Intellectual Property Enterprise Court

Claim No: IP-2023-000087 - [2024] EWHC 2947 (IPEC)

Fecha: 21-Nov-2024

David Stone (sitting as an Enterprise Judge)

David Stone (sitting as an Enterprise Judge):

This is my judgment following the one-day trial of this claim for passing off. By a claim form dated 1 June 2021 the Claimant, Laura Thurgood (Ms Thurgood) sued the First Defendant, Danielle Laight (Ms Laight) and the Second Defendant, Wash Wiggle & Wag Limited (WWW Limited) including for passing off in relation to a dog grooming business near Birmingham. Simply and neutrally put, Ms Laight had been involved in Ms Thurgood’s dog grooming business, which Ms Thurgood says traded as WASH WIGGLE & WAG within an approximately 30 mile radius of Redditch (the Territory). Ms Laight then ceased to be involved in Ms Thurgood’s business, and instead groomed dogs on her own under the WASH WIGGLE & WAG name. She incorporated the Second Defendant to do so.

Ms Laight denied passing off, arguing in short that:

Ms Thurgood had not traded sufficiently under WASH WIGGLE & WAG to have established goodwill;

ii)

Ms Thurgood had traded under other names including SCRUFFY2FLUFFY and DOGGY STYLE such that customers would not recognise her business as WASH WIGGLE & WAG;

iii)

Ms Laight was the only groomer in Ms Thurgood’s business in the Territory, and she built up her own reputation – it was that which brought in custom;

iv)

No-one was misled because no-one thought that the grooming services (also referred to as “grooms”) offered by Ms Laight after she left Ms Thurgood’s business were associated with Ms Thurgood; and

Any damage to Ms Thurgood’s business following Ms Laight’s departure was not caused by Ms Laight’s actions, but rather by poor customer service within Ms Thurgood’s business.

The Defendants have admitted that Ms Laight is vicariously liable for WWW Limited’s acts and that the Defendants are jointly and severally liable with one another for their respective acts.

Ms Thurgood’s action was initially filed in the (then) Queen’s Bench Division, because it included a claim for “libel and malicious falsehood”. It also included claims for money had and received and breach of confidence. By consent, the matter was then transferred to the Intellectual Property Enterprise Court by order of Master Thornett (and with the consent of the Chancellor and the Intellectual Property Enterprise Court). The issues were then narrowed, such that the only issue for me to determine following the trial is the passing off claim. As this was a split trial, I only need to determine liability.

At the trial before me, Ms Thurgood was represented by Mr Ian Silcock (instructed by Samuels Solicitors LLP). Ms Laight represented herself, and, with my permission, WWW Limited. If I may say so, despite her stated misgivings at the start of the trial, Ms Laight did an excellent job of her representation, including cross-examining Ms Thurgood’s witnesses. With appropriate breaks taken at her request, she admirably put her points across, including in her opening and closing speeches. Ms Laight told me at the end of the day that she felt she had properly put her case: I agree. The Defendants had previously instructed Thomas Horton LLP and then Star Legal Ltd. Ms Laight’s original Defence was drafted by Dr Robert Whittock of counsel.

There were minor variations of WASH WIGGLE & WAG used by both sides (for example, adding commas, or using AND instead of the ampersand). It does not matter for present purposes – the variations are unlikely to be noticed by consumers of the relevant dog grooming services, and do not affect at all the understanding of the signs used. I have therefore used WASH WIGGLE & WAG throughout this judgment, except when quoting from documents in the case.

The parties were agreed as to the legal principles I should apply: this case therefore turned entirely on the facts. The law on passing off is well-known, and was set out at length in Ms Thurgood’s counsel’s skeleton argument. I therefore do not need to set it out here.