AGA Rangemaster Group Limited v UK Innovations Group Limited & Anor
[2024] EWHC 1727 (IPEC)
Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co, Ltd & Ors
27 February 2023
[2023] EWHC 411 (IPEC)
High Court
Two cleaning companies used the same name, ICE. The judge decided the newer company's name was too similar and caused confusion, so they had to change it. The newer company's distributor also had to stop using the name because it was causing problems for the older company.
Key Facts
- •Industrial Cleaning Equipment (Southampton) Ltd (C) and Intelligent Cleaning Equipment Holdings Co. Ltd (D1) both use the ICE mark in the cleaning equipment industry.
- •C has used the ICE mark since 1967, while D1 registered its ICE marks in 2015 and 2020.
- •D1's UK distributor, Killis, used the ICE marks, leading to confusion among consumers.
- •C initiated legal action against D1, Killis, and TL Killis & Sons Ltd (D3) for trade mark infringement and passing off.
- •C also sought to invalidate D1's ICE trade marks.
- •D1 counterclaimed for invalidation of C's ICE marks and infringement of D1's marks by C.
Legal Principles
Trade mark infringement under section 10 of the Trade Marks Act 1994 (TMA)
Trade Marks Act 1994
Passing off requires goodwill, misrepresentation, and damage.
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 491
Trade mark invalidity under section 47 of the TMA, considering absolute and relative grounds for refusal.
Trade Marks Act 1994
Acquiescence under section 48 of the TMA requires continuous inaction for five years with knowledge of the use of the later mark.
Trade Marks Act 1994
Assessment of likelihood of confusion considers visual, aural, and conceptual similarity of marks, and similarity of goods/services.
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] EWCA Civ 24
Joint tortfeasorship requires assistance in the commission of a tort pursuant to a common design.
Fish & Fish Ltd v Sea Shepherd UK [2015] AC 1229
Outcomes
D1's 2015 and 2020 ICE trade marks are invalid.
Likelihood of confusion and passing off with C's marks; D1's 2020 marks registered in bad faith.
Killis infringed C's ICE trade marks.
Likelihood of confusion and unfair advantage/detriment to C's marks.
D3's infringement claim dismissed.
Insufficient evidence that D3 carried out infringing acts.
D1 is liable as a joint tortfeasor with Killis for trade mark infringement.
D1 assisted Killis's infringing acts pursuant to a common design, despite knowledge of the risk of infringement.
D1's counterclaims dismissed.
Invalidity of D1's marks and insufficient evidence of infringement by C.