Hayman-Joyce Property Limited v Hayman-Joyce Broadway LLP & Anor
[2023] EWHC 1028 (IPEC)
AGA Rangemaster Group Limited v UK Innovations Group Limited & Anor
8 July 2024
[2024] EWHC 1727 (IPEC)
High Court
AGA sued a company selling old AGA cookers they'd updated. AGA won because the company's advertising made it look like they were working together, even though they weren't. The copyright part of the case failed. The company's boss wasn't found personally responsible.
Key Facts
- •AGA Rangemaster Group Ltd (Claimant) sued UK Innovations Group Ltd and Michael Patrick McGinley (Defendants) for trademark and copyright infringement.
- •Defendants sold 26 retrofitted AGA cookers ('eControl Cookers') with an electric control system ('eControl System') developed by McGinley.
- •Claimant manufactures AGA range cookers, some dating back to 1929.
- •eControl Cookers retained 'AGA' badges and outwardly resembled original AGA cookers.
- •Claimant did not object to the supply of eControl Systems but claimed infringement based on the sale of complete retrofitted cookers.
- •Defendants counterclaimed for invalidity of two of Claimant's six trade marks.
- •The Claimant's case rested on infringement under sections 10(1), 10(2), and 10(3) of the Trade Marks Act 1994.
- •The Defendants primarily relied on the exhaustion of rights defence under section 12 of the Trade Marks Act 1994.
Legal Principles
Exhaustion of rights: A registered trademark is not infringed by the use of the trademark on goods placed on the market in the UK or EEA by the proprietor or with consent, unless there are legitimate reasons to oppose further dealings.
Trade Marks Act 1994, s.12
Legitimate reasons to oppose further dealings include changes or impairment of goods' condition, serious damage to trademark reputation, or false impression of commercial connection with the proprietor.
Trade Marks Act 1994, s.12(2); CJEU Case Law (Dior, Portakabin, Viking Gas, Bayerische Motorenwerke)
Trademark infringement: Use in trade of identical or similar signs on identical or similar goods, causing likelihood of confusion, or taking unfair advantage of, or detrimentally affecting, a trademark's distinctive character or repute.
Trade Marks Act 1994, s.10
Copyright subsistence requires originality – the work must be the author's own intellectual creation, not dictated by technical considerations.
Copyright Designs and Patents Act 1988, s.1(1)(a); Lidl v Tesco
Copyright infringement: Copying a substantial part of a copyrighted work.
Copyright Designs and Patents Act 1988
Section 51 CDPA 1988: It is not an infringement of copyright in a design document to make an article to the design or to copy an article made to the design (unless the design is for an artistic work or typeface).
Copyright Designs and Patents Act 1988, s.51
Joint tortfeasance: Accessory liability requires knowledge of the essential facts making the primary actor's act tortious.
Lifestyle Equities v Ahmed [2024] UKSC 17
Trade mark invalidity: A mark is not registrable if it does not distinguish goods or services, or if its shape results from the nature of the goods, is necessary for a technical result, or gives substantial value to the goods.
Trade Marks Act 1994, s.3
Outcomes
Trademark infringement claim against the First Defendant (UK Innovations Group Ltd) succeeded.
Defendants' marketing and sale of eControl Cookers created the impression of a commercial connection with the Claimant, despite the exhaustion of rights defence not applying due to the manner of marketing and sales (website and invoices).
Copyright infringement claim against the First Defendant dismissed.
Although copyright subsisted in the design drawing, the Defendants' actions were permitted under s.51 of the CDPA 1988 as the control panel was not an artistic work.
Joint tortfeasance claim against the Second Defendant (McGinley) dismissed.
McGinley lacked the requisite knowledge of the essential facts constituting the infringement.
Defendants' counterclaim for invalidity of the 2D and 3D AGA Marks dismissed.
The marks satisfied the requirements for registration, and the Defendants' arguments regarding uncertainty and s.3(2) were rejected.
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