Urbanbubble Ltd & others v Urban Evolution Property Management Ltd & others [2022] EWHC 134 (IPEC).
When consent precludes trade mark infringement:
Amanda Michaels acted for the successful Defendants in an action for trade mark infringement and passing off. Not only was there found to be no likelihood of confusion, but the Claimants were found to have consented to the First Defendant’s use of the name Urban Evolution.
HHJ Hacon held that the trade mark URBANBUBBLE was not infringed by the Defendants’ use of the name Urban Evolution for identical services, nor was there passing off.
The more unusual aspect of the case was the Defendants’ defence to infringement based on what it said was the Claimant’s express consent to use of the name. When the Claimants learned of the Defendants’ venture, they immediately raised an objection, but only to the form of logo chosen by the Defendants. After that had been changed, the Claimants’ director wrote saying “I agree that your logo has now been changed as per my request and it is time to move on. Goodluck with your new venture … it has my blessing…” HHJ Hacon held that this unequivocally demonstrated the Claimants’ consent to the use of the name Urban Evolution. Such consent meant that there was no infringement, even if (as the Defendants’ director had said) he thought there was no need for consent from the Claimants.
Amanda Michaels appeared for the Defendants, instructed by Pinsent Masons LLP
A cautionary tale about joint liability
HHJ Hacon held that the Claimants’ decision to join the Third Defendant, alleging that she was jointly liable for the alleged tortious acts of the First Defendant, was an abuse of process. The Claimants had relied upon her position as a director of the company, but had no grounds or evidence to allege that she controlled its activities. The issue of her alleged liability had been raised at the CMC by the Judge as an issue which should be resolved between the parties, but was pursued through to trial, unsuccessfully.
HHJ Hacon commented that where a Claimant adds an allegation of joint liability against a director without proper pleadings or evidence, a reasonable inference could be drawn that it was done to put unfair pressure on the Defendants. It is all too easy to forget that this could cause distress.
In the circumstances, HHJ Hacon awarded the Defendants their costs of dealing with the allegations against the Third Defendant free from the IPEC caps, pursuant to CPR 45.30(2)(a), over and above the sum of £50,000 awarded on the usual IPEC scale.
