by Kitchin LJ in Specsavers v Asda Stores [2012] EWCA Civ 24, [2012] FSR 19:

“87 … In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.

88 … The judge approached the issue of the likelihood of confusion arising from the use of the straplines entirely correctly. The average consumer would see the signs “spec saver” and “Spec savings” in the context of the straplines and, indeed, the posters and other materials on which they were used as a whole, and the judge was right to consider them on that basis.”

Context was also considered by the Court of Appeal in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation (“Glee”) [2016] EWCA Civ 41, [2016] F.S.R. 30. The parties’ rival contentions were set out by Kitchin LJ as follows:

“The context of use

71.

As I have explained, in assessing the likelihood of confusion arising from the use of the sign, the court must consider the matter from the perspective of the average consumer and must take into account all the circumstances of the use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign must be considered in context.

72.

Mr Purvis has explained to us that it was strongly argued at trial that, once the particular context in which Fox has used the sign glee is taken into account, it is hard to see how there could be said to be a likelihood of confusion amongst reasonably well-informed and circumspect consumers. He continues that, to be confused, the consumer would have to believe that a quintessentially American TV series about teenage life in a high school had been produced by a comedy or music venue in the UK, simply because of the common element “glee” in their names; alternatively, that the makers of the series had decided to go into the business of setting up comedy clubs in the UK under a different name and a new device. Moreover, he continues, the circumstances of use likely to operate in the average consumer’s mind include the information that the consumer gets from watching the series itself, and anyone who watches it, or even reads about it, will understand that a “glee club” is a descriptive term for a singing club.

73.

Mr Douglas Campbell who has appeared on this appeal on behalf of CEL, as he did below, responds that there is nothing about the name of a TV series which creates a context defence. He says that the show will be referred to in schedules, advertisements and on Twitter and Facebook and the like simply as “glee”. There is nothing about this context which makes confusion less likely. Moreover, there is no reason to suppose that the average consumer watches one or more episodes of the glee TV series, still less that such a consumer would pick up that the term “glee club” is used to refer to a high school singing club.”

More recently, Daniel Alexander KC (sitting as a Deputy Judge of the Chancery Division) considered context at [23]-[25] and [164] of his judgment in Planetart LLC v Photobox Ltd [2020] ETMR 35. Having cited Specsavers [85]-[87], he said,

“24.

In my view, Arnold J, as he then was, in Och-Ziff was saying that the CJEU took the view that, in considering infringement of a registered trade mark, it was not appropriate to look so broadly at the context that use which was prima facie infringing was nonetheless to be regarded as non-infringing because other, separate, acts of the defendant had countered actual deception. An extreme example is where a defendant uses a well-known brand for counterfeit goods but nonetheless makes it very clear that the goods are in fact counterfeit so that no actual purchaser is confused. There may be no actual confusion as a result of the use of the sign but there is nonetheless trade mark infringement because the court must focus on the use of the sign in question not the other statements by the defendant as to the trade origin of the goods.

25.

Accordingly, while it is right to take the context in which the given sign will be seen into account, I am not persuaded that it would be right to expand the view so broadly as to take account of the fact that a given sign only appears in this case after a different sign has been used. To that extent, each use of the signs must be examined separately in what might be described as its "local" context.'

…

164 ... It is also necessary for the court to be cautious in adopting an overly expansive approach to taking account of context in a trade mark claim. One purpose of registered trade mark protection (in which it is distinguished from passing off) is to provide an element of exclusivity in the use of a registered mark, regardless of the wider context in which it is used, so long as the conditions for protection are fulfilled.'”

That passage was cited with approval by Mellor J in a decision handed down after the trial of this matter, in Lifestyle Equities C.V. and anor v. Royal County of Berkshire Polo Club Limited[2023] EWHC 1839 (Ch), in which Mellor J said at [67]: “There are sound policy reasons for not taking an over-expansive view of the context of the allegedly infringing use.” 

Hence the Court is required when assessing the likelihood of confusion to take all surrounding factors into account, which naturally include the manner in which the sign is used, and any surrounding material which might either increase or decrease a likelihood of confusion, yet without taking an overly expansive view of the relevant context. For example, in the O2 and Specsavers cases, the surrounding context included the full text of the Defendants’ advertisements. I am satisfied in this case that it would be going much too far to take into account the fact that the mark which is alleged to have been infringed has, or the goods sold under it have, a connection with another, different sign, which is more similar to the allegedly infringing sign. Creating a ‘bridge’ between the Mark relied on and the impugned sign in this novel way does not seem to me to be an appropriate step in assessing the likelihood of confusion.

In addition, the Claimant advanced a submission that there might be indirect confusion. The circumstances in which a finding of indirect confusion may be made were considered by Arnold LJ in Sazerac Brands, LLC v Liverpool Gin Distillery Ltd [2021] EWCA Civ 1207, [2022] R.P.C. 5 at [10]-[13], referring to the principles identified in L. A. Sugar. For present purposes it is necessary only to note his conclusion that there must be a proper basis for concluding that there is a likelihood of indirect confusion if there is no likelihood of direct confusion.

In my judgment, none of the evidence indicated that there was any confusion between the BICON mark and the sign. Nor was there any evidence before me to prove that BICC Components was or would be associated with the Claimant’s range of products under the sign BICON which would fall into any of the usual L.A. Sugar categories of indirect confusion. Of course, indirect confusion is not limited to the kinds of cases identified in L A Sugar, but I see no other proper basis for finding a likelihood of indirect confusion.

In my judgment, there is no likelihood at all of relevant confusion, whether direct or indirect. I dismiss the claim based upon sub-section 10(2).

As for the claim of infringement of the BICON mark pursuant to sub-section 10(3), the elements which must be proved were again helpfully summarised by Arnold LJ in Muzmatch (supra):

“55.

A proprietor of a registered trade mark alleging infringement under Article 9(2)(c) of the EUTM Regulation, Article 10(2)(c) of Directive 2015/2436 and section 10(3) of the 1994 Act must show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.

56.

It is sufficient for the use of the sign to give rise to a link in the mind of the average consumer that the sign would call the registered trade mark to mind even if the average consumer would not be likely to be confused as a result: see Case C-

252/07 Intel Corporation Inc v CPM United Kingdom Ltd [2008] ECR I-8823 at [60]. This must, like the question whether there is a likelihood of confusion, be appreciated globally taking into account all factors relevant to the circumstances of the case: see Intel at [41].”

The Defendants submitted that the Claimant had not provided sufficient evidence for me to assess whether or not the BICON Mark has the reputation necessary to sustain a claim under sub-section 10(3), for example as to market share and advertising investment, as mentioned by the CJEU in Case C-375/97 General Motors v Yplon SA [2000] RPC 572 at [24]-[27]. However, it is trite law that proving reputation does not impose a particularly onerous requirement upon a trade mark proprietor (see e.g. Enterprise v Europcar [2015] EWHC 17(Ch), [2015] FSR 22 at [120]). It is true that Prysmian produced little beyond its sales figures and some trade literature, but the scale of its use of the BICON mark has been substantial, and it has been continuously used since 2000. This seems to me a case in which the Court may properly infer that the BICON mark has the reputation necessary to sustain a claim under sub-section 10(3).

However, in light of my findings as to the dissimilarity or very low level of similarity of the Defendants’ sign to the Mark, and for the same reasons as I reject the likelihood of confusion, I consider that no link would be made between them. I do not consider that seeing the Defendants’ sign would bring the BICON Mark to mind for either class of average consumer.

In case I am wrong on the likelihood of a link being made, I shall consider the issues of unfair advantage or detriment.

It was common ground that the correct approach to determine whether unfair advantage has been taken of a trade mark was set out by the CJEU in Case C-487/07, L’Oréal SA v Bellure NV, [2009] ETMR 55, especially at [44]. A global assessment is once again needed. The Defendants also referred me to Whirlpool Corporation v Kenwood Ltd [2010] RPC 2 in which, at [136], the Court of Appeal held that it was insufficient to show simply that some advantage was obtained. There had to be an added factor for the advantage to be categorised as unfair, whether due to the Defendant’s intentions or something else.

Here, the Claimant submitted that the entire purpose of the Defendants adopting the sign BICC COMPONENTS, including its own orange and brown logo, was to create the connection with and benefit from the power of attraction of the historical BICC brand. I have some sympathy with that submission, as a matter of fact, especially taking into account the statements about ‘legacy’ on the Defendants’ websites. However, it does not seem to me that this shows the Defendants are or were taking unfair advantage of the BICON mark. Harking back to the heritage of BICC does not seem to me to be taking advantage of the very different registered mark, which the Defendants did not mention. Nor does it seem to me right to take into account the use of the Defendants’ logo or the old BICC corporate colours, when the Claimant did not plead any goodwill connected with them. I reject the allegation of unfair advantage.

As to detriment, in Argos Ltd v Argos Systems Inc [2019] FSR 3, Floyd LJ held at [107]:

“So far as a requirement for a change in economic behaviour is concerned, the CJEU has held that proof that the use of the sign is or would be detrimental to the distinctive character of the trademark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the trademark is registered or a serious likelihood that such change will occur in the future: see Environmental Manufacturing LLP v OHIM (C-383/12) EU:C:2013:741; [2012] E.T.M.R. 54 (at [34] – [43]).”

There is, in my view, no evidence of that kind here. The claim to infringement under sub-section 10(3) therefore also fails.

Validity of the Second Defendant’s trade mark

The mark was applied for on 11 January 2019. It consists of the BICC Components logo. It was registered for common metals and their alloys, hardware, sheet metal components included in Class 6.

The Claimant alleged that the trade mark was invalidly registered on two bases.

First, it said that the mark was registered in breach of sub-sections 5(2), 5(3) and/or 5(4)(a) of the 1994 Act. For the reasons I have given above in relation to the allegations of infringement, I reject the argument based on sub-sections 5(2) and 5(3). As for the objection based on sub-section 5(4)(a), this must follow my findings on passing off. If my primary findings stand, the mark is not invalid. If I am found to have been wrong on that, then it is invalid.

Secondly, the Claimant alleged that the Second Defendant’s trade mark application was made in bad faith, contrary to sub-section 3(6) of the 1994 Act, because he was aware that the Claimant had acquired the rights in the name BICC, and BICC was associated with the Claimant. Hence, the Claimant said, the application was made in bad faith with the intention of undermining its interests. That allegation was maintained at trial. The Claimant submitted that bad faith could be presumed based upon:

Mr Sanghvi’s evidence was that he knew of, indeed he loved, the BICC mark, and at the time of deciding to use it he saw it as “an unwanted child.” He gave some rather confused evidence about the name, but he did accept that he thought its value might be rekindled and restored to its former glory. As I have said, that seems to me plainly to have been the Defendants’ intention. However, Mr Sanghvi said that he did not think there would be any confusion with the Claimant, as it had disclaimed ownership of the BICC brand.

As I have said, the Claimant never made use of the BICC brand on its own goods, and whilst the BICC brand was used in some specifications and sometimes by customers to identify a particular product (or something compatible with it), the mark was not applied to any goods by the Claimant. Instead, it used only the BICON brand from around 2000 onwards. Moreover, for a substantial period before the trade mark application was made in January 2019, the Claimant did not claim that it owned the BICC brand but, on the contrary, in its letters to its distributors in 2015 and 2016, it said that the name had not passed to it with the old BICC cable business.

My primary findings above are that the Claimant did not have goodwill in the BICC brand. If that is right, it does not seem to me that Mr Sanghvi can be said to have acted in bad faith in applying for the BICC Components mark. The trade mark application was made in January 2019. In my judgment, no honest trader knowing that the BICC mark had not been used for around 18 years, especially one knowing of the Claimant’s letters disclaiming any rights in the name, and/or its failure to claim any such right in its initial letter of complaint to the Third Defendant in 2016, would have thought it inconsistent with honest practices to apply for the BICC Components mark.

If my primary findings are wrong, and the Claimant does have goodwill in the BICC brand, I remain unconvinced that Mr Sanghvi acted in bad faith in applying for his mark, in the light of the Claimant’s letters mentioned above.

In the circumstances, the claim for a declaration of invalidity of the Second Defendant’s mark fails.

This judgment will be circulated to the parties and handed down remotely. I will if necessary hear the parties on a date to be fixed as to the terms of the Order which I should make. Time for making any application for permission to appeal to this Court will accordingly be extended until that hearing.

Annex

List of issues (to extent pursued at trial)