[2024] EWHC 1727 (IPEC)

Having heard Mr Carpenter’s evidence, I find that the parts shown above in green (Footnote: ⁹) and the lower (1988) oven were derived from the same AGA Cooker originally placed on the market by the Claimant in around 1988. As regards the other parts shown in the above diagram, Mr Carpenter stated in his witness statement that they had been stripped from other appliances. However, in cross examination, he accepted that they too could be from the same AGA Cooker, with the exception of the upper oven (which was dated 1982 and had been cast in a different foundry and which he concluded had been taken from a different and earlier AGA Cooker) and, on balance, I find that this is more likely.

Mr Carpenter’s evidence was that none of the other parts of the trap purchase product was an original AGA part. Instead, they were new replica parts. He went on to list 27 such parts (16 external (Footnote: ¹⁰) and 11 internal) and to comment on how they compared with the original AGA parts. In many cases, he asserted that the replica part was of a lesser quality than the original part and, in some cases, that it might be unsafe or less safe than the original part. He also identified 8 pieces of electrical equipment that had been added to the cooker – presumably as part of the new eControl System.

These works fall into two categories, first, works which may be regarded as renovation or refurbishment works (works to restore the cooker to the sort of condition in which it had originally been placed on the market by the Claimant) and, second, conversion works (works which changed that condition, such as the fitting of the eControl System and, as emerged in the course of cross examination, the removal of the barrel and oil burner that were part of the previous fossil fuel system). I will deal with these two categories separately.

As regards refurbishment works, Mr Carpenter listed what he regarded as an acceptable level of refurbishment as follows:

It seems to me that most of the works done by the Defendants fell within this list. It is true that there were a substantial number of works and I can see that there may come a point when the extent of the works done will mean that the resulting product is no longer a refurbished or renovated version of the original product but is, instead, a new and different product. However, I do not think that this is the case here. Here (as set out above) the main parts of what makes an AGA identifiably an AGA (i.e. the front and top panels, the doors, both ovens and the dome castings) were genuine AGA parts and, except for the 1982 oven were, as I have found, from the same original AGA Cooker probably placed on the market as long ago as 1988. Further, although a large number of new parts (and the 1982 oven) had been fitted to this cooker, they were for the most part fitted to restore the appearance and/or functionality of the original AGA Cooker (as is clear from the fact that Mr Carpenter was able to compare them with the original AGA parts) and it is hard to see why the Defendants would have fitted them unless the original parts had needed replacing.

Mr Carpenter referred to the need to use “like for like” parts when carrying out refurbishment works. In cross examination, he accepted that it did not matter whether such parts were official AGA parts or were parts sourced from elsewhere. However, he asserted that they should be of the same quality as the originals. I accept that the replacement parts used to refurbish an AGA Cooker should not be of such inferior quality as to seriously damage the reputation of the Claimant’s Marks but, subject to that, it seems to me that there must be some degree of latitude as regards the nature of such parts. In my judgment, with a long lived product such as an AGA Cooker and given that there is a reasonably extensive market in the sale of second hand refurbished AGA Cookers, customers would understand that, if they buy one second hand, it is likely to contain replacement parts and I do not think that those customers would assume that such replacement parts must necessarily be of the same quality as the original parts. I do not think that such issues give the Claimant legitimate reasons to object to further dealings in its AGA Cookers.

I mentioned above that there was a reasonably extensive market in the sale of second-hand refurbished AGA Cookers. For the Claimant, Mr Selmi was critical of Mr McGinley’s evidence on this issue. In particular, he criticised Mr McGinley for listing 55 companies as offering such cookers for sale when, as Mr McGinley accepted in cross examination, the websites for a number of those companies did not refer to the sale of refurbished cookers but only to the provision of refurbishment services in customers’ homes. Nevertheless, I am fully satisfied that there is a market in the sale of second-hand refurbished AGA Cookers. As I have mentioned, this was accepted by Mr Carpenter and another of the Claimant’s own witness, Ms Hyatt, exhibited the webpage of Walter Dix and Co Ltd (one of the Claimants own authorised distributors) which offers “Pre-Loved AGA’s” for sale. For the Defendants, Mr McGinley exhibited websites from a number of companies which were clearly offering to sell refurbished or reconditioned AGA Cookers (Footnote: ¹¹) (albeit without giving details of the extent of the refurbishment work involved).

Mr McGinley also referred to a Which.co.uk article which contained the following statements:

For these reasons, I find that the mere fact that these works were done would not of itself be sufficient to give the Claimant legitimate reasons to object to the refurbishment works carried out by the Defendants.

More difficult is where the works done have effected a significant change in the condition of the goods. In my judgment, converting a fossil fuel AGA Cooker into an eControl Cooker, by removing the barrel and the oil burner contained in it and fitting the eControl System, is clearly a significant change in the condition of that AGA Cooker. However, as set out above, the fact that there has been such a change is not of itself enough. It must still be shown that the trade mark proprietor has legitimate reasons to object to further dealings in the product in that changed condition.

The significant point here is that the Claimant does not object to the Defendants supplying customers with the eControl System to be fitted to existing AGA Cookers. Indeed, it would be hard for it to object if the owner of a fossil fuel AGA Cooker chose to convert that Cookers to electricity. If the Claimant does not object to the supply of eControl Systems for that purpose, then it is hard to see how it could object if those converted cookers were later to come on to the second hand market as a result of being sold by their owners or traded in for new cookers. If those cookers can be accepted on the market, then it is also hard to why the Claimant should object to the Defendants’ actions in fitting eControl Systems to second hand AGA Cookers that it has acquired and then re-selling those cookers - unless, in doing so, the Defendants had led customers or potential customers to believe that the Defendants and/or their eControl System were commercially connected to the Claimant in a way that gave the Claimant legitimate reasons to object.

Accordingly, as with the renovation works, it does not seem to me that the conversion works per se gave the Claimant legitimate reasons to object to the Defendants’ activities.

As set out above, the Claimant may have legitimate reasons to object to the Defendants’ activities where the re-sale of the eControl Cookers “risks, in the light of … their poor quality seriously damaging the image which the proprietor has succeeded in creating for its mark” - see Portakabin at [91].

In the first place, the Claimant relied on the evidence of Mr Carpenter referring to replacement parts which he said were of inferior quality and, in some cases, unsafe. These claims were hotly disputed by Mr McGinley. Given this conflict of evidence and the limitations of a two day IPEC trial, I do not feel that I am able to make any findings with regard to these claims. I would note, however, that I am not convinced that customers buying what they would know is a second hand AGA Cooker would necessarily associate the quality issues raised by Mr Carpenter with the Claimant or with the Claimant’s Marks. Further, as I have already indicated, I do not think they would necessarily expect all of the components of such a cooker to be of the same quality as the original components.

Mr Carpenter also referred to a test which compared (unfavourably) the performance of the trap purchase product with that of an AGA eR7. Mr McGinley rejected the criticisms made in the test report and argued that comparison was unfair as the AGA eR7 was a newer model. He also referred to a successful demonstration by Sarah Whittaker using a cooker featuring the eControl System. Again, I am not sure how I am supposed to resolve this difference (which is in the nature of inadmissible hearsay expert evidence). I am also unsure as to the relevance of this evidence given that the test and demonstration appear to relate to the performance of the eControl System – a system to which, as set out above, the Claimant does not in principle object.

Mr Carpenter also referred to a number of negative reviews of eControl Cookers posted on a Facebook Group called “eControl AGA”. Once again, I do not feel able to draw any conclusions with regard to the criticisms made in these reviews. They were unsubstantiated and hearsay and were largely refuted by Mr McGinley, who also argued that some of the complaints related to eControl Systems that had been fitted to customers’ AGA Cookers by third parties (a practice to which the Claimant does not object).

A particular matter of complaint by the Claimant is that the AGA badge on the trap purchase product was, according to Mr Carpenter, a poor quality replica. Mr Selmi referred to it as a “knock off” AGA badge and argued, on the basis of comments made by the CJEU in Portakabin, that this by itself gave the Claimant legitimate reasons to object to the Defendants’ activities. I do not agree. As I understand it, the comments of the CJEU in Portakabin were in relation to a re-seller’s action in concealing the proprietor’s trade mark. That is not what the Defendants have done. In any event, it unlikely that any customer would remove the badge from the cooker and scrutinise it in the careful way that Mr Carpenter has done. Even if they did, it is difficult to see how this badge would cause serious damage to the reputation of the Claimant’s Marks.

In conclusion, in my judgment, the evidence does not establish that the works done to the eControl Cookers gave rise to a risk of serious damage to the reputation of the Claimant’s Marks so as to give the Claimant legitimate reasons to oppose the Defendants’ activities.

I turn then to the issue whether the Claimant had legitimate reasons to oppose the Defendants’ activities on the basis that the way in which the Defendants had marketed and sold the eControl Cookers had given customers or potential customers the impression that there was some commercial connection between the Defendants (or their products) and the Claimant.

In order to establish that there is the requisite commercial connection, the Claimant must show that the Defendants’ activities were such that normally informed and reasonably attentive customers would be unable, or would be able only with difficulty, to ascertain whether the goods in question originate from the Claimant (as proprietor of the AGA Marks) or from an undertaking economically linked to it or, on the contrary, originate from a third party, such as the Defendants (see Portakabin at [80]-[81] and Viking at [40]).

If this case was simply about the Defendants selling refurbished second hand AGA Cookers then, in my judgment, it is unlikely that a customer or potential customer would have gained the impression that this was an activity connected with the Claimant. As I have indicated above, there is an active market in refurbishing and in re-selling AGA Cookers and a customer buying a second hand AGA Cooker would understand that it may well have been refurbished and would have no particular reason to think that the Claimant was in any way linked to either the refurbishment or the re-sale.

What makes the present case different is the way in which the Defendants went about marketing and selling the eControl Cookers – cookers which were not only refurbished but also fitted with the eControl System. In this regard, the Claimant points to the Defendants’ website as it existed in October 2022. That website contained the following words: