[2024] EWHC 1727 (IPEC)

This is a trade mark and copyright infringement claim brought by the Claimant against the First Defendant as primary infringer and against Mr McGinley (the Second Defendant) as a joint tortfeasor on the basis of his actions as a director and the person in day to day control of the First Defendant. For convenience, I will, in general, refer to the Defendants collectively.

The Claimant manufactures and sells the well-known AGA range cookers (“AGA Cookers”), versions of which have been sold in the UK since 1929 and many of which are still operating after more than 50 years.

The First Defendant was set up in 2020 to launch a product known as the “Stone Cooker”, a range cooker with an electric control system (the “eControl System”) developed by Mr McGinley. However, the eControl System can also be fitted to AGA Cookers to convert them from running on traditional fossil fuels to running on electricity. In its skeleton argument, the Claimant makes clear that it does not object to the Defendants supplying eControl Systems to be fitted to AGA Cookers in the hands of customers. Its complaint relates to what is described in its skeleton argument as the Defendants’ sale of complete retrofitted AGA Cookers fitted with the eControl System.

The Defendants accept that between October 2021 and June 2022 they sold 26 cookers fitted with the eControl System (some having two ovens, others having four ovens). I will refer to these cookers as the “eControl Cookers”. The Defendants say that these were all AGA Cookers that had been obtained from trade suppliers or as trade-ins from customers which they had, where necessary, refurbished and fitted with the eControl System. As sold, the eControl Cookers retained their “AGA” badges and, externally, looked the same as their AGA equivalents save that, in place of the temperature gauge fitted to the original AGA Cookers, the Defendants had fitted an “eControl System” badge. The two badges can be seen in the photographs below which are of an eControl Cooker that was the subject of a trap purchase which the Claimant made from the Defendants in April 2022.

The Claimant accepts that there is a legitimate aftermarket in the refurbishment and resale of AGA Cookers. (Footnote: ¹) However, it believes that the Defendants’ actions in relation to the eControl Cookers went beyond what is permissible and that the extent of the changes made by the Defendants meant that the cookers being sold were no longer the original AGA Cookers. It claims that in marketing and selling these cookers using the AGA name, the Defendants infringed its trade marks. It also claims that the control panels fitted by the Defendants to the eControl Cookers infringed the copyright in its design drawing for the control panel of its own electronically controlled AGA Cookers.

The Defendants deny infringement and have counterclaimed seeking to invalidate two of the six trade marks on which the Claimant relies.