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England and Wales High Court (Chancery Division) Decisions |
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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Inter Lotto (UK) Ltd v Camelot Group Plc [2003] EWHC 1256 (Ch) (06 June 2003) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2003/1256.html Cite as: [2003] EWHC 1256 (Ch) |
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CHANCERY DIVISION
Strand, London, WC2A 2LL |
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B e f o r e :
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INTER LOTTO (UK) LIMITED |
Claimant |
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- and - |
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CAMELOT GROUP PLC |
Defendant |
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Mr Michael Silverleaf QC and Mr Michael Hicks (instructed by Jones Day Gouldens for the Defendant)
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Crown Copyright ©
Mr Justice Laddie:
"11. In the premises:
(a) by reason of the provisions of section 9 of the Trade Marks Act 1994 ("the Act") and the NLC Licences, the Defendant has at all material times had the exclusive rights in [the '392 mark] ; …
(c) by reason of the provisions of sections 9, 10(1), 10(2) and 30 of the Act and the provisions of the NLC Licences, upon the premises of the particulars of claim (namely that the word HOTPICKS so resembles the words HOT PICK when used in relation to lotteries as to give rise to confusion), the Claimant's use of the words HOT PICK in relation to its lottery game is and always has been unlawful and may therefore not be relied upon by the Claimant in support of any action for passing off against the Defendant which is the lawful user of the trade marks the subject of [the '392 mark]. …
13. … By reason of the facts and matters set out in paragraph 11 above, no goodwill or reputation in the words "Hot Pick" can accrue to the Claimant and the Claimant may not rely upon any use it may have made of the words "Hot Pick" in relation to any case made against the Defendant.
"The claimant's use of its mark is unlawful and cannot found an action
If the defendant is entitled to the benefit of a valid trade mark registration, it has the exclusive right to use the mark. It follows that the claimant's use of the same mark is unlawful. On this basis alone the claim for passing off should fail: ex turpi cause non oritur actio. There has to be a nexus between the illegality and the claim for passing off: ICI v Berk [1981] FSR 1. However, it is difficult to think of a closer nexus than that the use relied upon in support of a passing off claim is an infringement of a trade mark registration. The effect of an unlawfully acquired reputation has been raised before and it has been held that such a reputation is incapable of supporting a claim for passing off." (defendant's skeleton paragraph 3.23)
"The defendant's case is based upon the proposition that a valid trade mark registration which is of such scope as to prevent the specific user relied upon by the claimant to support its claim for passing off entitles the defendant to restrain the claimant from infringing his registration and is therefore a bar to the passing off claim." (paragraph 2, emphasis as in the original)
"Is the 17th October 2001 (the date on which the National Lottery Commission applied under application number 2283392 to register the designation HOT PICKS as a trade mark) the relevant date at which the claimant's reputation and goodwill for its claim in passing off falls to be assessed?"
"No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off."
The origins and development of passing off and trade mark rights.
"I think that the principle on which both the courts of law and of equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his own goods under the pretence that they are the goods of another man; he cannot be permitted to practice such a deception, nor to use the means which contribute to that end. He cannot therefore be allowed to use names, marks, letters, or other indicia, by which he may induce purchasers to believe, that the goods which he is selling are the manufacture of another person. I own it does not seem to me that a man can acquire property in a name or mark; but whether he has or not a property in the name or mark, I have no doubt that another person has not the right to use that name or mark for the purposes of deception, and in order to attract to himself the course of trade, or that custom, which without the improper act, would have flowed to the person who first used, or was alone in the habit of using the particular name or mark."
"The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name, or indeed in any other way, to represent his goods as being the goods of another to that other's injury. If an injunction be granted restraining the use of a word or name, it is no doubt granted to protect property, but the property, to protect which it is granted, is not property in the word or name, but property in the trade or good-will which will be injured by its use."
"While the common law still required fraud, equity did not confine itself to relaxing the standard of dishonesty required before it would intervene. In a series of cases Lord Westbury L.C. "surprised the profession" [per Fry LJ in Newman v Pinto (1887) 4 RPC 580] by holding that there was a right of property in trade marks which was transmissible and enforceable even against innocent infringement. Perhaps Lord Westbury would also have recognised property in trade names, and if so the whole of the law of passing-off as it was then understood could have been re-interpreted in terms of infringement of property rights as opposed to misrepresentation. That, however, was not to happen. The law of trade marks was put on a statutory basis, the law of passing-off continued in terms of misrepresentation, and the idea of passing-off protecting a property right was largely rejected or forgotten until the twentieth century. In retrospect, passing-off and trade mark infringement may be seen as separate torts which to some extent evolved out of the same historical authorities, just as copyright and breach of confidence cannot always be distinguished in early cases on piracy of unpublished literary works." (p 18)
"From and after the first day of July one thousand eight hundred and seventy-six a person shall not be entitled to institute any proceedings to prevent the infringement of any trade mark as defined by this Act until and unless such trade is registered in pursuance of this Act".
"No person shall be entitled to institute any proceeding to prevent or recover damages for the infringement of an unregistered trade mark unless such trade mark was in use before the thirteenth of August one thousand eight hundred and seventy five, and has been refused registration under this Act. The registrar may, on request, grant a certificate that such registration has been refused."
"Nothing in this Act contained shall be deemed to affect rights of action against any person for passing off goods as those of another person or the remedies in respect thereof."
"… when an injunction is granted to restrain the use of a mark calculated to pass off the defendant's goods as those of the plaintiff, by reason of its resemblance to his unregistered mark, it should be so limited as to leave it open for the defendant to use any part, or the whole, of the plaintiff's unregistered mark, if he can do so, in any manner which is not calculated to lead to deception." (p 343)
"I now turn to the claim based on passing-off. It does not necessarily follow that a trader who uses an infringing mark upon goods is also guilty of passing-off. The reason is that in the matter of infringement, as I have already pointed out, once a mark is used as indicating origin, no amount of added matter intended to show the true origin of the goods can affect the question. In the case of passing-off, on the other hand, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. Such proof may be very difficult, but theoretically at any rate the result may be as I have stated."
"No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this Act shall be deemed to affect rights of action against any person for passing-off or the remedies thereof."
Does Camelot have a right to use the '392 mark which overrides Inter Lotto's rights?
"The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.
The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10"
"One characteristic shared by all types of intellectual property to date is that the rights granted are essentially negative: they are rights to stop others doing certain things – rights in other words to stop pirates, counterfeiters, imitators and even in some cases third parties who have independently reached the same ideas, from exploiting them without the licence of the rightowner. Some aspects of intellectual property confer positive entitlements, such as the right to be granted a patent or register a trade mark upon fulfilling the requisite conditions; but these are essentially ancillary.
The fact that intellectual property gives a right to control the activities of others has a number of implications, often inadequately understood. The rightowner does not need the right in order to exploit a market for its goods or services; a patent is not a pre-condition to exploiting one's own invention. By way of corollary, the right gives no liberty to ignore the rights of other individuals (including their intellectual property) or to override public liabilities …" (paragraph 1-04)
"The registration of a trade mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that trade mark for their goods, but it does not give the registered owner of the trade mark any right to use that trade mark if the trade mark would deceive. I conceive that if at the date when application is made to register a trade mark there is no good ground of objection upon the footing that it will be calculated to deceive, and if subsequently by alterations in the character of the business of the two parties respectively the use of the trade mark will be calculated to deceive and a passing-off action were brought by one party against the other, it would be no defence at all on the part of the owner of the registered trade mark to say - 'Deception or no deception I am entitled to it because that is my registered trade mark'. That could not be advanced for one moment. In other words, the registration of a trade mark does not confer any right to do that which could not have been done irrespective of the trade mark, in the sense of doing any acts which would be competition in business. The only right which it confers is a right to restrain others from using that trade mark." (per Buckley LJ at p 262)
"Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a continuous period of five years in the use of a registered trade mark in the United Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that earlier trade mark or other right – …
(b) to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used …"
Is Inter Lotto precluded from relying on reputation and goodwill built up on the back of use of the trade mark which, in the circumstances presumed for this application, constituted infringement of the '392 mark?
"Nobody doubts that a trader may be guilty of such misrepresentations with regard to his goods, as to amount to a fraud upon the public, and to disentitle him on that ground, as against a rival trader, to the relief in a court of equity which he might otherwise claim. What would constitute a misrepresentation of this description, may in particular cases be a reasonable subject of doubt, and it was in the present case the ground of the difference between the two judgments under consideration.
The general rule seems to be that the mis-statement of any material fact calculated to deceive the public, will be sufficient for this purpose."