[2024] EWHC 1727 (IPEC)

In effect, the website was offering customers the opportunity to “Buy an eControl AGA” (as pictured, with a warranty and, it seems, available in one of a range of colours) and/or the opportunity to convert an existing AGA Cooker using the eControl System.

In my judgment, these statements taken as a whole were likely to give customers the impression that what they were being offered was an AGA product (an eControl AGA, one of a range of AGA products) and this was something about which the Claimant could legitimately object. In this regard, the reference to the “eControl AGA” was likely to be seen, not as descriptive (or not as purely descriptive) but rather as part of the brand for the product being offered for sale (just as “eR7” is used as part of the brand for the “AGA eR7 model mentioned above (Footnote: ¹³)), and as linked to the “AGA” name which, as set out below, has a highly distinctive character thereby increasing the risk of confusion – see Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc [2024] EWCA Civ 29 at [10(h)]. Similarly, taking these statements as a whole, I find that the references to the eControl System were likely to be taken as references to a system that was connected with the Claimant – certainly in the absence of any statement making clear that what was on offer was not derived from or connected with the Claimant. Accordingly, whilst (for the reasons set out above) I do not think that the Claimant had legitimate reasons to object to the Defendants selling AGA Cookers which they had refurbished and fitted with the eControl System, I find that it did have legitimate reasons to object to the way in which the Defendants went about marketing and selling these cookers. In my judgment, in this context, the interests of the Claimant as a trade mark proprietor outweigh the interests of people (such as the Defendants) dealing with the cookers in the aftermarket.

I make this finding notwithstanding Mr McGinley’s evidence that customers buying an eControl Cooker were making a considered and relatively expensive purchase and would have extensive discussions from which they would have known that they were being offered a refurbished (second hand) AGA Cooker to which the Defendants had fitted their own eControl System. In the first place, although Mr McGinley claimed that such discussions were evidenced in the disclosed documentation, I was not taken to any document that clearly corrected the impression created by the website. In fact, the Defendants’ invoices (which, it seems, were often sent out prior to delivery of the products) would have reinforced the impression that there was a commercial connection between the eControl Cookers and eControl System on the one hand and the Claimant on the other. In those invoices, the cookers were variously referred to an “AGA eCONTROL”, the “supply and fit of AGA in white”, an “eControl AGA”, a “Conversion to AGA GC”, an “AGA Cooker eControl”, an “AGA 100” or an “AGA 100 – eControl”, all of which, in my judgment, unfairly sought to link the eControl Cookers and the eControl System to the AGA brand.

Ultimately, if the Defendants wished to sell these converted cookers, there was a need for them to ensure that customers were not given the impression that the conversion was somehow connected to the Claimant and even, as suggested by the CJEU in Joined Cases C-427/93, C-429/93 and C-436/93, Bristol-Myers Squibb v Paranova A/S at [79(b)], to take steps to dispel such an impression. As set out above, the website and invoices did the opposite.

A point which has concerned me was the extent to which post sales confusion might be relevant to this analysis and this was the subject of further submissions from the parties after my draft judgment was circulated. In this regard, Mr Selmi referred me to Montres Breguet S.A. v Samsung Electronics Co. Ltd [2023] EWCA Civ 1478, where Arnold LJ stated that:

Mr Selmi submitted that these words are relevant to the present case because third parties coming across the eControl Cookers in future would see the “AGA” and “eControl System” badges and would assume that the eControl Cookers were “co-branded” AGA Cookers. He argued that the presence of the eControl System badge would, in effect, lead people to believe that there was a commercial connection between the Claimant and the Defendants and that this gave the Claimant legitimate reasons to object to the Defendants’ activities. In this regard, I note that Mr McGinley accepted that third parties in this situation could be confused, albeit that he believed that such confusion would be dispelled when those people carried out the sort of additional research that he regarded as inevitable.

Again, I have not found this an easy point. However, I have concluded that the presence of this “eControl System” badge on these eControl Cookers does not of itself give the Claimant legitimate reasons to object to the Defendants’ activities.

It seems to me that the presence of the “eControl System” badge on a used cooker could be explained in a number of ways. It is true (as Mr McGinley accepted) that it might lead some people to assume that there was a connection with the Claimant. However, I do not see this as particularly likely in a context where those people are not exposed to statements of the sort made on the Defendants’ website and on their invoices as described above and where (as shown in the above photographs) the badge was positioned quite separately from the AGA badge. In these circumstances, people may well take the badge to be descriptive – an indication that the cooker is fitted with an eControl System. Further, it has to be borne in mind that the issue arises in relation to AGA Cookers that have already been placed on the market by the Claimant. As I have already said, with a long lived product such as an AGA Cooker, it is foreseeable that works will have been done to maintain, service or update it or even to convert it (e.g. from running on a fossil fuel to running on electricity) and it does not seem to me to be unreasonable for a person who has done such work to put some sort of label on the product – not to obscure or diminish the AGA brand, but to indicate that person’s work on the product. Where the work has involved changes in condition, it may even be preferable that some such indication is provided in order to draw attention to those changes. In this respect, the balancing exercise required under s.12(2) seems to me to come down in favour of people dealing with the product in the aftermarket.

In my judgment, therefore, the presence of the “eControl System” badge on the eControl Cookers did not of itself give the Claimant legitimate reasons to object to the Defendants’ activities.