Key Facts
- •Quantum Actuarial LLP (LLP) and Quantum Advisory Limited (Quad) were involved in a complex business relationship stemming from a 2007 reorganization of three legacy companies.
- •LLP, the new entity, provided services to legacy clients on behalf of Old Quad (which became Quad).
- •LLP, without Quad's knowledge, registered four trademarks, including the QUANTUM ADVISORY word mark.
- •Disputes arose regarding the use of the QUANTUM ADVISORY mark and the ownership of the registered trademarks.
- •The High Court found that LLP owed fiduciary duties to Quad and that LLP's use of the mark was licensed only during the Services Agreement.
Legal Principles
Fiduciary Duty
Bristol and West Building Society v Mothew [1998] Ch 1; Arklow Investments Ltd v Maclean [2000] 1 WLR 594; Children’s Investment Fund (UK) v Attorney General [2020] UKSC 33
Goodwill in Licensed Businesses
Wadlow on The Law of Passing Off, 6th ed.; Hayman-Joyce Property Ltd v Hayman-Joyce Broadway LLP [2023] EWHC 1028 (IPEC)
Trade Mark Act 1994, Section 10B
Trade Marks Act 1994
Marussia Principle (Exclusion of Equitable Relief)
Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd [2016] EWHC 809 (Ch)
Equitable Relief for Breach of Fiduciary Duty
Ball v The Eden Project Ltd [2001] ETMR 87; Ennis v Lovell (The Swinging Blue Jeans Trade Mark) [2014] RPC 32
Outcomes
LLP's appeal dismissed.
The Court of Appeal upheld the High Court's finding of a fiduciary relationship between LLP and Quad, and that LLP's licence to use the QUANTUM ADVISORY mark ended with the Services Agreement. The Court rejected LLP's argument of concurrent goodwill.
Quad's appeal allowed in relation to the Q Device Trade Mark.
The Court found that while the Q Device Trade Mark wasn't similar to the main mark under section 10B, its registration was a breach of LLP's fiduciary duty to Quad. Rectification of the register was ordered.