Neutral Citation Number: [2011] EWPCC 14
Case No: PAT09083
IN THE PATENTS COUNTY COURT
Court 3
St Dunstan's House
133-137 Fetter Lane
London    EC4 1HD

Date: Friday, 13th May 2011

BEFORE:
HIS HONOUR JUDGE BIRSS QC
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BETWEEN:

	REDWOOD TREE SERVICES LIMITED	Claimant	
	AND		
	WARREN APSEY T/A REDWOOD TREE SURGEONS	Defendant	
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Daily Transcript by John Larking Verbatim Reporters
Temple Chambers, 3-7 Temple Avenue, London EC4Y 0HP
Tel: 020 7404 7464  Fax: 020 7404 7443
www.johnlarking.co.uk
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MR THOMAS ST QUINTIN  (instructed by McDaniel & Co, 23 Portland Terrace, Newcastle upon Tyne NE2 1QS )   appeared on behalf of the Claimant.

MS VICTORIA JONES  (instructed by Colemans Solicitors LLP, 21 Marlow Road, Maidenhead, Berks SL6 7AA)   appeared on behalf of the Defendant.
DAY THREE

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JUDGMENT

JUDGE BIRSS:

01	The trial of this action took place on 20th and 21st April 2011.  I gave judgment orally on 13th May 2011.  This is my judgment in the case.  

02	This is an action for passing off by the Claimant company against the Defendant.  For the Claimant, Mr Thomas St Quintin, instructed by McDaniels, appears and for the Defendant Miss Jones, instructed by Colemans, appears.  The Claimant is a tree surgery and forestry business based in Bisley in Surrey.  It trades as Redwood Tree Services.  The Redwood Tree Services business has, the Claimant contends, been in existence in this area since 1986.  The business was begun by Mr Jonathan Hobbs in 1986.  In the year 2000 Mr Nick Rose bought the business from Mr Hobbs.  Mr Hobbs went to Australia.  In 2003 Mr Rose thought he would move to Canada and so in 2004 Mr Rose transferred the business to Miss Tina James and her daughter Miss Keleigh James.  
03	The Claimant company was incorporated in November 2004 with 90% of the shares held by Mrs James and 10% by Keleigh.  In fact Mr Rose did not move to Canada, he stayed on, and has worked for the business ever since.  Mr Rose does the tree surgery and forestry work; Mrs James does the administration.  Mr Rose went through personal bankruptcy proceedings in 2005.  Keleigh left the business three years ago and from then on Mrs James has owned 100% of the business and is the sole director and company secretary.  Turnover figures have been given for the business over the years.  In the 1990s it grew from about £30,000 a year to £90,000 a year.  In 2003 the turnover was £66,000 and in 2006 the turnover was about £89,000.

04	The Defendant’s business is also a tree surgery.  He is an individual trading as Redwood Tree Surgeons and is based in Eversley in Hampshire, 10 miles from Bisley.  He started his business in 2004 and has run it ever since.  

05	The Claimant says this is a plain case of passing off.  The Claimant contends that customers, knowing of the Claimant, will be deceived by the similarity of the names into employing Mr Apsey instead of thinking that they are using the Claimant.  That is passing off.  The Defendant denies this.  Two principal points are taken.  First, the Defendant challenges the history of the Claimant’s business.  The particular focus is on 2004, which is of course the year Mr Apsey started.  Although accounts have been provided for years either side for the Claimant’s business, there are no accounts for 2004.  The Defendant submits it is not clear anything much was happening in 2004.  Second, the Defendant strongly relies on the fact that the businesses have now been trading side by side for six and a half years and the Defendant submits there is no evidence of any significant confusion at all in all that time.  The Defendant contends that this shows, whatever one’s initial reaction might be, that there is in fact no passing off.

The proceedings.

06	The first complaint consisted of an email in October 2005.  There was no substantive response.  It was followed by a solicitor’s letter in 2006 and a first action began in the Basingstoke County Court in July 2007.  In January 2008 there was an order in that court for security for costs against the Claimants of £18,000.  The Claimant could not raise the funding and the action was struck out with an order for costs.  The Claimant sought advice from McDaniel & Co in August 2008 and they started this action in September 2009 with a Conditional Fee Agreement and After the Event insurance.  An order in November 2009 was made to stay these proceedings until the earlier costs of the Basingstoke action were paid.  They were paid in April 2010.  The Defence was filed in April 2010 as well.  I heard a case management conference in this case in January 2011.  It is not clear to me why it took from April until January for the case management conference to take place but that is what happened.  I directed that the matter should come on for a swift trial – it had gone on long enough.

07	The trial was heard on 20th and 21st April this year.  It did seem at one stage that the Claimant was seeking to make a case of intention against the Defendant.  That is or would be a plea of fraud, a plea of deliberate deception.  However, it is not pleaded.  When I asked Mr St Quintin, he made it clear in opening that it is not part of his case.  He did contend that the Defendant knew about the Claimant’s business when he started his own business – I should say that is something that Mr Apsey denies – but that is a different point.

08	Various late materials arose during the course of these proceedings.  In Mr Rose’s re-examination documents were produced by the Claimant to bear out some of his testimony.  They were invoices dating from 2003.  They came in and Mr Rose had to be cross-examined again for a second time briefly on the second day about the new matters.  At the end of the cross-examination of Mr Warren Apsey, a customer list of the Defendant’s was produced which plainly should have been produced earlier.  I will deal with that in its context below.  I also record there was another further late document from the Claimant.  It was a letter from the Insolvency Service confirming that their records relating to Mr Rose’s bankruptcy had been destroyed.

Witnesses.

09	For the Claimant I heard from the following witnesses.  I heard from Mr Nick Rose.  He explained the history of Redwood Tree Services.  Miss Jones submitted his evidence was not credible.  This related in particular to the bankruptcy and the period of 2004.  I will return to the detail about that later.  He also seemed to have forgotten that he had been a director of the Claimant for some months in 2004/2005.  I am sure that Mr Rose was honestly trying to help the court in relation to the general position but his evidence about the directorship and the bankruptcy did not make sense as compared to the documents.  I am not satisfied that I can rely on Mr Rose’s testimony entirely as to the events of 2004/2005.  I should make it clear that that does not mean that I am rejecting everything that he said about that period.  The other criticisms made of Mr Rose are of lesser weight.  One was that his witness statement said that Mr Hobbs’ old van ‘would have’ had a particular appearance when in fact he knew what it looked like.  In my judgment it indicates that Mr Rose was not a particularly careful witness but I do not regard it as a significant criticism.

10	Mrs Tina James acquired the business in 2004.  Miss Jones criticised her evidence as not being consistent with the documents either.  Mrs James’ evidence was that she had not thought of setting up the Claimant company in January 2004 but did so later.  However, the January 2004 assignment of the business to her refers to Redwood Tree Services Ltd ‘which is soon to become incorporated.’  Like Mr Rose, I am sure Mrs James was honestly doing her best but again her evidence about what happened in 2004 does not fit with the documents.  Like Mr Rose, I am not satisfied that I can entirely rely on her testimony as to the events in 2004.

11	Mr Mark Cross.  He gave evidence of an incident in June 2009.  I will return to the incident in detail later.  He gave his brief evidence entirely fairly.  

12	Mr Tongue or Tonge was made available for cross-examination but not cross-examined.  The Defendant accepted his witness statement.

13	For the Defendant, I heard from the following.  I heard from the Defendant himself, Mr Warren Apsey.  Mr St Quintin submitted that Mr Apsey’s denial, that he had heard of Redwood Tree Services when he set up his own business, was not credible.  I will deal with that point in its proper context.  Apart from that, I found Mr Apsey to be a perfectly good witness.

14	Theresa Apsey, Mr Apsey’s mother.  Mr St Quintin submitted that I should treat her evidence with a degree of caution concerning the extent of the inquiries she had made as to whether customers were confused.  Having heard her evidence, I do not accept that criticism.  In my judgment, Theresa Apsey was a good witness.

15	Mr Broughton.  Mr Broughton gave contradictory evidence about when he had heard of the Claimant.  He attributed it to being flustered.  In my judgment, in fact, Mr Broughton was trying to avoid admitting the extent of his knowledge of the Claimant.  He is a tree surgeon, his company is called Turning Leaf and he lives about two miles from the Claimant.  I did not find his attempt to minimise his knowledge of the Claimant at all credible and I will not rely on Mr Broughton’s evidence.

The law.

16	The necessary elements of an action for passing off are those set out by the House of Lords in the Jif Lemon case Reckitt and Colman Products Ltd v Borden Inc [1990] RPC 341, at p. 406 per Lord Oliver of Aylmerton and at p. 417 per Lord Jauncey of Tullichettle.  They can be summarised as follows: 
(1) that the Claimant’s goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium; 
(2) that there is a misrepresentation by the Defendant whether or not intentional leading or likely to lead the public to believe that goods or services offered by the Defendant are goods and services of the Claimant, and 
(3) that the Claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the Defendant’s misrepresentation.  

17	Miss Jones submitted in a case in which there was parallel trading for six and a half years that the focus should not be on whether it was likely to lead to deception but whether the relevant trading does or indeed has done so.  In my judgment, I should be careful with that submission.  It risks obscuring the issue.  The reason for the submission is Miss Jones submits that there is no evidence of any significant deception having actually taken place.  However, that may not be the end of the matter.  There are at least two possible reasons why there may be no such evidence.  Either it is not taking place (in which case there is no passing off) or it is taking place but not coming to light (in which case there is passing off).  In truth that is a major issue in this case.  I will apply the law including the reference to likelihood as it has been set out already.  In my judgment, the legal test was framed in the House of Lords in Jif Lemon in that way for good reason.

18	There is a point about dates.  It is common ground that the issue of passing off has to be assessed at the point the Defendant started the conduct complained of.  An authority for that proposition is the Pub Squash case (Cadbury Schweppes v Pub Squash, [1981] RPC 429 in the Privy Council).  

19	There was a point about the extent of goodwill.  Both parties relied on the judgment of Mr Justice Laddie in Sutherland v V2 Music [2002] EMLR 28 at p568.  It was common ground between the parties before me that passing off will protect goodwill on a relatively small scale but will not protect goodwill that a reasonable person would regard as trivial.  Mr St Quintin also referred to the well-known case of Stannard v Reay [1967] RPC 589 concerning a “Mr Chippy” chip van that had been trading on the Isle of Wight for three to five weeks.  That was held to be sufficient to generate goodwill on its own facts.

20	There was a point about the “kind” of passing off, as follows.  Mr St Quintin cited the Chelsea Man case (Chelsea Man v Chelsea Girl [1989] RPC 189) for the point that passing off can be directed to suppliers as well as customers.  The point was made at p. 206 at line 24-28 of the judgment if a person deceives a supplier rather than a customer, that can still be damaging.  Mr St Quintin also referred to the passage at the same page at line 35-38.  I accept the submission although in my judgment it is important to distinguish between two different cases.  The reason Mr St Quintin makes the point is to answer the submission from Miss Jones that some of the evidence the Claimant relies on is “mere” or irrelevant confusion, because it relates to suppliers.  In my judgment these two points are like ships passing in the night.  If suppliers are deceived then that can be passing off, on the authority of Chelsea Man, but in analysing the evidence and drawing inferences from it the fact that a confused or muddled person is a supplier rather than a customer is still a relevant factor to take into account in assessing what that evidence may or may not show.  Mr St Quintin referred to a list of misdirected items in Chelsea Man at p. 206.  In my judgment each case has to be decided on its own facts and Chelsea Man is not an authority that such evidence in a different case necessarily establishes passing off.

The facts.

21	I will deal with the facts in chronological order.  The first period is from 1986 to the year 2000 and relates to Mr Hobbs.  He ran the business called Redwood Tree Services and it was based near Guildford with a turnover of something like £30,000-£80,000 a year.  It was a business as a tree surgery.  There were clearly entries in the Yellow Pages (although there were some errors) which demonstrated without any doubt that this business existed and was acting in that fashion.  

22	The second period was from 2000 to 2004.  This is when Mr Rose became involved.  Mr Rose had a business called Forestry Advisory Services in Aberdeenshire.  He came to Surrey but found he could not make a go of the business without contacts, hence he thought it would be a good idea to acquire Mr Hobbs’ business because Mr Hobbs wanted to go to Australia.  The Defendant submitted that there was no evidence that Mr Hobbs had been paid the balance which had been agreed between Mr Hobbs and Mr Rose in order for Mr Rose to acquire the business.  That was some £14,000.  I find as a fact that Mr Rose did pay £14,000 to Mr Hobbs.  For a start, Mr Rose said that he did, and in my judgment the evidence as a whole would not make sense if he had not.

23	The turnover figures in the period up to 2003 were as follows.  In the year to March 2000 the turnover of the business was about £23,000; in the year to 2001 it was £74,000; in the year 2002 it was £82,000; and in the year 2003 it was £66,000 a  year.  It was clear, in my judgment, that the business continued once it had been bought by Mr Rose.  It clearly included dealing with firewood and forestry as well as tree surgery.  However, what is not clear is the extent of the turnover that was attributable to tree surgery and it is also not clear what extent the turnover was attributable to trading under the name Redwood Tree Services.  

24	I say this for the following reasons.  Clearly, the business was doing other things apart from tree surgery, for a start, the Yellow Pages adverts demonstrate that.  It is also clear, in my judgment, that the business was using the name Forestry Advisory Services as well, at least to some extent.  In so far as Mr Rose denied that, I do not accept his denial.  First, the accounts for the year to March 2001 clearly state that the business was using both names, viz., Forestry Advisory Services and Redwood Tree Services.  Second, a quotation dated 15th September 2003 (X10) although headed “Redwood Tree Services” underneath states ‘Forestry Advisory Services, suppliers of tree surgery and forestry equipment to Redwood Tree Services.’  Third, Mr Rose’s bankruptcy petition, which was signed in 2005, provides that he was carrying on business lately as Redwood Logs and Redwood Tree Services/Forestry Advisory Services and then refers to firewood and forestry.  

25	On the other hand, I should say that it is clear that Redwood Tree Services as a name was being used as at least one of the names for Mr Rose’s business.  That can be seen from the succession of Yellow Pages adverts and from the same 2003 document to which I have referred.  The Claimant registered a domain on the internet in 2003.  This was redwoodtreeservices.co.uk.  The registrant was named as Forestry Advisory Services.  The evidence was from Mr Rose that the site was put up sometime after January 2004.  Although it was not corroborated I have no reason not to accept that date as approximately right.

26	The third period relates to what happened in the year 2004 itself.  There are no accounts for that year.  Mr Rose explained that they had all been given to the Insolvency Service.  

27	The Claimant’s case is that the business was assigned to Tina and Keleigh James in January 2004 and then assigned informally into the company in November 2004 upon its incorporation.  

28	Dealing with January first, the assignment document in January refers to a transfer to Redwood Tree Services Ltd but Mrs James’ evidence was that she did not think of incorporating the business until later. That did not make sense given the reference to the company in this document.  There was no evidence in it of the price or value of the goodwill or the business (implying it had no value) but, as Mr St Quintin says, the value of the business does not mean the same thing as the value of the goodwill.  Just because the business may not have had a value overall does not mean the goodwill did not have a value; it could be simply the negative effect of the business’ liabilities such as hire purchase arrangements.  

29	Then at the end of 2004 the Claimant contends that the Redwood Tree Services company acquired the business.  However there is no contemporaneous assignment to the company.  For the purposes of these proceedings a confirmatory assignment was executed many years after the event but while that might ensure the Claimant is the proper Claimant in this case it does not tell me anything useful about what actually took place in the year 2004.

30	There was also evidence in 2005 and 2006 of accounts of the limited company. They contain what must have been a directors’ loan of some £38,000 but Mrs James did not know what it was.  Yet on her case she was the only director.  The forms at Companies House show that Mr Rose was appointed a director of the Claimant in November 2004.  The Form 288A was signed by Mrs James.  There is also a Form 288B showing that Mr Rose resigned as a director in May 2005.  However, Mr Rose and Mrs James maintained that this was all a mistake and that Mr Rose was not a director.  

31	I will return to the 2004 period later. 

32	The fourth period relates to the period after Redwood Tree Services took over the business in 2004 until the present.  Mr Rose remained involved in the business.  I should note that it is clear that his personal position is an important part of the business.  Many of the letters are addressed ‘Dear Nick.’  Although Keleigh was going to work in the business and I do not doubt that she did, she left it about three years ago.  In terms of turnover, I have accounts up to the year 2006 but not later.  The turnover in the year to 2006 was £89,000.  The business included tree surgery, forestry, firewood and bio fuels.  The bio fuels side of the business involves providing material to the bio fuel power station in Slough.  Today and since 2004 the business is based in Bisley.  It is predominantly in Surrey and around the Guildford area.  I should say that I find that it does indeed use Redwood Tree Services as its name.

33	I will now deal with the Defendant Mr Apsey.  The Defendant’s favourite tree is a redwood.  He planted one in his parents’ garden for the Millennium and in evidence there was a picture of it with a Millennium plaque in the year 2000.  He attended a tree surgery course at Merrist Wood College in Worplesdon and worked for some other tree surgery businesses.  He set up on his own in 2004.  He registered his business with Yell at yell.com in August 2004.  He did searches at Companies House on the internet and the Business Register and he found that “Redwood Tree Surgeons” was not being used as a name so he thought he would use that name as his business.  

34	He gave evidence that he had not heard of the Claimant when he chose the name of his business.  Mr St Quintin submitted that that was not true and that he had heard of them.  It certainly seems surprising from the perspective of today in this court that Mr Apsey had not heard of Redwood Tree Services.  Mr St Quintin pointed to the fact that the redwood was his favourite tree and therefore he might notice a business called Redwood Tree Services and he also pointed to Mr Apsey’s proximity to the Claimant’s business given his time at Merrist College in Worplesdon.  However, Mr Apsey maintained that he had not heard of it at the time.  Moreover I bear in mind that whatever the precise extent of Redwood Tree Services’ business in the crucial period in 2004, it was not on any view substantial.  I also bear in mind the uncertainty as to the extent to which the Forestry Advisory Services name was also in use by Mr Rose as well.  In the end there is no evidence that Mr Apsey had heard of the Claimant and in my judgment his denial was credible.  I find that he had not heard of them.  It also means that I make no criticism of Mr Apsey as a witness.

35	From a turnover of £16,000 in the year to 2005 Mr Apsey has grown his business to a turnover of about £116,000 in the year to 2009 and £93,000 in the year to 2010.  As best I can say therefore the Claimant’s and the Defendant’s businesses have been of roughly comparable size in the last few years once the Defendant got going.  In terms of its trading style, the Defendant’s business prominently uses the name Redwood Tree Surgeons but also keeps the name Warren Apsey and the phone number prominent as well.  Today and since 2004 the business has been based in Hampshire primarily in the RG postcode area.  I was provided with a map with flags on it from the year 2004.  The striking thing about the map is that it shows just how close the two businesses are.  I understand that Eversley and Bisley are approximately 10 miles apart.  But it also shows that the M3 motorway represents a fairly clear divide between the two businesses.

Other businesses.

36	On the internet today it is clear that there are numerous businesses using the name Redwood.  These include Redwood Tree Services, a tree surgery in West Sussex and a Redwood UK in Borden, Hampshire, selling arboricultural and forestry equipment.  They, Redwood UK, are 15 miles from the Claimant.

Applying the law to the facts.

37	At one point Mr St Quintin perceived the point taken by the Defendant was that the word redwood was descriptive in relation to tree surgeons because it refers to a kind of tree.  If that is a point that has been taken, I will reject it.  In my judgment, redwood is not inherently descriptive of a tree surgery business and certainly not one in the United Kingdom whatever the position may be in Northern California.  

38	The point which I understood Miss Jones to press more firmly was to question how distinctive Redwood Tree Services actually is in any event.  The evidence shows many, many other businesses using the name “redwood” for all sorts of things.  I have referred already to the business in West Sussex called Redwood Tree Services which is a tree surgery business.  Apparently it limits itself to Sussex but it is striking to hear that there is another business with exactly the same name as the Claimant’s doing the same job with what is obviously an overlapping catchment area at least to some extent.  I also note, as I have mentioned just a moment ago, Redwood UK 15 miles from the Claimant selling forestry equipment.  Having heard the evidence, I find that these tree surgery businesses, both the Claimant’s and the Defendant’s, are highly localised.  Personal recommendations are an important way in which new customers are acquired, as is picking up business simply by working in a particular area and being seen.  There is also a local directory of services called the Little Green Directory.  There is one for Reading, a Wokingham one and one for Guildford.  Mr Apsey thought that Yellow Pages was not a significant source of business for his business.  I accept that evidence.

What was the position in 2004?

39	Miss Jones submitted no goodwill was proved in 2004.  She pointed to a lack of turnover figures and the unsatisfactory nature of the evidence as to exactly what was going on in that period and, for example, how precisely the business was transferred to Mrs James and on to the Claimant.  However, there is evidence of some albeit a very small amount of work being done by Nick Rose at that time.  The extent of the use of the name and exactly what kind of work was being done on any scale is unclear.  

40	However the crucial thing, it seems to me, is that this is not said to be the start of a business.  It is perfectly clear that there was a Redwood Tree Services business beforehand.  Mr Hobbs’ business was clearly successful and it is also clear in my judgment that it continued under Mr Rose’s stewardship from the year 2000.  Thus the business going into 2004 had an existing goodwill and reputation associated with the name.  The invoices show that work was still being done in 2004 and I conclude as a fact that the business continued throughout that period.  Any other conclusion does not make sense in relation to the overall picture.  There was no evidence that the Redwood Tree Services business started in 2005 when the company was formed.  Although it is right at the lower limit of the difference between trivial and small, in my judgment it had a small goodwill, highly localised around the Guildford area.  I find there is some goodwill associated with Redwood Tree Services, the business of which the Claimant is the successor.

What about the transfer to Redwood Tree Services Ltd?

41	I must say it makes more sense to say that the business was not transferred until the latter part of 2004.  I have considerable doubt about the date of the January document.  I have a strong suspicion that the more rational explanation for what happened, and for Mrs James’ memory that the company was not in contemplation in January, is that the company was formed in November and the assignment document was backdated to purport to pass assets such as a valuable tractor away from Mr Rose in order to shelter them from a possible pending bankruptcy.  That would explain why there was no later assignment document.  But in the end I have no concrete evidence on which to base such a conclusion and I decline to do so because it is not central to the issues.  There was no question one way or the other that the company is the successor to the business being carried out by Mr Rose at that time and it acquired the goodwill that he had.  

42	Accordingly, I find that the Claimant is and was at all material times entitled to a goodwill and reputation in the name Redwood Tree Services when used in relation to a tree surgery business.  That goodwill was small in extent and highly localised in the Guildford area.  This includes an area up into Sunningdale on the border with Berkshire and south towards Haslemere.  I find that there was and remains a body of the public in that area for whom Redwood Tree Services meant and only meant the Claimant’s business.

Misrepresentation.

43	If one compares the business trading styles of the two businesses they are clearly very similar.  The similarity is obviously the name.  This is not a get-up case.  The parties have used broadly similar colours, reds at various stages, but they are less similar today.  In my judgment the significant point, and the only point in this case, is the similarity between “Redwood Tree Services” and “Redwood Tree Surgeons” as names for the same sorts of tree surgery businesses. The problem arises from the word “redwood” in the context of a name consisting of “Redwood”, “Tree” and then a word starting with “S”.
44	A key issue is the six and a half years of parallel trading.  Each side relied on the decision in the Phones4U case [2006] EWCA Civ 244 in particular in the judgment of Lord Justice Jacob in the Court of Appeal at paras. 41-47.  He said as follows.  
“(iv) Inference of no deception from co-existence without instances?
41 Finally there is the co-existence point. The judge was impressed with it. He said: 
“[137] this case is unusual in that it only came to trial some five and a half years after the first alleged passing off. The claimants have thus had the opportunity through the usual trial processes (including disclosure, the calling of witnesses and cross examination of Mr Heykali) to adduce evidence of actual or likely deception.”
And: 
“[157] It is striking that no such evidence has been adduced in view of the facts that (1) The claimants have had the opportunity of adducing such evidence in the period of some 5 and a half years before the matter has come on for trial.”

42 I quite agree that evidence of substantial side-by-side trade without significant confusion or deception gives rise to a powerful inference that there is no such confusion or deception. It was the determining matter for the judge, see [157]–[158]. And it was the primary point in Miss Lane's skeleton argument which began: 
“This was an unusual case and, on superficial analysis, a surprising result. However, the explanation is simple: it turned on the evidence. More particularly, the claimants' lack thereof.”
She developed the point further, saying later: “this then, was the case of the dog which did not bark.”
43 But if one has no idea of the extent of side by side user, then the inference of no deception cannot be drawn. You have to show there is a dog who could have barked.
44 Here Mr Heykali's evidence simply does not establish enough material to draw the inference of no deception. Mr Heykali's evidence in chief gave no details of the extent of his trade. Nor was there disclosure of accounts, VAT returns, or amounts of sales. Mr Hicks, for Caudwell, sensibly asked no questions about extent of trade. During the course of argument we asked about this. In response, to show sales, Miss Lane produced a bundle of documents which had been disclosed prior to trial. Mr Miller analysed these: they amounted to only 28 mobile phones over a period of about 8 months—and one of these was to Mr Heykali himself. This was all during the period of about a year when he had a shop called Mobile Communication Centre in Balham—a shop which failed.
45 Once the shop failed, there is simply no real evidence at all as to the nature and extent of Mr Heykali's business. There were no retail premises. He did not advertise. What happened is simply unknown. I see no justification for the inference of non-deception drawn by the judge. He said: 
“[137] My own ‘common sense’ reaction to the issue was initially, and before I heard the evidence, that Mr Heykali's domain name and trading style which adopted that domain name was so similar to Phones 4u that it was likely to cause deception.”
He only displaced his “common sense” view by reason of the absence of instances of deception in the five and-a-half year period of “side-by-side” user. But if Mr Heykali's trade was exiguous—and such evidence as there was suggested it was—there was but limited opportunity for instances where someone actually bought from Mr Heykali thinking he or she was dealing with Caudwell. It should also be remembered here that it is seldom the case that all instances of deception come to light—the more perfect the deception the less likely that will be so.
46 Quite apart from that, however, the mass of emails to which I have referred do show instances of damaging misrepresentation—albeit not showing cases of actual direct diversion of trade. The judge was wrong on the co-existence point.
47 I conclude that passing off was established.”

45	Miss Jones submitted that in six and a half years one could look at the paucity of evidence that has turned up, and that shows no passing off.  Mr St Quintin submitted that in six and a half years - look at all the evidence that had turned up and there was passing off.  I will deal with the instances of confusion which are relied on.

46	First, Mr Royds:  Mr Royds was a customer of the Claimant’s based in Sunningdale.  On 5th August 2005 he sent an email about work he was expecting to be done the following Monday, 8th August.  The email is, so far as material, addressed to redwoodtrees@btinternet.com and copied to redwoodtrees@hotmail.com.  The BT Internet address is the Defendant; the Hotmail address is the Defendant.  The email is addressed:

‘Dear Nick, just a note to confirm you are coming to do your stuff on Monday 8th Aug finishing on the Wednesday.  We are actually going to be away Monday and Tues, back in the evening.  However, don’t let this stop you doing your stuff.  Our gardeners will be there in the morning as will our housekeeper.  To gain access to the drive, you simply push the round gate button, and the gates will swing open.’

47	The email continues with other details relating to the work to be done.  On the face of it therefore although writing ‘Dear Nick’ he is addressing the Defendant.

48	A letter dated 5th April 2006 from Mr Royds says more:

‘Dear Nick, I’m writing to tell you of an unfortunate confusion over your company’s trading which I encountered.  Having met you last year and discussed my requirements I decided to contact you via your website.  I found what I assumed to be your website, namely www.redwoodtrees.co.uk and sent you an email via this gateway.  It was only later that I discovered that indeed there were two very similar named companies in close proximity with the strong likelihood of creating customer confusion.  As a result I lost out in terms of timing.  Redwood Tree Surgeons sounds far too similar to Redwood Tree Services.  Yours, Richard Royds.’

49	The website referred to is the Defendant’s website.  I have not heard evidence from Mr Royds himself.  The Claimant submits this was a clear case of confusion.  The Defendant submits not so, pointing to the fact that the email was copied to both the Claimant and the Defendant.  Although he writes in the letter that he, Mr Royds, sent you, (Nick) an email via the gateway on the website, in fact he sent the email to both businesses.  It seems to me that there is no doubt in this evidence that Mr Royds thinks that it was confusing but that is not the same thing as evidence that Mr Royds himself was actually deceived.

50	Mr Cross:  Mr Cross is a builder and fencer.  He was in the Chobham area in 2009 and saw a parked truck.  He thought it was one of the Claimant’s vehicles because it had Redwood and Tree written on it.  He saw “Surgeons” but assumed that that was a small change in the Claimant’s branding since they do do tree surgery.  It turned out to be one of the Defendant’s trucks.  Mr Cross came to court and gave evidence.  In cross-examination Miss Jones put a letter Mr Cross had written about the incident to him and it is the letter of 23rd June.  The letter begins as follows:

‘Dear Nick and Tina, Confusion with identification.  We were travelling through Chobham from Sunningdale and thought we saw you.  That was until we got a bit closer and noticed that the vehicles parked on the roadside were NOT you.’

51	Miss Jones submitted that what really happened was not that Mr Cross was confused but that he thought the names were a bit similar and so he thought he would tell the Claimant about it.  In my judgment that is not a complete explanation of what happened.  I find that at the outset Mr Cross did think the truck was the Claimant’s – that is why he approached.  At some stage he was disabused of that erroneous belief.

52	Mr Tongue:  Mr Tongue gave a witness statement.  The Defendant indicated that he did not wish to cross-examine him.  He is an agricultural contractor and friend of Nick Rose’s.  He was in Chobham in May 2009.  He saw a truck with a chipper with the word Redwood on it, parked by the side of the road.  He assumed it was the Claimant and went over to talk, expecting to talk to Nick Rose, and in fact it was the Defendant.  I find this is a clear example of someone confused by the Defendant’s name into thinking it was the Claimant.  He acted on it in a modest way, by going over to talk.  He was not a customer buying services.

53	David Painter:  He gave a witness statement but did not attend court.  He is a plumber and brother of John Painter, who works for the Claimant sometimes.  He saw the Defendant’s vehicle and thought it was the Claimant’s.  Although he did not attend court, it seems to me his story is inherently plausible and I will accept it.

54	Sun Traffic:  This is an organisation based in Somerset which hires equipment like traffic lights for tree surgeons and the like so that they can control the traffic while they are working at a roadside.  Both the Claimant and Defendant have accounts with them.  On at least three occasions there is evidence of mix-ups.  For example, there is an invoice addressed to the Defendant’s address but marked ‘Nick Rosi’ which is obviously a reference to the Claimant.  It seems to me that this is of little relevance to the behaviour of customers in the Surrey and Hampshire area since, for example, we know that there are other tree surgery businesses also called Redwood Tree Services which, from the point of view of Somerset, are in the same locale.  I am referring, of course, to West Sussex.

55	Eversley Football Club:  This point is that the club wrote to Mr Apsey at the Claimant’s address.  It seems to me that this is some evidence of potential for confusion but nothing more.

56	Joel Price:  He was someone who was looking for employment in tree surgery.  He lives in Eversley where the Defendant is based and wrote to the Claimant saying he saw ‘you’ working in the surrounding area.  The Claimant submits this is someone who has confused the two businesses.  In my judgment, there is not really enough evidence to conclude one way or the other.  If he had seen Redwood Tree Surgeons around Eversley itself then that means he has seen the Defendant, but is writing to the Claimant.

57	Gail Thurley:  She saw a truck in Kent and was confused.  But there was no evidence that the truck in Kent was the Defendant’s at all – after all, as I have mentioned a number of times, there is another Redwood Tree Services business in West Sussex.  This is not an instance of confusion at all.

58	Tina James made a note on 3rd July 2007 about what took place at Stoke Park.  The claimant’s staff were approached by a person who was the owner of a business called Cedardale, a tree business.  Mr Rose said this was a customer who was confused but the individual was not a customer.  The point is that this person thought he had seen the Claimant’s vehicles in the Fleet area when it is likely they were the Defendant’s.  Unlike Gail Thurley, it seems to me to be right that the vehicles this person saw were probably the Defendant’s and I so find.  So here is a person who has confused the businesses.  Although Mr Rose said the individual had been a customer before, that was seven years ago. The manner in which he approached Mr Rose on this occasion seems to me to indicate that he was not someone for whom Redwood Tree Services was a known business.  He simply thought he was seeing in Stoke Park the same business that he had seen before in Fleet, assuming the two businesses were the same.  There is no evidence when he saw the Defendant that he made any connection with the Claimant.

59	There was a further letter in evidence from Mrs Lawlor.  She had been trying to contact the Claimant.  She wrote that she tried to find the Claimant’s website.  She wrote to the Claimant saying ‘Unfortunately there seems to be another company with your website’ and she said ‘I find this somewhat confusing.’

60	I have addressed all the major material that is said to represent direct evidence of actual confusion.  I will take this material into account but I will also take into account the rest of the evidence.  That is as follows.  First, Mrs James said in her witness statement that she had taken phone calls for people asking for Warren Apsey and she says she has taken a number of calls per month when it is clear that people are confused as to who they are contacting because they ask for Mr Apsey.  However, in cross-examination Miss Jones put to Mrs James that, given that the case has been running for so long, she will have known to keep good records of any such confusion.  In disclosure the note of the calls received was two pages long with three entries in it.  That does not bear out Mrs James’ testimony and I do not accept it.  The three entries do show people calling the Claimant wanting to speak to the Defendant but that is all.  I should be clear what I am not accepting is that there are a number of calls per month from people asking for Mr Apsey.

61	Second, during the trial Mrs James said she was sure that customers were being lost as a result of passing off.  I can see that if it was established that the Defendant was indeed losing customers on a substantial scale for some otherwise inexplicable reason that might be evidence which calls for an answer.  However, the Claimant made no effort to substantiate Mrs James’ assertion.  No accounts from 2006 have been provided and there was no follow-up of the customer information provided in disclosure by way of customer list.  It is fair to say that that information is not as full as it became, and I will deal with that in a minute.

62	It was said that the Claimant’s business had to diversify into forestry and bio fuels but I do not accept it is as simple as that.  Mr Rose has always been interested in forestry and firewood and there were earlier references to bio fuels in the evidence.

63	Third, I should deal with the new document that emerged at the end of the case.  As I mentioned at the beginning of this judgment, Miss Jones handed up a document which the Defendant’s legal advisors had just been given.  It was a full customer list of the Defendant’s customers including a column showing the nature and manner in which the customer had contacted the Defendant.  It arose as follows.  In disclosure the Defendant had produced a customer list but it was anonymised, showing only town, county, postcode and the date of contact.  I should record it is perfectly understandable why rival businesses do not want to give access to names and addresses of all their customers to their rivals.  In cross-examination Mrs Apsey was asked about the list as it stood at that stage.  She was responsible for managing the list.  The issue arose in cross-examination that she kept a column showing how the customer had been referred to the Defendant, but that had not been included in disclosure.  Mr St Quintin made a forensic point, asking rhetorically: how do we know that this list does not show that customers have been obtained as a result of passing off?  The inference, of course, was that the Defendant had something to hide.  No doubt stung by that submission, the Defendant produced the unredacted list and sought to put it in.  This created the unedifying prospect of perhaps having to adjourn the trial, although neither party asked for it.  On the other hand, it was also clear that the Claimant was in no position to complain about late documents since the Claimant themselves had done the very same thing.  I decided that the least unsatisfactory approach was to allow the parties leave to deal with the document after trial by sequential written submissions, which is what they did.  I will consider those submissions.

64	The document shows about 700 or 800 entries.  There is no positive evidence of any passing off in the document.  The referral column does not provide any such evidence.  The Claimant made five submissions.  I will deal with each and what the Defendant says about it.  First, the Claimant submitted that the Defendant had still failed to give proper disclosure.  This is based on the fact that the identification numbers in the list are not sequential.  Mrs Apsey had explained in cross-examination that the missing numbers were for entries which were for “other contacts”, such as suppliers and also prospective customers who did not in the end contract with the Defendant.  The Claimant submitted that potential customers who did not use the Defendant were perhaps more likely to be the result of confusion, but that is fanciful and I reject it.  In my judgment there is nothing in the first point.

65	The second point was that the Claimant points to customers in the list who do not have entries by them in the referral column – perhaps they are the result of passing off?  However, in fact there are very few.  The Defendant submitted it was 37 out of the total.  That is not evidence of anything.  The Claimant points out that many entries do not show whether there is passing off or not, so if a customer is recorded as having found the Defendant by Yellow Pages it might be the Claimant’s or the Defendant’s Yellow Pages entry.  It seems to me that this is undeniable in the sense that the document does not distinguish; however, as a practical business document the document simply records the source.  There is nothing in this point by way of evidence in favour of passing off.

66	The third point relates to some specific entries.  There is an entry for Kinsella, in the Sandhurst area with an address at No 29.  Mr St Quintin submitted that the Claimant had a customer at No 33 at the same street.  So the Defendant’s contact must have arisen because the customer at No 33 recommended Redwood to the customer (their neighbour) at No 29.  This is pure speculation and I reject it.  It illustrates the point to some extent that the Claimant did not press for this information at an earlier stage.  If it had pressed in order to make such points good it may have had the opportunity to do so, but the Claimant did not do that despite having a long time in this litigation to take such a course if they had wished to.

67	The Claimant also submitted that there were further examples of the Defendant carrying out work in geographical locations virtually identical to places where the Claimant has done work as well.  In my judgment that is not surprising given the proximity of the businesses and does not raise any other point.

68	Fourth, the Claimant relied on the entry for Mr Hunt.  This showed that the Defendant was recommended by Mr Hunt’s son, but there are no earlier entries named Hunt in the Defendant’s database whereas there are some earlier entries in the Claimant’s list including one “Mr Hunt” who could be the son.  The Claimant submitted that this is what had happened and was evidence of passing off.  In my judgment, Mr St Quintin’s submission is ingenious but ultimately speculative.  Again, if the Claimant had wished to investigate matters of this kind it could and should have pressed for this information much earlier in these proceedings.  I note that in the Defendant’s written submissions they sought to put in a little bit of new evidence in the answer to this point (at para. 9 of the written submissions) but I will disregard it.

69	Fifth, and finally, the Defendant’s list includes about 20 entries of people within the GU or SL postcode area and with unusual surnames which have the same name as customers in the Claimant’s database.  However, this is yet more speculation.  Some of the allegedly unusual surnames are Clark, Davis, Roberts, Hill and Walker.  They are not unusual, at least on the basis of no evidence other than my own judgment.  Indeed I do not accept that any of the names are sufficiently unusual in this list to make anything of this point.

70	In summary, there was no evidence supportive of the Claimant’s case which emerges from this document.

71	Having reviewed the evidence, I remind myself of the correct approach.  I must make my own judgment based on all the material.  The particular matters which seem to me are important are as follows.  The virtual identity of the names obviously supports the Claimant.  The close geographical proximity again supports the Claimant but only up to a point.  In my judgment in this case the goodwill is very local indeed.  The fact the Claimant has the odd customer in Midhurst in Sussex does not mean that the Claimant’s goodwill stretches that far.  Apart from anything else, as I have said, there is another Redwood Tree Services in West Sussex.  

72	This is not a case about global, national or even regional brands; it is about a small business which finds itself with a local competitor using what is in effect a very similar name.  Small businesses are entitled to protection as much as anyone else.  The key to this case, in my judgment, is the juxtaposition of the name and the location.  The name Redwood or Redwood Tree Services is not distinctive of the Claimant when considering the public in Central London.  However, to say it is not distinctive of anyone at all, in my judgment, is not correct.  The Claimant does have a goodwill in its local area around Guildford which broadly corresponds to the GU and SL postcodes.  It seems to me that judged by a local yardstick, when people in that area, particularly close to Guildford, see Redwood Tree Services they do indeed think of the Claimant and assume when they see that name that it is the Claimant’s.  If the Defendant trades in the Defendant’s home area then in my judgment the Defendant makes a misrepresentation.  The use of the name Redwood Tree Surgeons in the relevant area whether intentional or not leads or is likely to lead the public to believe that goods or services offered by the Defendant are the goods or services of the Claimant.

73	However, it is also clear that the Defendant does not in fact trade in that area very much at all.  In para. 10 of his witness statement Mr Apsey said the following:

‘In terms of marketing my business I have advertised with a free listing in the Thames Valley Business Pages and have done so since 2005.  There was no entry in this book for the Claimant although they did have an entry in the 2006 edition.  Up till 2009/10 I only had a free listing in the Basingstoke & Fleet Yellow Pages but last year I upgraded this to a corporate advert under the banner of the Trading Standards Buy With Confidence scheme.  I have had free listings in the normal Basingstoke and District Phone Books and in the 2005/6 also in the Bracknell Berks and Reading Berks Phone Books.  I advertise yearly in the Eversley Parish Magazine, in the window advertising board in my local centre stores in Eversley, and annually in the Little Green Directory, in the Reading book and in the Wokingham book.  The Little Green Directory is also available online.  I did advertise in the Little Green Directory in the Guildford area in 2005/6 as I thought that people may relate to me having trained in the Merrist Wood College near Worplesdon.’

74	I am then going to miss out a sentence to which I will return in a minute.  I will continue:
‘I have also tried to do my bit in the community by advertising in the Eversley Cricket Club programme, the Eversley Football Club programme, and the Hampshire Hunt Pony Club Day magazine.  I advertise in the Basingstoke area Yellow Pages that covers the Eversley district where my business is based and I can confirm that I have never advertised in the Guildford area Yellow Pages.’ 

75	I accept that evidence, viz., the fact evidence I have just quoted.  In this paragraph of his evidence Mr Apsey mentioned his advertising in the Little Green Directory in Guildford in 2005/2006.  The statement included the following further sentence, after referring to Worplesdon:
‘However this did not prove a worthwhile piece of advertising as I quickly realised that it would not be commercially viable for me in terms of fuel costs and time to travel to the area to give quotes and do work.’ 

76	I do not accept that evidence in its entirety.  In my judgment, one of the reasons Mr Apsey did not repeat his advertisement in the Guildford Little Green Directory was to seek to avoid confusion with the Claimant.  That Directory is right in the Claimant’s patch.

77	The Defendant’s home area is largely focused towards the west from Eversley, in the Thames Valley and in terms of postcodes, the RG postcode.  There is an overlap between the two areas but in my judgment it is plain that when the Defendant uses its name away from the Claimant’s area – which I should say is what the Defendant is doing most of the time – there is no misrepresentation made whatsoever.  Customers there have never heard of the Claimant and they know Redwood Tree Surgeons as a reputable tree surgery business.

78	Has the Defendant ever traded in the Claimant’s area such as to have committed an act of passing off?  In my judgment, the answer is yes.  I note that the evidence of Mr Cross and Mr Tongue related to occasions in 2009 when the Defendant was working in Chobham.  That is within the Claimant’s goodwill and explains to a significant degree in my judgment the confusion of Mr Cross and Mr Tongue.  I also note for what it is worth that Mr Royds is in the Sunningdale area not far from Chobham.  Furthermore, in my judgment, putting an advertisement for Redwood Tree Surgeons in a Guildford area Little Green Directory was an act of passing off.

79	Why is there so little evidence of actual confusion?  In my judgment, the reasons are as follows.  First, I find that the Defendant is not passing off very much at all.  Most of his business is in his own area, not in the Claimant’s area, and so no confusion arises.  Also, I remind myself that these are, with all respect to the parties, very small businesses indeed and the numbers therefore are proportionally smaller.  It also seems to me that these are the kinds of businesses where on many occasions confusion and deception simply would not come to light.

80	I find that the Defendant has carried out acts which led or were likely to lead the public to believe that the goods or services offered by the Defendant are goods or services of the Claimant.

Damage.

81	In my judgment this is the kind of case in which damage follows if goodwill and misrepresentation are established.  The nature of the misrepresentation in a case like this one is one which will indeed be damaging to the Claimant’s goodwill.  It dilutes the distinctive ability of the goodwill and reputation to attract custom.  It also means that the owner of the goodwill loses control of their most precious asset, their good name.  There is no evidence whatsoever that the Defendant is any better or worse a tree surgeon than the Claimant, but that is not the issue.  Within the area of the Claimant’s goodwill, if the Defendant trades in a confusingly similar way the Claimant loses that control.

82	There is no evidence before me of any actual diversion of customers hitherto.  If it has happened at all, it is plainly at a very modest level, but in my judgment that is not the point.  I am far from convinced that any case for damages has been made out but I am sure that if a misrepresentation is established it causes damage.

Conclusion.

83	This case illustrates the problem of applying the law of passing off to small localised businesses.  The Claimant has no right, in my judgment, to stop the Defendant trading under the name Redwood Tree Surgeons in Eversley or anywhere else within the RG postcode area.  That is a more or less westward-looking area.  The Claimant’s rights are local and are confined to an area around Guildford which corresponds essentially to the GU and SL postcodes and towards the east of that area including Kingston.  The only injunction which would be appropriate in my judgment is one specifically limited to the GU, SL and possibly KT postcodes areas.

84	Websites pose a special problem but I should make clear that I do not accept that the Claimant has the unfettered right to require the Defendant to take down its website.  Looked at nationally, the Claimant has no better right to the website using a domain name with the words Redwood Trees than the Defendant.  I note again the existence of Redwood Tree Services in West Sussex.  As regards the website, it seems to me that in a case like this, provided the Defendant’s website makes it clear that it is not based and does not trade in GU or SL postcode areas, then in the exercise of my equitable jurisdiction with regard to injunctions no injunction should be granted which prohibits a website of that kind.

85	Finally, on the question of damages, I am far from satisfied that this is an appropriate case for an inquiry.  I say that largely on the ground that the Claimant took it on itself to give evidence that it was losing business in a substantial way but singularly failed to prove it.  Also bearing in mind the relevant turnover of the businesses before me, I am highly doubtful that an inquiry would be proportionate on any view.  However, I will hear the parties.
_______________

Following argument in relation to the form of order the Court gave the following judgment:
JUDGMENT on the form of Order:

JUDGE BIRSS: 

86	It now falls for me to deal with various matters arising in relation to the relief to be ordered in the light of my judgment that I have given earlier today.  The first question is relative to the injunction.  It is common ground that the injunction of some kind should be ordered and it will relate to the postcode areas to which I referred in my judgment, i.e. GU, SL and KT.  The Defendants submit that the injunction should be as follows:
that the Defendant must not whether acting by himself, through others acting on his behalf or on his instructions or with his encouragement or in any other way: 
a.	in any area with a postcode being GU, SL or KT 
(i)	provide, advertise or otherwise promote tree surgery or other arboricultural services under or by reference to the word Redwood, the words Redwood Tree, Redwood Tree Surgeons or the words Redwood Tree Services;
(ii)	provide, advertise or otherwise promote tree surgery or other arboricultural services under or by reference to any other word or combination of words, colourably similar to the word Redwood, the words Redwood Tree, Redwood Tree Surgeons or the words Redwood Tree Services 
b.	otherwise pass off or attempt to pass off or threaten or intend to pass off any services not being services of or authorised by the Claimant as and for the same contrary to the fact.  

87	There was a little (c) but in the course of the argument Mr St Quintin, correctly in my judgment, did not press it.

88	The issues are first should I include (ii) and its reference to ‘colourably similar words’ and second should I include (b)?  In my judgment the injunction should include sub-para. (ii) because it is necessary in an injunction of this kind to deal with the fact that it is possible always to vary slightly the sorts of words that a business may use and that is an appropriate thing to include in an injunction for passing off.  As far as sub-paragraph (b) is concerned, Mr St Quintin submits that it should be included because the Defendant has been found to have committed acts of passing off, albeit on a smaller scale than the Claimant submitted.  The Defendant submitted that I should not include it because the right injunction in the light of my judgment was simply little (a).  In my judgment I should include little (b) for the reason Mr St Quintin gave.

89	The next question is relative to the website.  It is common ground between the parties that in the light of my judgment the website needs to include a notice which indicates the area in which the Defendant does not trade.  The area of dispute is whether the website should also include a reference to the Claimant, to indicate effectively that the area in which the Defendant does not trade is the Claimant’s area.  That would, said Mr St Quintin, allow someone who had been seeking the Claimant and finds the Defendant’s website then to be directed to the Claimant.  In my judgment, it is not appropriate to include a reference to a rival’s business on the website in this case.  The important thing, in my judgment, is that the website should make it clear where the Defendant does not trade and it would be a recipe for further confusion to have a permanent reference to the Claimant’s business on the Defendant’s website.  A different question relates to dissemination of the judgment and I will deal with that separately.  The website should include wording to the effect that the Defendant’s business does not trade in the areas in question but should not include a reference to the Claimant or to these proceedings in the long term.

90	The next question is dissemination of the judgment.  It is a principle which at least in English law derives largely from the Enforcement Directive that when an intellectual property right has been found to be infringed the Court may make an order which relates to dissemination of the judgment.  The Claimant in this case seeks such an order.  Mr St Quintin submits that the way to do it is to include on the website a reference to this judgment.  The Defendant submits that that is not appropriate in this case in all the circumstances.  In my judgment it is appropriate in this case for the website to include, for a limited period of time only, a reference to this judgment.  When I say ‘a limited period of time only’ I have in mind a matter of some months.  I will hear the parties’ submissions –  which will be submitted in about a sentence each – as to how many months it should be.  The sort of period I am talking about is no more than a year and possibly six months, something of that kind.  It seems to me that that is the closest approximation to justice.  The website will refer to the judgment but only for a limited period of time.

91	The next matter relates to the enquiry as to damages.  The Defendant submits that in the light of my judgment there simply should not be any enquiry at all.  The Claimant submits that I should give them liberty to seek an enquiry albeit Mr St Quintin has abandoned the claim for an account of profits.  I have very grave doubts as to whether an enquiry as to damages in this case will be proportionate or at all fruitful.  However, I am not prepared to say on this occasion that it is impossible that an enquiry will be done.  Accordingly, I will do nothing more than give the Claimant liberty to apply in writing (to be dealt with as a paper application) for liberty to pursue an enquiry as to damages.  That application will need to explain why it is likely that an enquiry will bear fruit, and I shall make it clear that there will be no order in advance requiring a Defendant to give disclosure of anything.  In my judgment Miss Jones is quite right that the nature of the way in which the Claimant ran this case meant that if the Claimant in fact had had evidence of substantial damages it would have been provided at this trial.  I do not say that it should have been but I say that it would have been having regard to the nature of the Claimant’s case.  As a result of that, I am not prepared simply to give the Claimant a blank cheque to pursue enquiry.  They can apply and if they can make a case for it then an enquiry will be ordered.  Otherwise it may be a case in which damages can simply be assessed in a very short matter as a paper application or it may be there is simply no actual damages at all.  That deals with the damages.

92	The final question I have to deal with is the question of costs.  Mr St Quintin submits very simply that his client has succeeded and therefore the general rule, as set out in CPR Rule 44.3.2(a) that the unsuccessful party will be ordered to pay, applies.  Miss Jones submits that in fact the Claimant has not succeeded in the light of my judgment.  The Defendant’s business has not had to cease trading using the name. What in fact has happened is that there has been an outcome by which the Defendants must not trade in a particular area but they are otherwise at liberty to trade, and it is something which the Claimant was seeking not to happen.  The relief the Claimant was seeking, and I have the draft order from Mr St Quintin, was an injunction covering the counties of Surrey, Berkshire, Hampshire, Buckinghamshire or Greater London, which would undoubtedly have meant that the Defendant would have to stop trading under the name Redwood Tree Surgeons.

93	The Defendant submits that I should either order that the Claimant pays the Defendant’s costs or I should make no order as to costs or that I should make an order that the Defendant only pays a contribution of the Claimant’s costs.  

94	I have in mind the Rules in Rule 44.3 that the general rule is the unsuccessful party will be ordered to pay the costs of the successful party but the court may make a different order (that is little (b)) and I also have in mind sub-rule 4 that in deciding what order, if any, to make about costs the court must have regard to all the circumstances including (a) the conduct of all the parties, (b) whether a party has been successful on part of his case even if he has not been wholly successful, and (c) whether any payment into court or admissible offer for settlement has been made by a party which is drawn to the court’s attention and which is not an offer to which the costs consequences under Part 36 apply. 

95	The Defendant submits that the Claimant could have offered to the Defendant the possibility of a more limited injunction.  No such offer was made.  The Claimant points out that the Defendant did not make an offer either to restrict itself only to the area in which I have concluded it should be restricted.  So neither side made an offer which corresponds to the outcome.  In fact neither side, as I understand it, made any offer to settle these proceedings at all of any relevance.

96	I should say that there is nothing in the conduct of either party in this case which seems to me to be relevant to the question of costs.  However, it does seem to me that the question of whether a party has succeeded on part, even if he has not been wholly successful, is highly material in this case.  It seems to me that it is not accurate to say that the Claimant has been wholly successful.  

97	However Mr St Quintin refers to the judgment of Mr Justice Falconer in Colgate Palmolive v Markwell Finance [1990] RPC 197 and in particular to the passage at the top of p. 200, where Mr Justice Falconer decides that, in a case in which there had been a without prejudice save as to costs offer which included a sum of damages, nevertheless he should make an order for costs on the liability phase of a passing off and trade mark action. That was because it was a well settled principle that in respect of property rights, in particular intellectual property rights, a person whose right has been infringed is entitled to come to court and have his right pronounced upon and vindicated and to an injunction against the infringer.  In my judgment that consideration, at least in some form, still applies under the CPR.

98	However, I do not accept that this is a case in which it is a complete statement to say that the Claimant has simply had its right vindicated.  The injunction it seeks is significantly narrower than the injunction the Claimant wanted.  The purpose of these proceedings, at least to a significant extent in my judgment, was to require the Defendant to stop using the name Redwood Tree Surgeons altogether.  In that, the Claimant has singularly failed.  In my judgment, it is an extremely important element in this case and needs to be taken into account on the question of costs.  Nevertheless I also take into account that neither party has made an offer which they might have done.

99	What to do?  I do not accept Miss Jones’ submission that it would be right to order the Claimants to pay the Defendant’s costs.  It seems to me that the realistic span of the sensible orders in this case is for the Defendant to be ordered to pay a proportion of the Claimant’s costs.  No order for costs does not seem to me to accord with justice, particularly bearing in mind Colgate Palmolive v Markwell Finance.  Accordingly, I will decide on a proportion of the costs of the Claimant’s which will be met by the Defendant.  In my judgment, it is a highly significant fact that I have not decided that the Defendant has to change their name and it seems to me therefore that a measure of justice is that the Defendant will pay half the Claimant’s costs of these proceedings and I will make that order.
Following argument in relation to the outstanding matters the Court gave the following judgment:
JUDGMENT on further matters:
JUDGE BIRSS:

100	It now falls for me to decide two further matters.  First, the length of the period for which the website will include a reference to this judgment.  I should say that I have not settled the precise terms in which it should say that, but we will deal with that if we have to.  The period, Mr St Quintin says, should be 12 months; Miss Jones says it should be one month.  Mr St Quintin says that it should be 12 months because the business is annual. Miss Jones says it should be one month because the reference to the judgment, although an important part of intellectual property enforcement, is nevertheless something which is capable of being confusing given that I have not found that the Defendant has to change their name.  There is something to be said for both parties’ submissions and I will order that the reference stays on the website for six months.

101	The next question is an interim payment.  The Claimant seeks a payment on account in relation to its costs.  Mr St Quintin submits that the correct sum is something that is round about 60% of the total figure not including any uplift or ATE insurance premium.  The claimant’s total costs figure was £56,000 which would have produced a figure of £35,000 as an interim payment, if I had made an order that the Defendant paid all the costs.  However since I have made an order that the defendant is to pay half the costs, the interim figure becomes £17,000.  The Defendant submits I should not make an order for an interim payment at all, first of all because of the fact that there is a CFA and ATE insurance on the Claimant’s side.  However, as Mr St Quintin has pointed out, at least some – possibly a relatively significant proportion, something like 50% – of the solicitors’ fees are not covered by a CFA and his own counsel’s fees are not covered by a CFA.  In my judgment, that is not a reason for not making an interim payment at all, although it is a factor to take into account.  Second, Miss Jones refers to the Defendant’s own circumstances.  It is absolutely clear, in my judgment, that both businesses in this case are – again with no disrespect to them – small businesses and the sums of money that are being looked at are substantial sums.  That is certainly a factor to take into account.  Third, Miss Jones refers to the time that was taken for the Claimant to provide the payment of costs in the previous proceedings.  That seems to me to be of marginal relevance. 

102	Finally, the Defendant submits that their own costs in these proceedings amount to some £28,000 and that is the figure I should compare with the claimant’s £56,000 figure.  On that basis, Miss Jones submits that this is grounds for questioning the Claimant’s costs, that they are in fact too high and it is highly likely – or at least possible – that when they are assessed the figure will turn out to be significantly lower than the £56,000.  There may well be something in what Miss Jones says but in the end the question is whether there is an irreducible minimum figure which I can be satisfied can be awarded.  If there is not then I will make no award, but if there is then this point is not a reason for not making an award.  

103	In my judgment, the irreducible minimum figure, if I was to make an award, would be half the sum Mr St Quintin seeks.  I say that for a couple of reasons.  First of all, the Defendant’s costs are about half the figure that the Claimant spent, and secondly, I bear in mind the CFA and the ATE insurance premium information.  

104	 That would produce a payment on account of £8,500.  The question is whether in this case I should make an order for an interim payment of £8,500.  I bear in mind in particular the Defendant’s circumstances as a small business but also the Claimant’s circumstances as essentially a similar sized small business.  In my judgment, the correct thing to do is to make an order for the payment of £8,500 but the period in which it should be paid in my judgment may well be significantly longer than the period as proposed by the Claimants, which is 14 days.  I will hear Miss Jones as to the period but in my judgment it could well be something that could be a matter of some months or at least more weeks and possibly spread over a period of time.