Yellow Van London Company v Driver [2014] EWHC 3094 (Ch)

[2014] EWHC 3094 (Ch)Case No CC13PO3887
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Intellectual Property Enterprise Court
Venue The Rolls Building, 7 Rolls Buildings, Fetter LaneDate Friday, 18 th July 2014
London
EC4A 1NL
Before
HIS HONOUR JUDGE HACON
Between
YELLOW VAN LONDON COMPANYClaimantJOHN DRIVERDefendant(also known as EDWARD RAYNOR)Defendant
Digital Transcript of Wordwave International Ltd (a Merrill Corporation Company)8th Floor, 165 Fleet Street, London, EC4A 2DY Tel No: 020 7421 4036 Fax No: 020 7404 1424Web: www.merrillcorp.com/mls Email: courtcontracts@merrillcorp.com(Official Shorthand Writers to the Court)
MR T AUSTEN (instructed by Silverman Sherliker LLP) appeared for ClaimantREPRESENTATION not provided for Defendant
Judgment

JUDGE HACON:

[1]This is an application for committal of the defendant as a result of alleged breach of the Order of Arnold J dated 12 November 2013.[2]Included in that Order was an injunction in the following form:
"3. The Defendant shall not (whether acting by himself or through any other person, agent, firm, company or howsoever otherwise) do any of the following acts: 3.1. make, authorise or expose for sale, sell, import or howsoever otherwise deal in the course of trade with any storage, van or delivery services or similar services by reference to the Trade Marks and/or the Registered Trade Mark and/or any similar names and/or logos or get-ups which infringe any of the Trade Marks; 3.2. howsoever otherwise infringe the Claimant's Rights in the Trade Marks; 3.3. howsoever pass off or attempt to pass off any service not provided by or on behalf of and/or under licence from the claimant or associated in the course of trade with the Claimant as and for such services; 3.4. reproduce the Claimant's Work or any substantial part of it; 3.5. issue to the public, sell, offer for sale or in the course of business distribute any material bearing or containing a reproduction of the Claimant's Work or any substantial part of it or; and/or 3.6. authorise, cause, procure, enable or assist any other person, firm or company to do any of the acts aforesaid. 4. The Defendant shall, within two calendar months of the date of this Order, destroy upon oath all goods, materials and articles in the possession , custody or control of the Defendant the use of which would in the course of trades constitute an infringement of the aforementioned injunctions or any of them and shall provide confirmation of the same in the form of an affidavit signed by the defendant within seven days thereof."
[3]I am satisfied from the evidence that the Order was served on the defendant pursuant to the rules requiring such service and I have also seen the third witness statement of Mr Sherliker dated 16th July 2014 regarding service of the application notice for the claimant’s claim of contempt and the evidence.[4]I am satisfied from the witness statement of Mr Sherliker that the application notice and the evidence in support of the committal were served personally on Mr Raynor.[5]The evidence for breach of the Order of Arnold J by Mr Raynor is contained in the second affidavit of Mr Sherliker dated 11th July 2014.[6]In that affidavit Mr Sherliker sets out a number of ways in which Mr Raynor has acted in breach of the Order of Arnold J.[7]I can take them in summary for reasons that will appear clear shortly, but in particular Mr Sherliker shows that Mr Raynor traded under the website www.bigyellowcan.busand at that website used the trading names Big Yellow Vans and Big Yellow Van Company; that he traded under wwwbigyellowvancompany.com using the name Big Yellow Van Company and Big Yellow Vans; that Mr Raynor used Google ad words to promote his website and that those ad words either included or consisted of Big Yellow Van; that he used the website www.originalyellowvancompany.comand operated under the trading name Yellow Van Company and Original Yellow Van Company; that he traded under the website comparemanandvan.com under the Yellow Van name; he traded under www.bigyellowexpress.co.ukand the name Big Yellow Express; he used an email address containing the Big Yellow Van name; that he used an automatic telephone message purporting to advertise the Big Yellow Van Company and that he used Big Yellow Van in various other ways on other domain names.[8]I feel I can summarise them in that way because before me today Mr Raynor has freely admitted that he was in breach of the Order of Arnold J, at least until recently, and, as I understand Mr Raynor, he now accepts that he was still in breach in certain regards.[9]I refer to some evidence that was handed to me today by Mr Austen who appeared for the claimant, in particular of use of Chatbox logos in the form of the claimant’s registered trademark on Mr Rayner’s website comparethemanandvan.com, of continued use of Big Yellow Vans on a website which bares Mr Rayner’s name and therefore it is to be inferred is under the control of Mr Raynor, and finally the availability of an android app with the -- showing part of the logo which forms the registered -- one of the registered trademarks owned by the claimant which is even as of yesterday still available for anybody who wants to download it onto their smartphone.[10]So I am satisfied that Mr Raynor has been in a significant number of ways, in breach of the Order of Arnold J.[11]I take into account a statement by Mr Raynor dated 16th July. It is undated but Mr Raynor has today confirmed that that is his statement. In it he says that he has in a number of ways rectified the breaches. I think there are two difficulties with that. One, as Mr Austen has pointed out, even if Mr Rayner’s statement is taken at face value, he has not rectified all the breaches of the Order of Arnold J and at least to some degree Mr Raynor has been shown in the past to be not altogether reliable in his protestations that he is not in breach.[12]I therefore arrive at this position: Mr Raynor accepts he has been in breach, he claims - at least he claimed recently that he had stopped being in breach but that even today Mr Raynor appears to accept that that is not the case.[13]It seems to me Mr Rayner’s attitude to the Order of Arnold J was to begin with extremely casual if not entirely dismissive and that gradually over time he has taken it more and more seriously but not sufficiently seriously it seems to do a complete and comprehensive search of all his websites and other means of advertising and marketing his business such as to ensure that there is absolutely no breach at all of the Order made by Arnold J.[14]I therefore have to reach a view as to the appropriate sanction to be imposed for the contempt by Mr Raynor.[15]One option is to make an order that Mr Raynor should be sent to prison for contempt. I do not think that at this stage that would be an appropriate order although I do say this: if after today there is a subsequent application for contempt which is proved, then I think on a second occasion Mr Raynor would be very seriously at risk of a jail sentence, but as of today I take the view that the more appropriate order at this stage is that there should be a fine and that Mr Raynor should pay the costs of the application of the usual scale.[16]So far as the fine is concerned, I think Mr Raynor should pay the sum of £10,000 for the breach and I will hear Mr Austen on the appropriate order as to costs.