(1) Roderick Hart (2) Relentless Recordings Ltd v (1) Relentless Records Ltd (2) Relentless Music Publishing Ltd (3) Media Village PR Ltd and between: (1) Relentless Records Ltd (2) Relentless Music Publishing Ltd -and- (1) Roderick Hart (2) Relentless Records Ltd [2002] EWHC 1984 (Ch)

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
[2002] EWHC 1984 (Ch)Case No Case No: HC 01 02253Venue Royal Courts of Justice, Strand, London, WC2A 2LL
Between
(1) Roderick Hart (2) Relentless Recordings LtdClaimants/ Appellants(1) Relentless Records Ltd (2) Relentless Music Publishing Ltd (3) Media Village PR Ltd and between: (1) Relentless Records Ltd (2) Relentless Music Publishing Ltd -and- (1) Roderick Hart (2) Relentless Records LtdDefendants/ Respond- Ents Part 20 Claimants Part 20Defendants
Before
Mr Justice JacobGiles Fernando (instructed by Messrs Simon Conroy) for the ClaimantsJames Mellor (instructed by Clintons) for the RespondentsHearing dates : 31 July/1 August 2002Date 4 October 2002
[1]Mr Justice Jacob: This dispute is essentially about the right to use the name “Relentless” for a record label. The claimants began the dispute. The defendants reacted by counterclaiming. When the trial commenced each side was seeking to stop the other. Three outcomes were in principle possible: success for one side or the other, or a draw by which each failed. A draw would mean co-existence – what is sometimes called “honest concurrent user.” By far the most commercially significant claim was that of the claimants. For their use has at all times been tiny whereas the defendants have established a successful, albeit, minor, label and reputation. Success for the claimants would mean either that they would have to be bought off or that they would be left in possession of the Relentless name - a name whose reputation, even on the most favourable view of the claimants case, was almost entirely created by the defendants. It was a prize worth having.[2]The trial took an unusual turn – I granted security for costs upon an application made after the principal witness for the claimants, Mr Hart, had given evidence. I also gave judgement against Mr Hart personally. I gave my reasons at the time, though inevitably this judgment touches upon these points again. I fixed security in the sum of £70,000 but gave the claimant company an opportunity to apply for a variation if it could be shown that the sum was stifling or was otherwise inappropriate. It has not availed itself of that opportunity with the result that its claim was struck out. That left the counterclaim.[3]This is an application for summary judgment on that counterclaim. It is for trade mark infringement. The claimant asked at the outset that I should recuse myself on the grounds of apparent bias. The request was based on six different grounds, which it was suggested should be considered both individually and collectively. I heard the argument on the recusal issue first. I ruled against it, saying I would give my reasons later. I then heard the application for summary judgment. This judgment deals with both matters, as was accepted would be convenient.[4]When the action commenced there was a single claimant, Mr Roderick Hart. In January 1995 he and a friend, Joe Skinner, formed a company intended to be a record company. It was called Relentless Recordings Ltd. A minor amount of preliminary work had taken place before then in which the name "Relentless" had been used. But it cannot seriously be suggested that that work generated any reputation in the name "Relentless." Once the company was formed there can be no doubt that any rights in the name which might be generated by its activities would be vested in it, not Mr Hart personally.[5]Over the next few years the company conducted slight activities under the name "Relentless." However the company did not trade at all. It filed dormant accounts at Companies House. What it did was to attempt to start a business by making and distributing small quantities of records principally to DJs to try out by playing in clubs. The records contained single tracks. Although 12" vinyl in size, the tracks were the usual few minutes duration only. The records were what in the industry are called "white label" records - given away for promotion only. The idea was to interest the DJs to play the track, generate interest in it (called a "buzz") so that the track could move on towards a commercial release. That never happened. No one ever showed any interest in taking any of the tracks forward. They were flops. The tracks concerned were not, save for one, of original music. They were what used to (and may still) be called “cover versions” of music composed by others. When this happens the owner of the copyright in the original music is entitled to royalties both on records made using his music and on public and broadcast performances. “White label” releases of 500 or less are not exempt from royalties but at one point Mr Hart thought they were – some indication that in his mind 500 or less was an amount so small that the royalties were not worth collecting.[6]The defendant company Relentless Records Ltd was formed on 2 nd December 1999. Just before then, its two founders, Paul Franklyn and Shabir Jobanputra had launched a record called Re-Rewind on the commercial market. It was an immediate success, ultimately selling over 570,000 copies. It had had national radio support before its launch from important stations such as Kiss FM and Radio 1. There is no dispute between the parties that the relevant date for testing whether a claimant has a goodwill protectable by the law of passing off is the date when the defendant commenced its activities, see e.g. J.C. Penney v Penneys [1975] FSR 367 at p.381. So a major question in the original action was whether the claimant company had a sufficient goodwill in the name Relentless for records in November 1999.[7]Shortly after the initial success of the defendant company a complaint alleging passing off was made. The first complaint was on behalf of the claimant company alone. Later that changed to a complaint on behalf of Mr Hart alone. The action was eventually commenced in his name alone. A week before trial the company was added as claimant despite the remonstrance of the defendants that they had had no opportunity to seek security for costs from an impecunious company. Even at that stage Mr Hart remained a claimant. Following his cross-examination at trial it became abundantly evident that he never should have been a claimant. Any claim, such as it was, could only have been in the company. I have referred to this already in my judgment dismissing Mr Hart's personal claim. However, for convenience I set out here the first of the two relevant passages (cross-examination of Mr Hart ,Day 1 pp.47-9): Q. So what did you think you were doing back in 1995/1996/1997 sending letters out saying "Rod Hart, managing director" with a company number at the bottom? Are you seriously suggesting that you were trading on your own account? A. I was acting on behalf of the company as a director. I understand that yes. …. Q. So you agree that from 1995, whenever you were conducting any business under the Relentless name you were doing it on behalf of the company A. I understand that yes Q. Not on your own behalf? A Sometimes I was. If it was a writing or production capacity I do not have an incorporated writing or production company set up. Q OK, but writing, we will treat that as a private activity. But anything to do with Relentless was not you: it was the company. A Right. I understand that and I was responsible for that, yes. Q. In fact that has been your view throughout, has it not? A. I was in charge, yes. Q. You have always been acting on behalf of the company? A Of course, yes.[8]One of the points made in support of the recusal application is that I said in my security for costs judgment that "no answers were given" in relation to the defendants' requests for information as to the basis of the claim. It is said an answer was given: that I should have said "inadequate answers were given." Given the point has been made, it seems necessary to set out in all its detail the attempts to elucidate the details of the claim and whether it was a claim by Mr Hart or the company. I have italicised the most important items. Unfortunately the attempts were many and so what I quote is lengthy. I have also italicised assertions made which were never substantiated.[9]As I have said, hostilities began with a letter before action written on behalf of the company: 2 December 1999 from the company's then solicitors, P Russell & Co) “We act for Relentless Recordings in relation to protection and enforcement of its intellectual property rights in the United Kingdom. We understand that you have currently released for sale a CD containing a recording entitled “Rewind” by The Artful Dodger, bearing our client’s trademark “Relentless”. Our client is a well established company in the music industry and is registered at Companies House. Our client clearly have goodwill and reputation attached to its services and your use of the name “Relentless” is a misrepresentation to the public leading to confusion. You are wrongfully appropriating to yourself part of the reputation and goodwill belonging to our client and you are infringing the integrity of our clients’ property in that reputation and goodwill. Your misrepresentation is leading the public to believe that your business is connected to our client’s business which will cause damage to our client without limitation by way of loss of business and the wrongful assumption that our client is associated with your company.”[10]Before the defendants replied in writing, Messrs. Shah and Co sent a letter saying they acted in place of Messrs. P Russell. The letter indicated they were acting for Mr Hart personally and enclosed a Notice of Issue of a Legal Aid Certificate. 14 January 2000 Defendants' then solicitors to Shah Solicitors “Our client received a letter from P Russell & Co dated 2 December 1999, in which P Russell & Co alleged that our client’s use of the name “Relentless” was a misrepresentation to the public leading to confusion, and thus amounted to passing off. Our client has now received a letter from you enclosing a Notice of Issue of Legal Aid Certificate, in which it is stated that Mr Roderick Hart proposes to bring an action against our client for infringement of copyright. We note that you have provided no explanation of the alleged basis for your client's proposed claim. 14 January 2000 from Shah Solicitors “The letter before action send by our Client’s previous Solicitors, P Russel & Co, made it abundantly clear the reason why our Client considered the use of the name ‘Relentless’ by your Client amounted to a blatant and unlawful passing off. We understand your Client, in response, informed our Client’s previous Solicitors that the use of the name was coincidental and that our Client was not known to them. We do not accept this to be the case and subject to an amendment to our Clients Legal Aid Certificate and the receipt of Counsel's written Opinion, we shall issue proceedings against your Client in which we shall seek an order forbidding them from using the name aforementioned and substantial damages .” 18 January 2000 from defendants' solicitors “ You refer to our client’s alleged passing off as “blatant”. However, neither P Russell & Co nor yourselves have provided any evidence of confusion to the public; nor has our client encountered any cases of confusion between it and your client. According to our company search, Relentless Recordings Limited is a dormant company and therefore we fail to see how any confusion could arise, or what losses Relentless Recordings Limited could have suffered. In the absence of any confusion, please provide us with particulars your client’s alleged loss to date . Please also explain why, on the Notice of Issue of Certificate of Legal Aid, Mr Hart in his personal capacity is stated to be the proposed Claimant. Quite apart from the fact that our client believes your client’s stated case to be without any merit, it is clear that any of the rights which your client alleges have been infringed will, to the extent that they may exist, be owned by Relentless Recordings Limited, and not Mr Hart. It is, therefore, wholly inappropriate for Mr Hart to seek legal aid in his personal capacity in order to bring this action and we would be grateful for your confirmation by return that your client will not be proceeding on this basis. In the absence of such confirmation, we will be making immediate representations to the Legal Aid Board to have your client’s Emergency Legal Aid Certificate revoked.” 24 January 2000 from Shah Solicitors “We note all you say but with respect we do not consider that you are dealing with the substance of our client’s allegation against yours. We are satisfied on the evidence we have collated to date that there was total confusion within the music industry as to whether the record in question had been released by our client’s company as opposed to yours. We have at present 11 statements from various music companies confirming that when they heard that the record in question had been released on the Relentless title they immediately contacted our client asking him to supply them this was done [sic] because of course in each case they were aware that the name Relentless was associated with our client’s company.” 27 January 2000 from Defendants' solicitors “We note that you have obtained a number of statements of confusion. We would be grateful if you would supply us with copies of these as soon as possible. We also note that you have failed to address a number of important issues which we raised in our letter as follows: 1. Particulars of the loss and damage which your client alleges it has suffered. 2. Clarification of the identity of the proposed Claimant in this action. When we have received this information and have been provided with copies of your client’s evidence of confusion, we will be in a position to take our client’s instructions. However, until then, our client continues to deny your client’s allegations.” 3 February 2000 from Defendants' Solicitors “We refer to our letter of 27 January 2000. We note that we have not received a response to this and would be grateful to receive one as soon as possible”. 1 (sic - it must be 3 rd ) February 2000 from Shah Solicitors “Our Client has a further conference with Counsel tomorrow, 4 February 2000 and thereafter we will write to you regarding further Disclosure as requested. ”[11]Whilst this inter-solicitor correspondence was going on, the defendants' solicitors also wrote, on 18 th January 2000, to the Legal Aid Board (with a copy to Shah and Co) asking that Legal Aid be revoked. The principal basis of the request was that if there was to be a claim, it could only be by the company. On 9 th August 2000 legal aid funding was discharged. Matters then went totally to sleep (as indeed they had been as regards inter-party matters since February). Meanwhile the defendants success continued with further records.[12]Hostilities resumed a year later. February 2001 Shah Solicitors “We note that despite the letter dated 2 December 1999 sent to you by our predecessors, and us informing you of our intention to commence proceedings for a passing off claim, your client has continued trading under the name of Relentless Records. Our client has goodwill and reputation attached to its services and your use of the name “Relentless” is a misrepresentation to the public leading to confusion. You are wrongfully appropriating to yourself part of the reputation and goodwill belonging to our client and you are infringing the integrity of our clients’ property in that reputation and goodwill. Your misrepresentation continues to lead the public to believe that your business is connected to our client’s business which will cause damage to our client without limitation by way of loss of business and the wrongful assumption that our client is associated with your company.” 16 February 2001 Clintons for the 1 st and 2 nd Defendants to Shah Solicitors “Dealing first with your letter of 2 nd February 2001, we would say at the outset that we have advised our client in the strongest terms that any action which you may bring against our client for passing off would be bound to fail. Firstly, and in the absence of any evidence from you to the contrary, our client denies that your client has, or has ever had, a sufficiently extensive reputation so as to give rise to a claim in passing off. This applies equally to your client, Mr Hart, and the company, Relentless Recordings Limited. In this regard, we note that your client does not, in fact, trade as Relentless Recordings, as you claim; rather, he is a director of the company Relentless Recordings Limited. Secondly, there has never been any misrepresentation on the part of our client that it is in any way connected with or endorsed by your client. Thirdly, and again in the absence of any evidence from you to the contrary, it does not appear that your client has yet suffered any damage. What is clear, however, is that there has been confusion amongst a number of people who have come across your client’s records that they are those of our client. Indeed, our client has been asked by a well-known radio DJ if it could supply a copy of “Serious” to him. However, neither we, nor our client, accepts that anyone would ever have purchased a copy of any of our client’s records thinking that it was your client’s. Contrary to your assertions, therefore, we would say that it is your client which is in fact passing itself off as being, or being connected with, our client. (I interpolate here that the claimant's record "Serious" was issued after November 1999 and is accordingly irrelevant to any reputation or goodwill of either claimant before then) Furthermore, our client is the proprietor of the registered trade mark “RELENTLESS” in classes 9, 16, 18, 25 and 41 and we attach a copy of the relevant extract from the Trade Marks Registry. Our client has, since December 1999, enjoyed considerable success in the United Kingdom and has, since then, released six singles, all of which have debuted in the top 30 of the UK singles charts. Indeed, our client has now sold in excess of one million singles in the UK. Most notably, “Rewind” by Artful Dodger was released by our client in December 1999 and reached no. 2 in the UK singles charts.” 23 February 2001 from Shah Solicitors “It is obvious from your letter that your clients intend to continue using the name “Relentless” which is still causing considerable confusion in the music industry and loss to our client. He now has no option but to issue proceedings for passing off. The Particulars of Claim are presently being prepared by Counsel. Our client has been advised by Counsel that the claim against your clients for passing off is a good one. It is ludicrous to suggest that between 1995 (when our client started to use the name Relentless) and late 1999 (when your clients started to use the name) our client had not built up an extensive reputation in the industry trading under the name Relentless. As your clients would well have known, our client has traded in the music business since 1995 under the name “Relentless” in the following forms; “Relentless Recordings” for record production; “Relentless Music Publishing” for music publishing; “Relentless Mediaworks” for promotional activity; and under the name “Relentless Entertainment Group” to embrace all elements of the business. In an attempt to protect the name, our Client incorporated a company in 1995 with the name Relentless Recordings Limited. As you know he has produced a number of recordings and promos under the Relentless label. Our client is a member of the MCPS and PRS both of which are aware that his record label is called Relentless. There can be no doubt that by 1999 within the industry the name Relentless was associated exclusively with our client. We have a number of statements from club and Radio DJs to this effect. The name had received wide coverage in the music press and of course appeared in numerous charts . Our client received numerous queries about “Rewind” because everyone assumed that he had produced it. Your client’s actions were a quite brazen and blatant misappropriation of our client’s goodwill, name and record label. Your clients would not have had the same air time and exposure for Rewind (and its consequent success) if they had not used our Client’s established name to get the DJs to play it. ” 3 April 2001 from Defendants' Solicitors “In your letter you appear to be suggesting for the first time that our client’s use of the name “Relentless” is causing actual and continuing loss to your client. If this is the case, please clarify the extent of these losses and provide us with copies of any evidence on which your client intends to rely in proving such loss. ” “ As far back as 24 January 2000 you referred to certain evidence which you have collated in relation to the issue of confusion, including “eleven statements from various music companies”. Despite our predecessors requesting copies of this evidence, you have so far failed to supply it. We would be grateful if you would now do so. Also, in your most recent letter, you state that you have a number of statements from club and radio DJs to the effect that by 1999 the name Relentless was associated exclusively with your client. Please supply us with copies of all such statements. In addition, you state that “ the name has received wide coverage in the music press and of course appeared in numerous charts ”. Please supply us with copies of any and all press cuttings to which you refer and, as previously requested, let us have details of the number of records sold by your client bearing the mark “Relentless” and highest chart positions of such records. As we have previously stated, there is currently some confusion on the part of the public in relation to our respective clients, but not confusion as you suggest. Any such confusion has been detrimental only to our client and, on the contrary, has almost certainly been advantageous to your client. Again, we would invite you to particularise the losses which your client is purporting to claim as a result of this confusion. You will of course be aware that without being able to show some actual damage your client’s proposed action in passing off will be bound to fail. Despite what you say in your letter, our specific queries in relation to “Serious” by Maxwell D have in no way been satisfactorily answered. Your letter comes nowhere close to providing us with sufficient information to allow us properly to evaluate your client’s claims. Instead, you make a number of unsubstantiated sweeping claims, referring for example to your client’s “wide coverage in the music press” and “numerous charts” entries, without providing any details to back these up. In the absence of such detail, our clients cannot possibly take your client’s claims seriously. We note, however, that you do not consider us to be entitled to the information which we have requested. You state that it is sufficient to say that your client has suffered loss and that details of such loss will be pleaded in the claim shortly to be issued. We must state in the strongest terms that this is not sufficient. In accordance with the pre-action protocols of the Civil Procedure Rules, you are bound fully to set out your client’s claim prior to the issue of proceedings, together with details of your client’s supporting evidence. You have blatantly failed and/or refused to do so in this regard and in all the other respects referred to above. You must realise that should you issue proceedings before supplying us with the basic information which we have requested in order that our client can fully consider your client’s claims, your client will be at severe risk as to costs. We have pointed this out in previous correspondence but in the light of your response to our last letter, must reiterate the point. Finally, and notably, you have completely failed to address our queries as to the proper identity of your client and the appearance of “published by Relentless Music Publishing” on the record label of “Serious” by Maxwell D. Please now explain to us which party or parties are considering bringing an action against our clients. Given that your client, Mr Hart, has previously had his Legal Aid Certificate discharged on the basis that he was not the proper party to bring the action which you are threatening, we fail to understand why you are now claiming to be instructed by Mr Hart in this action when you and your predecessors have previously claimed to be instructed by Relentless Recordings Limited. ” 19 April 2001 from Defendants' Solicitors “We refer to our letter dated the 3 rd April 2001 and note that we have not received any response from you. We would be grateful if you would now address the issues raised in that letter.” 26 April 2001 from Mr Hart's Solicitors “2. Your clients will be aware that from 1995 to date our client has traded under the name “Relentless” . He used the name for various parts of his business to include, but not exclusive to, the following –(a) “Relentless recordings” for record production;(b) “Relentless music publishing” for music publishing as writers and producers of compositions;(c) “Relentless Media Works” for promotional activities;(d) “Relentless Entertainment Group” for describing collective all the parts of our client’s business including our artist management, distribution, production, management and video/films. 3. On the 06 January 1995, our client incorporated Relentless Recordings Limited in an attempt to protect his trading name. This company has not traded but it is a member of Video Performance Limited. 4. From 1995 our client has used and been identified by the name “Relentless” and “Relentless Recording” which is his record label. A number of our client artists have released recordings on the Relentless label as follows- 1. Yvette Fauche – Where there is love 2. Platinum Radics – Sugar sugar 3. Governor Tiggy – Feel the groove 4. Arkel – We can work it out 5. Yvette Fouche – Crazy for you 6. Flame Feet Phobe One – Can you feel this 7. Flame Feet Phobe One – Can you feel this, DJ exclusive 8. Heart Beat Family – Hi Grade/Candy man weekend 9. Yvette Fauche – (album) ‘A million miles’ 10. Maxwell D – Serious 11. Kid Co – You know how it is 12. Arkel – We can work it our remix 2000 13. Silver – The way you are 14. Pay as You Go – Be real 15. Abbi – Paradise. 5. A number of tracks produced by our client during the “Relentless Recordings” label had been included on the following compilation records:- 1. Planet Mix 98 – records Spain 2. Groove Mania – Polydor Records Japan 3. UK Garage Flava – United Dance Records London 4. Promo Only (two editions) Choice FM London 5. Street Beat/CD Pool (two editions) – Pioneer Electronics London 6. Within the music industry the name “Relentless” or “Relentless Recordings” has been and continues to be associated and identified with our client. In particular t he Disc Jockeys in clubs and on radio stations where this sort of music is played and promoted knew and assumed that recordings on the Relentless label where [sic] from our client. The label has been on play list on numerous radio stations along side all the major record companies such as Sony, BMG, Arista and Virgin. 7. In addition our client has been mentioned on numerous occasions (referred to as “Relentless”) in the weekly industry magazine Music Week , which is distributed throughout Europe. He has similarly received coverage in other music publications such as Muzik, Touch Magazine, Blues & Soul, Mix Mag Update and Dee Jay Magazine. 8. Record shops display record charts , sometimes compiled by Disc Jockeys from the record they have been playing and received favourably in their clubs. Such charts always include the artist’s name and the record label. The name Relentless meaning our client appeared in numerous such charts. 9. Our client is personally a member of the Music Copyright Protection Society and the Performing Rights Society both of which are where he traded under the name and his record label is called Relentless. 10. In the premises, by 1999, our client had built up a substantial good will and reputation under the “Relentless” name and was always so identified within the industry. Relentless was a well-known and respected label exclusively associated with our client . 17. By using the label “Relentless”, the Defendants were misrepresenting their recordings as being that our client [sic]. They were deliberately appropriating to themselves the goodwill and reputation in the name “Relentless” belonging to our client. 18. As a consequence, the Artful Dodger recording was played by Disc Jockeys and was received very favourably. The recording has been very successful. It would not have received the same airtime and exposure if the Defendants had not used our client’s established name. ” I interpolate that this is the first time that deliberate passing off was firmly alleged. There is also a specific allegation that the Defendants' success was in part due to that passing off. Neither of these serious allegations was remotely made out. “21. However, your clients have continued to and still use the name “Relentless” causing immense confusion . There often appear in the same charts two records both under the label “Relentless” but one produced by our client and the other by your client.” 16 May 2001 from Defendants’ Solicitors “2. Prior to receipt of the letter from your predecessors, P Russell & Co, dated 2 December 1999, our clients were not aware of the existence of your client. You claim that your client has traded under the name “Relentless” since 1995. However, you have failed to produce any evidence of this whatsoever. You have merely stated that your client incorporated Relentless Recordings Limited in January 1995, a company which, by your own admission, has never traded. 4. In relation to each of the recordings listed, please provide the date of first release and annual sales figure and supply us with copies of the sleeves and labels of each record showing clearly the appearance of the name “Relentless”. 5. In relation to each record listed, please provide date of first release and annual sales figures. Please also state, in each case, the track or tracks appearing on the compilations which your client claims to have produced, and supply us with copies of the sleeve and labels of each record showing clearly the appearance of the name “Relentless”. 6. The claims which you make in this paragraph are of such a general nature as to be of no evidentiary value whatsoever. Please state precisely which Disc Jockeys in which clubs and on which radio stations you are referring to, providing statements where appropriate. Also, please provide precise details of which radio stations have had any of your client’s artists’ recordings play-listed on them , providing details of the dates upon which the play-list was in use, a copy of the play-lists in question, the track details and details of how the name “Relentless” was used in association with each track in question. 7. Please provide copies of each press cutting referred to , together with the dates upon which each was published. 8. Again, please provide precise details of which shops you are referring to, when the alleged charts appeared, and copies of the charts in question. 9. The fact that your client is personally a member of the MCPS and the PRS is irrelevant. As you are aware, MCPS and PRS are simply royalty collection societies and your client would have no call to trade with them. In any event, it is clear that your client has never use the word “Relentless” in relation to these societies. On the contrary, our client, Relentless Music Publishing Limited, is registered with both MCPS and PRS. 10. In the absence of any evidence to the contrary, we do not see how you can maintain a position that as a result of a few sweeping and unsubstantiated remarks, your client had built up substantial goodwill and reputation under the name “Relentless” by 1999. We and our clients strongly dispute this, and indeed throughout this course of correspondence you have notably failed to give one specific concrete example of the evidence upon which you will seek to rely to prove this to the court. Instead, you have continuously resorted to wide and meaningless generalisations. Any goodwill and reputation which currently exists in the name “Relentless” belongs to our clients. 17. It is quite inappropriate for you to claim that our clients were deliberately appropriating your client’s goodwill in the name Relentless. This is an allegation which is vigorously denied by our clients, who, as we have stated above, did not know of the existence of your client until receiving the letter from P Russell & Co. Nor do we accept that our clients were in any way misrepresenting their recordings as being that of your client in any event. We simply do not accept that the mainstream record buying public would have been aware of the existence of your client, or would have been confused as to the origin of our client’s record. 19. Where is your evidence for these allegations? You have simply listed a wide range of categories of people whom you claim were confused. If you have any specific examples, please supply them. Otherwise, this statement is of no value or meaning.” “23. The particulars of loss which you have listed are hopelessly particularised and/or evidenced. If you wish to continue to assert these losses, please provide full details of the circumstances surrounding the alleged losses , providing copies of any contracts to which you are referring. In particular, it will be necessary for you to prove:a. that the sums to which you refer would have been earned by your client trading as “Relentless” and not in his personal capacity as a producer;b. that the sums which you would have been paid are as stated; andc. that it was a direct and sole result of the existence of our client that you suffered these losses. This, of course, assumes that you are able to prove that your client had any rights to the name “Relentless” in the first place, and that our clients have infringed those rights, both of which we deny.”[13]Mr Hart then changed his solicitors from Shah & Co to his current solicitors, Simon Conroy. They issued and served the claim form with the particulars of claim on 25 th May 2001. These contained only general allegations. Given the previous history concerning the propriety of a claim by Mr Hart personally it is simply astonishing that the claim was issued solely in his name. The defendants' solicitors wrote back the same day 25 May 2001 from Defendants' Solicitors “In relation to the issue and service of this Claim on our clients, we must state, for the record, that we consider this step to be utterly unreasonable and precipitous. In particular, neither you nor your predecessors have made any attempt to respond to our letter to your predecessor’s dated 16 May 2001, which sets out in exhaustive detail our clients’ response to your client’s claims, and points out the complete lack of evidence so far provided by your client to support his sweeping allegations against our clients. We hereby [sic] expressly reserve all our clients’ rights in this regard.” 7 June 2001 Shah Solicitors “With regard to the second paragraph of your letter, bearing in mind that the first correspondence on this matter was generated in December 1999 we do not see how you can seriously suggest that it was precipitous for proceedings to be issued.” 11 June 2001 from Defendants' Solicitors “We must reiterate the comments made in our letter of 25 May 2001 in relation to the precipitous manner in which you have issued and served your client’s Claim. The Claim is hopelessly particularised and provides little or no information over and above those limited and generalised allegations and claims contained in your predecessors' letter of 26 April 2001. On 16 May 2001, we sent your predecessors an extensive and detailed reply to that letter setting out our concerns as to the lack of particularisation and evidence provided by your client and predecessors thus far, and explaining our client’s inability to be in a position properly to respond to your client’s claims until such further information had been provided. Without even acknowledging receipt of our letter of 16 May 2001, you have chosen to issue proceedings against our clients. We note your statement in your letter of 7 June 2001 that you have not seen this letter and we attach a further copy. However, the letter was certainly sent to your predecessors and the fact that it was not passed onto you cannot be used as an excuse for your actions in these circumstances. In any event, so inadequately particularised is your Client’s claim that if our clients were to attempt to respond to it in its current state, their Defence could not go much further than a bare denial of the assertions pleaded. This of course would be of little or no use in furthering this Claim, since it would neither narrow nor define the issues in dispute between the parties, in accordance with the Overriding Objective of the CPR. Moreover, our clients’ Defence would inevitably have to be amended as and when you provide further information on your client’s Claim, resulting in wasted time and thrown away costs. This situation could, of course, be avoided if you were to provide such further information as our clients’ could reasonably require to assist them in the substantive response to your client’s Claim. Accordingly, we enclose Requests for Further Information in relation to both the Particulars of Claim and Particulars of Objections. You will see that we have requested that you provide your client’s Responses to these Requests by no later than 22 June 2001. We would, in addition, propose that the time for service of our clients’ Defence be extended so as to expire 28 days after service of your client’s Responses to our clients’ Requests.”[14]With this letter was enclosed an extensive, but entirely reasonable, indeed routine, Request for Further Information. What was asked for was the simply usual kind of information given by a party who is claiming that he has created a goodwill. Thus Mr Hart's trading accounts, stationery, invoices, bank accounts were asked for. Details of all the records relied upon were sought. These included labels and sleeves, dates of release, quantities manufactured, payments of royalties due on the records (royalties would be due on all the cover versions). Details of all promotion, advertisements, charts and the like were also sought.[15]There was no response to the Request. Instead the following was sent. 3 July 2001 from Mr Hart's Solicitors “We note that the entirety of your clients’ Defence hinges upon the assertion that “as at November 1999 the Claimant had no reputation or goodwill in the name “Relentless” (paragraph 18(ii)). This assertion is unsustainable for the simple reason that our client had made substantial use of the name prior to November 1999, and he will have no difficulty in proving it . The simple fact of the matter is that he was the first to use the name in the field of popular music. By continuing to use the name (even after having been put on notice of our client’s rights by P Russell & Co’s letter dated 2 December 1999, just days after the release of “Re-wind”) your clients are liable for passing off. The sooner they face reality and accept that, the sooner this dispute can be resolved on sensible terms.” 4 July 2001 from the Defendants' Solicitors “We note your comments. The existence or not of the necessary reputation and goodwill on your client’s part sufficient to give him exclusive rights in the name “Relentless” has been the subject of lengthy prior correspondence between us and your client'’ previous advisers. We do not propose to rehearse our arguments in this regard, save to say that if your client believes he will have no difficulty in proving such a reputation, why has he failed and/or refused provide [sic] evidence to do so before the issue of proceedings? You talk in your letter of “trite law” in relation to a claim for passing off. Surely there is no more trite law in relation to a claim for passing off, than that mere use of a mark is not enough; to give a party exclusive rights in a mark, the use of that mark must have led him to developed [sic] sufficient goodwill and reputation. You do not address this in your letter and we continue to reject any argument on your client’s behalf that he has ever developed the necessary goodwill and reputation.” 18 July 2001 from Defendants' Solicitors “We are of course still awaiting your responses to our clients’ Requests for Further Information in relation to the Particulars of Claim served pursuant to CPR Part 18 on the 11 th June 2001. Accordingly, and insofar as the requests do not request provision of documents to be served on the 27 th June 2001) we would be grateful if you would confirm that you will provide responses to the requests by 27 th July 2001.” 10 August 2001 from Claimants' Solicitors “Please note that during the course of preparing our client’s List of Documents it has become clear that, in addition to Rod Hart, Relentless Recordings Limited owns certain rights. We shall therefore be applying to join Relentless Recordings Limited as a co-Claimant shortly.”[16]In view of the history, this letter too is astonishing. Although a draft application to join the company was sent, it was not actively followed up until, as I have said, an application to join the company was made shortly before trial. No explanation has been offered for why the application was not made at the time. If it had, the true position vis-à-vis the inappropriate nature of Mr Hart’s personal claim may well have emerged earlier. 22 August 2001 from the Defendants' Solicitors “(a) Please confirm that your client will meet our clients’ costs of, occasioned by and thrown away by your amendment. (b) We are concerned that you are seeking to advance alternative claims which are clearly contradictory. Your client, Relentless Recordings Limited, must know whether or not it has traded. Accordingly, we would be grateful for your explanation as to why this amendment is required.” 6 September 2001 from the Defendants' Solicitors “3. We note that your client has disclosed dormant company accounts in relation to Relentless Recordings Limited, and no other trading accounts. Please now provide your client’s trading accounts as submitted to the Inland Revenue, and in any event confirm whether or not your client is, or has ever been, registered for VAT purposes. 4. We note that your client has failed to disclose any bank account details or statements relating to his trading activities or those of any of his trading entities. Please now provide these documents. 5. In relation to each of the records which your client claims in his Particulars of Claim to have released, we note that your client has failed to disclose any of the following:a. Any evidence of agreements with the MCPS or any other owner or controller of copyrights authorising the manufacture and sale by the Claimant of the record to the general public;b. Evidence of the date of first release of the record;c. Evidence of the total number of records which the Claimant manufactured or had manufactured prior to 11 February 2000;d. Evidence of the total number of records which the Claimant sold prior to 11 February 2000;e. Evidence of the payment of mechanical royalties in respect of such record sales. Please confirm that no such documents exist or otherwise provide them. 8. We note that your client has failed to disclose any royalty statements from the Mechanical-Copyright Protection Society Limited or the Performing Right Society Limited. Please confirm that no such statements exist or otherwise provide them. 10. We note that your client has failed to disclose any royalty statements from PPL in relation to any instances of your client’s recordings being played on radio, as alleged in paragraph 4(e) of the Particulars of Claim. Please confirm that no such statements exist or otherwise provide them.” 21 November 2001 from Mr Hart's Solicitors “5. Our clients have traded by giving away between 200 and 500 free promotional copies of recordings and entering into Licence Agreements with third parties. Our clients do not therefore have any such documents. 30 November 2001 from Defendants “It does not appear to be in dispute that for your client to stand any chance of success in relation to his claim, he will first have to show that, by the time our client first stated using the name “Relentless”, your client had developed a sufficient goodwill and reputation associated with that name. It is absolutely clear from the authorities that this association must exist in the mind of the purchasing public (see Lord Oliver’s speech in Jif Lemon and Jenkins LJ’s speech in Turmix ). The full extent to which, and the precise means in which, your client traded using the name Relentless at all material times is thus highly significant. Accordingly, our client is entitled to know whether your client so traded to such an extent that he made any income from his activities. If he did, our client is entitled to know the extent to which he so traded and to see copies of all relevant accounts, balances and statements. Your client has admitted in pleadings that he trades under or by reference to the name Relentless. However, you have consistently failed and/or refused to provide details of his trading accounts. Please now do so.” “5(a) Whilst we note your answer, the significance of this response appears to be lost on you. How do you intend to show that your client had developed a reputation in the mind of the purchasing public associated with the name “Relentless” in circumstances where it appears that he never sold or marketed any of his records to the public under this name? 5(b)/(c)/(d) Is it really the case that your client retains no documentary evidence of: a. the first date of manufacture of each of the records; b. the number of each record manufactured in each pressing; c. the identity of the manufacturers; d. the number of each record given away; e. the date of such distributions; andf. the recipients of each record (whether by individual name or generic type)?”[17]A Second Request for Further Information was served on 30 th November 2001. It too went unanswered. When an application for an order was made, as I understand it the Master took the view that the date for witness statements was so proximate that the best thing to do would be to leave matters for them.[18]I turn back to the ground for recusal, that I had said "no answers were given." It is suggested that the letter of 30 th November (only that letter) counts as an answer, albeit inadequate. I think there comes a point when an answer is so inadequate as not to count as proper answer at all. This answer is well beyond that point. Moreover I cannot in any way understand how, even if the answer had been better, the point can amount to bias of any sort, actual or apparent. There is nothing in the point.[19]Mr Hart's witness statement was eventually signed on 25 th April 2002. It explicitly revealed for the first time that neither the company nor he had ever sold a record in the relevant period. It also made it clear that there had been no advertising by Mr Hart or the company. The principal basis of the claimed goodwill was that the company had made some white label records which had been sent out to DJ's for trial. The quantity sent out was exaggerated. The witness statement said this:
"Since being incorporated I have released (on a promotional level only) a number of records by artists on the Relentless label. I have set out details in Schedule 1 together with details of the approximate number of records distributed."
[20]Schedule 1 gives release dates which extend way beyond the relevant date, November 1999. Up until that date there are just 5 "releases", four of which are in 1997. The total number of copies of these amounts to 2,300. But cross-examination revealed that not all these were released. In particular the 1998 release of "Crazy for You" is listed as being of 1000 copies. Mr Hart knew full well that he still had 500 unreleased copies. In the end the maximum total number of sample records which went out over an approximately 3-year period is about 1,600, on average, say, 600 per year for the entire UK. The cost of making these and sending them out remains undisclosed, though there is some information about the latter - since a record "plugging" company was used. This reveals small payments - no more than a couple of thousand pounds. Mr Hart also failed to disclose in his witness statement that many of the people who received these records would have had more than one. Different releases went to the same people in some unknown degree. But it seems clear that the number of distributees was well less than 1,000.[21]It also became clear that suggestions that the claimants' records were in the shops were misleading. Normally when one says that has happened one means that the goods were sold to the shops either directly or via a wholesaler But not here. There is a practice of DJ's selling promotional records they do not care to keep to second-hand shops - just as book reviewers do, the difference being that reviewers are selling actually published books. It seems possible that some of the claimants' records reached some shops in that way. Shortly before this hearing Mr Fernando did an internet search which showed that a few shops had in stock an example of the claimants' white labels. That is hardly indicative of interest or reputation in November 1999.[22]I should also mention Mr Hart's Schedule 2. This is of CDs issued by other companies as "compilation albums" which included one of the claimant company's tracks amongst a large number of others. If one studies the sleeve of one of these one can indeed see that Relentless is credited as the company in very small print, though of course the average consumer would really be interested in the track. What Mr Hart's statement did not reveal of the only four compilation albums in Schedule 2 which were relevant (issued before November 1999) is that two were exported to Spain and Japan respectively. Moreover the numbers of the other two actually issued were not 2000 and 2000 as stated but of the order of 7-800 copies only.[23]As to advertisements and charts the evidence showed a minimal degree of achievement. I must explain a little more. The way promotion was attempted was in the normal way of the industry for small players. This is to send white label's bearing the track to be promoted to people on a list of what are hoped to be likely DJs. They, it is hoped, will play the record, normally in clubs. The DJ is given a "Return Form" to complete. They have an incentive to do this - if they do not then they are unlikely to get further free samples. In the case of the claimants' tracks there were DJ returns - they do indeed show some enthusiasm from some DJ's, though there were adverse comments too. They do not establish that any member of the public ever got to hear the name "Relentless." It is perhaps worth noting in passing that there are only a few hundred such returns provided on disclosure - far less than the 1,600 or so maximum number of white labels distributed in the three year period. Why the number is so much less is a matter of speculation, though certainly one possibility is that there were DJs for whom the track had no interest. There are other possibilities too (e.g. the individual had ceased to be a DJ). I cannot think of any reason favourable to the claimants case as why the numbers are so much less. The best can be that they existed and were lost - that is not said though some more were found shortly before this application was made.[24]It is suggested that one should draw an inference that the public did get to know the name Relentless because a number of the forms contain a box which was ticked if there was an inquiry. But much the most likely form of inquiry would be "what is this?" What the public want to know is what the track is called and who is performing. The name of the record company is a long way third. There is no point in mentioning its name unless and until the record is, or is going to be, available in the shops.[25]Appearance of the Relentless name in the music press was minimal. It did happen on a few isolated occasions in the three year period- but it is impossible to infer that it generated any reputation or goodwill. The press is full of thousands of names which get a mention and no more. In the very few cases where there was actually a brief review, the review not surprisingly concentrates on the track, not the name Relentless. No-one could reasonably infer from these matters that the name “Relentless” made any, still less an enduring, impact on the public mind.[26]It is also clear on Mr Hart's witness statement and cross-examination that the original contentions that the defendants' success was in part due to the use of the claimants' goodwill is simply not made out - indeed the claim is fanciful. Also fanciful was the claim made in correspondence (but not on the pleading) that the defendants deliberately set out to steal Mr Hart's or the company's goodwill.[27]I now turn to the applicable principles for recusal on the grounds of apparent bias. Mr Fernando for the claimants submitted that I should approach the matter as if I were coming to it for the first time and ignore the "already complex history .. of which the parties and the Judge are aware." I do not fully understand this submission - but I do accept that I should approach the matter objectively, trying to put myself in the position of another Judge of the Chancery Division.[28]It was submitted that I should consider the matter form the perspective of a fair-minded and informed observer sitting at the back of the Court and witnessing proceedings. I accept that. Lord Hope put the test thus in Porter v Magill [2002] 1 All ER 465 at p.507:
"The question is whether the fair-minded and informed observer, having considered the facts, would conclude that there was a real possibility that the tribunal was biased."
[29]It is noteworthy that Lord Hope expressly dealt with the impression a casual observer might have had. For in that case there was "room for the view" that such an observer might have thought the auditor was biased in giving a press conference. But such an impression would be dispelled "having examined the facts more closely." I mention this point because Mr Fernando appeared to submit that in relation to some of the incidents relied upon that the informed observer would not have adequate knowledge of either the law of passing off or security for costs to understand what was going on.[30]In this connection it is further worth noting that in Re Medicaments [2001] 1 WLR 700 at p. 727 Lord Phillips MR said:
"The court must first ascertain all the circumstances which have a bearing on the suggestion that the judge was biased."
[31]It boils down to this: that the observer is not only fair-minded but informed. He is taken to understand the underlying facts relating to an incident said to require recusal and their significance. This means he has to have been informed as to the relevant substantive and procedural rules. Thus, taking this case, he will have seen all the materials which I have recited above. It would make no sense, for instance, for such an observer to form his opinion without having read and absorbed Mr Hart's witness statement and the correspondence I have read. Likewise he must be taken to know what the case was about, namely, so far as relevant here, passing off. He must be taken to know that what either claimant had to prove is that it had a goodwill in the name "Relentless," that the use by the defendant amounted to a misrepresentation, and that there was resulting damage. I do not think he would have to know much about the technicalities of trade mark law other than it can be complicated: the alleged irregularities do not relate to that. He would just need to know that whether the defendants could succeed on their counterclaim involved a number of technical arguments. He would have to understand the rules as to security for costs, however. Otherwise he simply would not be "informed". No fair-minded observer would form an opinion as to bias or not if he was working on a basis of ignorance of the point under discussion.[32]Mr Fernando suggested the fair-minded observer would know less than this, that he would form his opinion as to appearance of bias in a state of partial ignorance as to what was really going on. Mr Fernando based this submission on a passage in the combined judgment of Mason CJ and Hughes J in the High Court of Australia in Webb [1993-4] CLR 41 at p. 52:
"in considering whether an allegation of bias on the part of the judge has been made out, the public perception of the judiciary is not advanced by attributing to a fair minded member of the public a knowledge of the law and the judicial process which ordinary experience suggests is not the case. That does not mean that the trial judge's opinions and findings are irrelevant. The fair-minded and informed observer would place great weight on the judge's view of the facts. Indeed in many cases the fair-minded observer would be bound to evaluate the incident in terms of the judge's findings."
[33]That passage is contained within reasoning about whether or not the "reasonable suspicion" test of Lord Goff in R v Gough [1993] AC 486 was the appropriate test. The case was about the possibility of bias in a juror who sought to send a bunch of flowers to the mother of the victim of the murder of which the defendants' had been accused. The point of the reasoning was to lead to the conclusion that it was not lawyers' perceptions which mattered: it was the perception of the fair-minded and informed member of the public. I do not regard what was said in the quoted passage as derogating from or inconsistent with the test adopted by Lord Hope or the requirement mentioned in Medicaments that "all the circumstances must be first be ascertained."[34]I must now turn to the course of the trial leading up to the six incidents said to require recusal because they showed apparent bias. Shortly after the trial commenced I suggested there should be settlement discussions. Mr Fernando, for the claimants drew my attention to that fact. It is not a point relied upon in itself. I cannot imagine that anyone could suggest there was anything in the way of an indication of bias in what I said at Day 1 pp.5-7. After some minor matters Mr Hart was called to give evidence. After a little evidence in chief, he was cross-examined by Mr Mellor for the defendants at considerable length, necessarily so in view of the exaggerations in his witness statement which emerged on that cross-examination. I have indicated most of them above, but there were others. It was also clear that Mr Hart's evidence was in conflict with the future evidence of no less than four witnesses to be called by the defendants - two of whom were wholly independent and two of whom had independent disputes with Mr Hart.[35]The cross-examination continued for two and a half days. On Day 3 there was discussion as to the interposition of another witness. In that context the question of whether Mr Hart could be present was raised. That in turn depended upon whether he was a client. In that context I raised the question of whether Mr Hart was properly a party. The transcript (Day 3 p.422) reads thus: Mr Justice Jacob: Is he a client, but what his place is in this action, I am not sure at all. That might be another difficulty. Mr Mellor, if the position is that Mr Hart has no claim because any claim could only be in the company, if he were not in the action because he has no claim you would have been in a position to apply for security for costs, would you not? Mr Mellor: Absolutely. That was one of our protestations that we put forward. Mr Justice Jacob: All right, we will leave this until his evidence is over.[36]A witness, Mr Miah, was then interposed. He was straightforward and honest. He was what one might call a semi-professional DJ in the Manchester area, working both as a club DJ and with a community radio station that broadcast for a couple of months a year. His main employment was as a community worker rather than in the music business. He said he had got himself onto the lists of some record plugging companies (of which he acknowledged there were lots). He agreed that with promotional tracks what really mattered was the music. He said that he got about 5-15 "promos" a week. When broadcasting a track he said he would normally mention "just the title and then possibly label or release date." He did not say he had ever mentioned "Relentless" on the radio or when acting as a DJ.[37]Mr Hart's cross-examination then continued. At the conclusion of his evidence I called counsel into the judge's corridor. The fact that I did that is itself relied upon as an allegation of apparent bias, or as a breach of Art. 6 of the ECHR.[38]The third incident is what was said in the corridor. There was a minor dispute as to this, in the end there has been agreement as to the substance My purpose was to speak bluntly (as one can much more readily with just the advocates), to indicate that I thought the claim in passing off was very weak and that the parties should re-consider settlement. I indicated that I thought Mr Hart's evidence had grossly exaggerated the position as to use and reputation. I am rather surprised by Mr Fernando's note of the conversation in that it fails to mention the whole purpose of the conversation, namely to urge settlement discussions. It also suggests I had formed a concluded view of the position - which it is now agreed I did not say. I did say, as was the fact, that the principal evidence for the claimant was now over. It is true that there were more witnesses to come. These consisted of friends of Mr Hart's son (that they were such was not disclosed in the witness statements but was extracted on cross-examination), some more DJ's such as Mr Miah, and some people who had been concerned with trying to promote the tracks recorded on the claimant company's white labels. I described these witnesses as "friends" of Mr Hart. So they were, though it is fair to observe that in some cases the friendship came about through his white label promotions.[39]Attempts at settlement failed over the next hour or so. The hearing resumed at 2 o'clock. Mr Mellor applied for summary judgment against Mr Hart. I granted that for the reasons I have given in my judgment on the point. That left only the claimant company in the case. Mr Mellor then sought security for costs pursuant to the provisions of section 726 of the Companies Act. I granted that too, for the reasons I have already indicated.[40]Three more incidents are relied upon here. First it is said I allowed inadequate time for the company to respond to the security application. The transcript records what was said by Mr Fernando:
"Before my learned friend kicks off, may I say that this application was passed to me at. I believe, 9.51 this morning. There have been a large number of witnesses here who have been waiting around outside. In order to prepare to answer that application, it is better to deal with it when one has had a chance to deal with it fully, which will be on Monday morning. Those witnesses who are here can be dealt with today. That is our first suggestion, my Lord. If my Lord is not amenable to that, then we will press on with my learned friend's suggestion."
[41]That is the totality of the basis of the suggestion of unfairness or the giving of a perception of unfairness. Mr Fernando did not say he could not deal with the application (which was very simple) there and then. Nor, in support of the submission, is it suggested that an adjournment would have made any difference other than to increase costs. There is nothing in this point.[42]The next incident relates to an allegation that I said evidence of friends would not be considered. But that was never said. What was indicated is that such evidence as was likely to come would make no significant difference to the position already reached.[43]I thought that true then. I think it true now. I think a fair-minded and informed observer would have thought that to be true too. By the time the incidents relied upon happened the overall picture was reasonably clear. It is worth summarising, even though it involves a degree of repetition. To some extent I have here borrowed detail from subsequent submissions of Mr Fernando. But the overall impression was clear at the time of the incidents said to require recusal. (i). Mr Hart had formed the company at the beginning of 1995 with his friend Joe Skinner. It had no capital or assets. (ii) By then he had done nothing personally under the name Relentless which could begin to justify a suggestion that he had any personal goodwill in the name. It is true that he persuaded a performer, Yvette Fauche to sign a recording contract before the company was formed. But even that was purportedly in the name of a company and it is common ground that the company took over once it was formed. It may be remembered here that "goodwill" is "the attractive force which brings in custom" in the classic dictum of Lord Macnaghten in IRC v Muller's Margerine [1901] AC 217 at p.223. (iii) The company had never traded. Over a three year period it had put out four promotional tracks, given away free in the hope that they would catch on and become commercial - about 1,600 in all. Like all mail shots some probably fell on stony ground, whereas others may have attracted a little interest. (iv) The number of recipients was perhaps 500 in all. They were principally semi-professional DJs for clubs, though some also did radio shows - mainly on pirate radio. One cannot be precise as to who got the discs because there are no proper records available. There is a list of 300 or so DJs to whom one of the four releases was sent. There was overlap in the sense that many of the DJs would have received more than one release. Some of the recipients may have been stony ground - for no database for promotional pitches can be completely up to date or accurate. (v) There is no evidence that any of the recipients of the claimant’s discs also received or knew about Re-Rewind when it was being promoted. They only heard of it after success commenced in November 1999. (vi) There is no evidence that the name "Relentless" ever came before the buying public in any significant manner - it can hardly have done so at all. Not only were there no commercial sales, but it seems unlikely that the name had any significant mention on the radio or in clubs. It is not possible to say it had no mention. It can be said that there would be no good reason for mentioning it because the tracks had no commercial release date. (vii) What matters primarily when a record is promoted is the track itself (the music and performer) not the record company. That is not to say that in some cases record companies cannot develop a reputation amongst the public for putting out good records - but they have to do that first. (viii). Each of the white labels issued generated some slight interest in the track . Mr Fernando suggested in this most recent hearing that the tracks created a "buzz." I did not think so at the time of the incidents said to justify recusal and I do not think so now. It is true that there were a number of DJ reaction sheets (Mr Fernando has extracted his best 10 but there were more). There were comments such as "Destined to be very large clubwise and commercially on it all the way works for us." However no track ever fulfilled this prophecy – each quickly faded away after its release. (ix) Many less DJ reaction sheets were disclosed than there had been white labels. (x) In support of the "buzz" Mr Fernando also referred to radio airplay. There are some reports suggesting some tracks were so played, albeit to a very minor amount. There was certainly insufficient airplay to generate any royalties (which is highly significant). Nor, for the reasons I have mentioned is it established that the name "Relentless" was ever used on radio. It might have been (though there could have been no motive because the public could not buy). It is certain that if it was it could not have generated any lasting impact - an impact to create "an attractive force to bring in custom." (xi) Finally so far as "buzz" is concerned Mr Fernando relied upon the undoubted fact that some of the tracks were mentioned in some specialist record charts, 20 in all. Most of these would never have actually got published in magazines because the track did not rise high enough in the chart. The charts would have been available in the industry, however. The name "Relentless" is given as the record company name, though if anyone had shown interest, that interest would have been focused on the track and performer. Given the thousands and thousands of records which would have had similar or better mention over the relevant period it is impossible to infer that the record company name had any significant impact at the time, still less a lasting impact. Certainly none of the witness statements of either side suggest that anyone saw the name in a chart, let alone remembered it. The last of the chart appearances was about 6 months before the defendants commenced use of Relentless. (xii) Clearly some of the DJs who received the tracks liked them. Others did not. Since the company's written records are incomplete a precise picture cannot be formed. (xiii) It seems fair to conclude that the name "Relentless" came before a proportion of the DJs concerned – a few hundred or so. It is unlikely that all of the recipients would have remembered the name - it must be taken into account that the name would have been swimming just as a member of a vast shoal of similar minor names. Of course the samples themselves bear the name Relentless - and in that sense are not, like all the other matters relied upon, ephemeral. But the fact that they may remain in the substantial collections of some DJs (who often receive many samples a week) or on the shelves of a few second-hand dealers is hardly enough to lead to the conclusion that there was anything more than a very minimal reputation. (xiv) When the defendants' record Re-Rewind came out with a burst of success, some of the DJs who knew the claimant company rang up either to congratulate Mr Hart or to ask why they had not had a free sample or both. They were told there was no connection. And that was that. There was no damage, no diversion of trade or anything else. The whole scale of the thing was too small for any protectable goodwill or any damage. (xv) Gross exaggerations were made in the course of correspondence and later in Mr Hart's witness statement. The only explanation for these can be that it was recognised that what actually happened was likely to be inadequate. (xvi) The action was begun in the name of Mr Hart alone. Given all the pre-action correspondence and the obviously illegitimate attempt to get Legal Aid that cannot have been an accident. There must have been a deliberate decision to omit the company and a deliberate decision to have Mr Hart as an individual. No explanation for why that was done has ever been offered. No creditable explanation appears conceivable. The only rational explanation is that it is not possible to obtain security for costs against an individual resident in within the jurisdiction because such a claimant does not satisfy the conditions of CPR 25.13(2). There is nothing arcane about this. It stares you in the face.[44]I now turn to consider whether the incidents relied upon amount to apparent bias, whether taken singly or collectively.[45]First there is the observation I made that the defendants were in a position to apply for security for costs. It is said that was a "tactical application which could only be of benefit to one party." In a sense it is true - but it that does not mean bias or apparent bias. It was evident that the claimants had been cheated of any chance of making the application before - all I was doing was stating the obvious. Would any fair-minded observer informed of what security for costs meant and when it could be obtained have thought my intervention unfair or one-sided? I think not. Mr Fernando reminded me of the well-known passage of Denning LJ in Jones v the National Coal Board [1957] 2 QB 55 . In that case the trial judge had interfered so much with the elucidation of evidence by cross-examination that it was unfair. Denning LJ said this: "The judge's part in all this is to hearken to the evidence, only himself asking questions of witnesses when it is necessary to clear up any point that has been overlooked or left obscure; to see that the advocates behave themselves seemly and keep to the rules laid down by law; to exclude irrelevancies and discourage repetition; to make sure by wise intervention that he follows the point that the advocates are making and can assess their worth; and at the end to make up his mind where the truth lies. If he goes beyond this, he drops the mantle of a judge and assumes the robe of an advocate, and the change does not become him well.[46]It is said that my intervention went beyond that of an arbitrator. I do not think so. What had happened was that a tactical advantage had been gained by the inappropriate use of Mr Hart as sole claimant. I was merely pointing out the most obvious consequence following the exposure of what must have been Mr Hart's deliberate false status as claimant. The judge's duty is to "deal with cases justly." When an unjust state of affairs becomes apparent then there is nothing wrong in the judge saying so and stating an obvious potential remedy which might prevent further injustice being caused. That remains so even if that remedy involves a subsequent application by one of the parties involved.[47]I turn to the second incident - the calling of counsel into the corridor with a view to indicating where I thought the case stood and the suggestion that settlement should be re-considered. The mere fact of calling the meeting is suggested to be unfair and a breach of Art. 6 of the ECHR. As Mr Mellor pointed out the mere fact of calling the meeting cannot conceivably be enough - it might have been for anything such as a personal reason for rising early. What must matter is what the meeting is for and what happens at it. Now, it is the court's duty to help "the parties to settle the whole or part of the case" (CPR 14.4(f))) as a part of active case management. If the court must just sit, like "patience on a monument," saying nothing that can never be done. Sir Thomas Bingham MR put the position before the new rules thus: "In some jurisdictions the forensic tradition is that judges sit mute, listening to advocates without interruption, asking no question, voicing no opinion, until they break their silence to give judgment. That is a perfectly respectable tradition, but it is not ours. Practice naturally varies from Judge to Judge, and obvious differences exist between factual issues at first instance and legal issues on appeal. But on the whole the English tradition sanctions and even encourages a measure of disclosure of his current thinking." ( Arab Monetary Fund v Hashim (19930 6 Admin L.R. 248 at p.356/[48]The new rules reinforce that. Experience down the years has shown that meetings of the kind I called have been used by judges to suggest settlement. As counsel I was in a number. As a judge I have called a few. Often they work, sometimes they do not. No-one is compelled to settle - and no-one was compelled to do that here. It is true I indicated the claim was very weak. And so it was. It is true there was more evidence to come - but I had read the witness statements and it was most unlikely that it could change the overall picture of a minimal reputation and no damage. That is how the claimant's case stood and I said so - not out of bias or apparent bias but as an exercise of judgment. I think the fair-minded observer would have formed much the same opinion at the end of the nearly three days of cross-examination of Mr Hart. He would have seen a summation of the state of play and what I like to think was another reasonable suggestion by the judge to the parties to try to settle the whole dispute. As to the position on the counterclaim, a lot more was involved - as to which it is not suggested I expressed any view (other than, by implication only that one of the defences would be weak, depending as it did on the claimant showing passing off).[49]I should perhaps emphasise that it is not suggested that I said I had formed a fully-concluded view of the merits of the claim in passing off. I can understand that if a tribunal goes that far before the case is over then there may be a case of apparent bias in some circumstances. Mr Fernando relied upon an instance of that ("a fixed, strongly adverse view") in the decision of Bell J in LB of Southwark v Jiminez (24 th April 2002). But even then I can well imagine cases where they reach a point when the claim is evidently entirely hopeless. If the judge says so at that point he is not "unfairly regarding with disfavour" one party in the relevant sense of being "predisposed or prejudiced against one party's case for reasons unconnected with the merits of the case " (see para 61 of Re Medicaments ). He is indicating his view solely for reasons connected with the case. That is not bias, actual or apparent.[50]Informality with advocates only is particularly valuable where the judge has comments to make on the reliability of a witness or party. That is all that happened here. However Mr Fernando relies also on Art 6 of the ECHR - the right to a "fair and public hearing". I do not think informal meetings of this kind are within the provision. First the discussions are not really part of the trial at all - they involve neither the taking of evidence nor legal argument in any real sense. If the matter settles, that is an end, otherwise the evidence and legal argument will all take place in open court. Secondly no-one has ever suggested that hearings in Chambers amount to a breach of Art 6. Yet that would seem to follow from Mr Fernando's contention that there "may have been a breach of Art. 6".[51]I must say more about the claimant's further witness statements. For Mr Fernando submits that there was apparent bias in what I said about them. He submits that I said their evidence would not be considered. But that is not so. What I was indicating was their evidence was unlikely to take matters further. I had the principal evidence of use - it was from Mr Hart. The further witnesses were from the very limited circle of people who knew of the claimant company. They were friends, either originally or via his efforts at promotion. It is true the witnesses had not been called - I had had a sample in the shape of Mr Miah. I was not saying their evidence of fact was inadmissible. What I was indicating was that proof that some of the very people who know of the claimant Relentless company were briefly confused was not likely to be enough - the confusion was not damaging - just as it was not in Stringfellows v McCain [1984] RPC 501.[52]Mr Fernando says the statements go further. He particularly relies upon statements from those who were responsible for the promotion of the claimant's records. Perhaps the best from his point of view is that of Mr Anderson who had been at a record plugging company called Mo's Music Machine. This company had (for sums undisclosed) distributed some of "Rod's Relentless records between 1998 and 2000." His first witness statement said that when Rewind came out, he assumed that the label was Mr Hart's and he asked Mr Hart for a copy." He added that he was surprised that it was on another Relentless label. No damage of any kind is mentioned or suggested. In a second witness statement he said "in my mind by the time "Rewind was released and for several years before that Relentless Records had a reputation as a small but reasonably well-known label." That statement had and has to be viewed in face of the established facts about non-trading and very limited distribution. Whether or not the label was well-known in the end is a value judgment for the judge. This assertion may be what the witness thought ("in my mind") but without any basis for it it is valueless. The other witness statement (or more exactly letter "to Whom it may concern") is from a Mr Francis another distributor responsible for some of the white label distribution. Mr Francis opined that "Rod and Relentless" had created "a respected reputation in the sphere of UK's urban music" prior to 11 th October 1996. That must be wrong. By then nothing had been distributed at all. So when he said the reputation was "greatly enhanced" during the next three years without giving any reasons, the court is bound to set that against what really happened. So also for his assertion that the company was "well-managed". It had no books, no proper records, no accounts and so on.[53]I do not think the fair-minded and informed observer would have formed the view that there was any bias, apparent or real, as a result of the discussion incident. I think he would have thought that the judge was firmly doing his job. using only the available and likely evidence to give the parties his provisional view in order to assist settlement.[54]Next Mr Fernando submits there was apparent bias because the claimant company was not allowed time to respond to the security application. I have quoted the entire transcript about this. Time was not asked for on that basis. Nor is it suggested that time would have made any difference, other than of course rack the costs up by another day. The fair-minded and informed observer would not see apparent bias here. He would note, however, that what was done was to fix an amount of security which was not absolute. It was open the claimant company to come back and explain that it could not be raised, either from its own resources or those it could tap. He would not see a stifling order.[55]The final incident relied upon is an allegation that I failed "to consider clear documentary evidence running contrary to findings in my judgment." That is not so much an allegation of apparent bias as an allegation that I got it wrong. Apart from that, however, the point is misconceived. The documents referred to formed the very basis of much of the three-day cross-examination. I have mentioned them above - the DJ returns, the charts and the odd mini-review. The complaint that they were not mentioned is in my view trivial. And I think the informed fair-minded observer would have thought so too.[56]It is for those reasons that I dismissed the recusal application. I now turn to the application for summary judgment on the counterclaim. Until this hearing the counterclaim was for infringement of registered trade mark and passing off. Mr Mellor dropped the passing off claim with a reservation that a fresh claim might be made if the claimant's activities' changed in nature. His reason was that, although the claimant company has continued its activities, in practice there had been only minor, non-damaging incidents of confusion. Of course apart from that, there may be a legal difficulty here. Passing off is judged from the date when the defendant starts his activity. Here the claimant's activities, such as they were, started before the defendants ever had a goodwill. This may be a case of honest concurrent user at common law, of the sort recognised in the GE case [1973] RPC 297. I do not decide the point because it does not arise as such. However, that both parties may be in the position that they cannot stop the other is a point which does call for consideration in a different way - see below.[57]Before I go to the details I remind myself of the proper approach for summary judgment. It is that laid down in Swain v Hillman [2001] 1 All ER 91 and Three Rivers DC v Bank of England (No.3) [2001] 2 All ER 543. The words of the rule (CPR 24(2)(a)(i) are "no real prospect" of defending the counterclaim. The contrast is with "fanciful."[58]The first defendant applied to register the word "Relentless" as a trade mark on 11 th February 2000 in 5 classes of goods and services. By then its first record Re-Rewind, bearing the mark Relentless had sold towards half a million copies and received much publicity. Although no doubt the name Re-Rewind was more prominent it cannot seriously be suggested that the mark itself had not developed a goodwill which the company had a genuine interest in protecting against the world in general.[59]The registrations were granted. One ground of attack is based on the proposition that that the specifications of goods and services were too wide - covering some goods and services which are too remote from any relevant intention to use the mark. This point is perhaps wholly academic, for there can be no doubt that what both sides are interested in is records and like goods. It was agreed that to the extent the claimants wish to keep the point alive, it could be dealt with another time and was not relevant to the counterclaim as such. I say no more about it and turn to the points which were in issue.[60]The validity of the registration is attacked on three grounds. The first of these is s.5(4)(a) of the Trade Marks Act 1994. This provides:
"A trade mark shall not be registered if, or to the extent that, its use in the UK is liable to be prevented - (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade."
[61]So here the question is whether at the time of the application to register the first defendant's use of "Relentless" was liable to be prevented by passing off. That is the question raised by the original claim. Up until now I have indicated that the claim is very weak. It now falls for consideration as to whether it is so weak as to have "no real prospects" of success. I have summarised the factual position already. In summary the name "Relentless" as denoting the claimant company could have been exposed to no more than a few hundred semi-amateur DJs. How many of them actually remembered it remains unknown, but it is not unreasonable to suppose that a proportion did. There is very little else - perhaps the odd mention on the radio and some ephemeral mentions in a few magazines. In all cases what would have mattered most is the track and performer, not the company name. This is a minuscule reputation. How much it cost to create is unknown - but there is no suggestion of expenditure of any significant money. Yet it is said to create a valuable asset, a goodwill capable of protection by passing off.[62]In my view the law of passing off does not protect a goodwill of trivial extent. Before trade mark registration was introduced in 1875 there was a right of property created merely by putting a mark into use for a short while. It was an unregistered trade mark right. But the action for its infringement is now barred by s.2(2) of the Trade Marks Act 1994. The provision goes back to the very first registration Act of 1875, s.1. Prior to then you had a property right on which you could sue, once you had put the mark into use. Even then a little time was needed, see per Upjohn LJ in Bali TM [1969] RPC 472. The whole point of that case turned on the difference between what was needed to establish a common law trade mark and passing off claim. If a trivial goodwill is enough for the latter, then the difference between the two is vanishingly small. That cannot be the case. It is also noteworthy that before the relevant date of registration of the Bali mark (1938) the Bali mark had been used "but had not acquired any significant reputation" (the trial judge's finding). Again that shows one is looking for more than a minimal reputation.[63]Turning back to the present case, the minimal nature of the alleged goodwill reflects itself in a different way too - there is simply no damage. A few DJs thought the claimant company had put out the defendant's records. When they inquired they were disabused. Nothing more happened. There was a claim of financial loss in the pre-action correspondence and in Mr Hart's witness statement. That came completely to bits on cross-examination. Mr Fernando does not seek to rely upon it or indeed on any actual damage.[64]What he does rely upon is the notion of "swamping". His main authority for this is a judgment of Laddie J in Sutherland v V2 Music (22 nd January 2002). It was a very different case. The claimants had been in a funk band called "Liberty". It achieved significant public exposure in the years 1993-1995. Laddie J said this:
"It appears that Liberty 1 was not just another band, indistinguishable from the vast bulk of the myriad of other bands in this country. …. In 1993 they were voted joint winners of a competition to find the Young London Band of the Year. This was organised and promoted by Capital Radio but also to press coverage and work performing live."
[65]The band was not as successful as it would like to have been, but overall Laddie J concluded that:
"it was known to some tens of thousands of members of the public at this time and admired by a significant number of them"
[66]The defendants were a band which started using the name "Liberty" in 2001. The question Laddie J had to decide was how much of the reputation and fame of the claimants had survived until then. He thought the case was "very close to the borderline," but that there was enough, both amongst members of the public and within the entertainment industry as an active band. As regards the latter it may be noted that the band's activities appear to have been a lot more extensive than that of the claimant company here. Laddie J went on to hold that there was damage, saying that continued use of Liberty by the defendants "will effectively destroy such goodwill as the claimants have".[67]I do not think this case assists Mr Fernando at all. Indeed it is against him. The claimants had much more fame, reputation and goodwill than anything which can reasonably be suggested here. Even so the "Liberty" case was "close to the borderline." That makes this case miles away from it. And as to the "effectively destroying goodwill" that simply cannot happen here. The few people who knew of the claimant company now know of the true position.[68]Mr Fernando also places emphasis on the specialist nature of the claimant's genre of music - so called "garage" music. His submission is that although the claimants are a small fish in a big pond such as "mainstream" they are a large fish in the little pond of "garage music." There is indeed evidence that interest in this kind of music was growing during the 1990's. But there is no more. There is no information suggesting that within that genre the claimant company was anything other than an unmemorable minnow. There is one contrary indication however – namely that no witness statement on either side suggested that he or she had heard both sides’ tracks until the defendants achieved success. For the defendants’ track Re-Rewind also had an experimental phase – indeed had even achieved 12,000 sales before the defendants took it up and made something of it. The company and particularly its name, did not stand out in practice within even the more limited field of garage music. I therefore conclude that there is indeed no realistic prospect of success for this defence. The next suggested defence lies under s.3(6). This provides:
"A trade mark shall not be registered if or to the extent that the application is made in bad faith"
[69]The provision is derived from Directive 89/104 Art. 3(2)(d). It is accepted that the relevant date for testing bad faith is the date of application. Two matters are relied upon. First a meeting between Mr Hart and Messrs Franklyn and Jobanputra and Mr Hart in 1997 and secondly the existence of the letter before action of 2 nd December 2000.[70]I turn to the meeting. Mr Hart gave evidence of it and there are witness statements from Messrs Skinner and Jobanputra. The position is this. In 1997 Mr Franklyn (a co-founder of the claimant company) had heard that the 3 rd defendant, Media Village, was a company who had just completed a very successful promotion for a third party. The 3 rd defendant was and is a promotional company run by Messrs Franklyn and Jobanputra. Mr Skinner suggested that he and Mr Hart should contact Media Village to see if it could promote the company's first promotional release. A meeting was arranged. It is common ground that only Mr Franklyn actually took part in the meeting and that there nothing other than a "shake-hands" meeting with Mr Jobanputra who immediately left for some other appointment.[71]Not surprisingly the main point of the meeting was the track to be promoted. It is probable that the name Relentless was mentioned however. It is not suggested that either Mr Hart or Mr Skinner gave anything such as a business card in writing bearing the name Relentless. (Consistent with the fact that the company had no business, there was no company stationery or cards). Mr Franklyn's witness statement says that he had no recollection of the name when he and Mr Jobanputra, at Mr Jobanputra's suggestion, alighted upon the name "Relentless". Mr Hart's cross-examination went like this: Q Mr Hart, there is not the slightest reason why Paul Franklyn or Shabs [as Mr Jobanputra is known] should remember Relentless nearly three years later? A We had quite a detailed conversation and I remember Paul was very accommodating. He liked the track and he was being very helpful. Whether he remembered or not, I cannot make comment on that. Q But you are not saying he is lying when he says "I have no recollection whatsoever"? A He may not have remembered but we did have the meeting and we did talk at some length.[72]Media Village did not promote the claimant company's records. Mr Hart in his witness statement said "they would not budge on price."[73]Mr Hart went so far, principally on the basis of that meeting to assert in his witness statement "I know Paul Franklyn and Shabir Jobanputra and they know me and my company very well". The 1997 meeting was the only time they ever met. And the only other matters relied upon to justify this statement is that two chart return lists included the claimant company's "Crazy for You" were received by Media Village in 1998 and that an employee of Media Village, Glyn, was on the circulation list of e-mails compiled to show playlists. At least one of these does not mention Relentless at all. And in all cases the track referred to is just one of many mentioned. A quick look at the documents shows that the notion that Relentless was well-known or indeed known from them is no more than wishful thinking.[74]What Mr Franklyn and Mr Jobanputra say in their witness statements is that the idea of using "Relentless" was that of Mr Jobanputra (who only met Mr Hart briefly). Neither have any recollection of the claimant company's name, though when the letter before action was received Mr Hart's name "rang a bell" with Mr Franklyn. There is a statement from a Mr Arthanayake, a Media Village employee, providing some corroboration of the fact that it was Mr Jobanputra who thought of using "Relentless" - that it was a word which Mr Jobanputra was in habit of using.[75]Now of course there has been no cross-examination on these statements. But they are not inconsistent with Mr Hart's evidence as it emerged after cross-examination had blown to pieces the suggestion that each side knew the other well. There is nothing to suggest that the statements are not true - no conflict to resolve. So I see no reason why they should not be accepted for a Part 24 application.[76]That means the name was chosen without any knowledge of the claimant company. That makes sense - who would pick trouble if they could avoid it? What cannot be said on any view is that the name was chosen to ride on the back of the fame of the claimant company. Given the true position about that, that notion is preposterous.[77]Of course by the time of the trade mark application the defendants did know of the claimant company - so actually it does not matter if they knew of it before. What they did not know was of any goodwill in the name Relentless. There is nothing to suggest they thought that there would be any confusion, still less deception, of anyone. It is not as though they did not make proper enquiries - the inter-solicitor correspondence I have quoted above shows much inquiry but no answer.[78]Was then the making of the application on 11 th February in bad faith? Whatever the precise shade of meaning "bad faith" may have, it is not remotely approached here. There was nothing underhand. There was an unsubstantiated assertion of passing off. And the company now had established its name. The application was in good faith and there is no real prospect of establishing otherwise.[79]I turn to the next point. This based on the defence provided by s.11(3) of the 1994 Act. It is supposed to implement Art 6(2) of the Directive. This reads:
"The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, an earlier right which applies in a particular locality if that right is recognised by the laws of the Member State in question and within the limits of the territory in which it is recognised."
[80]Section 11(3) says:
"A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. For this purpose an 'earlier right' means an unregistered mark or other sign continuously used in relation to goods or services by a person … from a date prior to whichever is the earlier of - (a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor … or (b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor ..; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular the law of passing off)."
[81]There are, perhaps, difficulties concerned with what is meant by "locality", but none I think which arise in this case. You only get a defence of earlier right if you can show passing off. It is not good enough to show you started using the mark before the other man used or registered it. That was the old law (s.7 of the Trade Marks Act 1938). Now you have to have used it enough to have established passing off rights. It is conceded that the relevant "locality" is the UK or at least England and Wales. For all the reasons I have given I do not think the claimant company has established any such rights and accordingly s.11(3) does not apply.[82]That brings me to the end of the points argued thus far. But it appears to me that neither side has fully considered the implications of the dropping of the passing off counterclaim and the fact that both sides have apparently carried on without harmful impact one upon the other. Under s.11(2) the Act provides a defence of "use by a person of his own name or address … provided the use is in accordance with honest practices in industrial or commercial matters."[83]It may be that this defence would enable the claimant company to use its full name. That would mean a form of honest concurrent use applies here, with neither side being able to stop the other. I have not heard argument on the point. Of course even if the defence potentially applies there is the unresolved question of whether or not the defence applies to companies as opposed to individuals. According to the House of Lords in Scandecor Development v Scandecor Marketing [2002] FSR 122, the better view is that it applies to both but that the point is not certain. The House referred the question to the ECJ but the case has settled. Unfortunately raising this question must involve further argument if the claimant company wishes to raise the point.[84]Accordingly I think I must wait for further argument before finally disposing of this case. I have indicated a number of times that I think it should settle. That remains my view. The parties would do well to try mediation.

Cited in 8 later judgments