“The Licensee shall not, [sic] use the Trade Marks or seek customers or otherwise solicit orders outside the Territory…. for Products bearing or promoted using the Trade Marks but the Licensee shall be entitled to sell such Products within the European Union (as its membership may from time to time vary) in response to unsolicited orders for such Products.”
“3.1 The Licensee: (a) shall use the Trade Marks substantially in the form stipulated in Schedule 1 and shall observe all reasonable directions by the Licensor; (b) shall not use the Trade Marks in a manner that is derogatory or will cause a material dilution of the Licensor’s rights in the Trade Marks; (c) [concerns confusion and is not relevant for present purposes]; (d) shall not incorporate any alpha, numeric or graphic additions to the Trade Marks; and (e) subject to clause 2.2, shall not sublicence, assign or transfer this Agreement or any rights granted hereunder. (a) shall use the Trade Marks substantially in the form stipulated in Schedule 1 and shall observe all reasonable directions by the Licensor; (b) shall not use the Trade Marks in a manner that is derogatory or will cause a material dilution of the Licensor’s rights in the Trade Marks; (c) [concerns confusion and is not relevant for present purposes]; (d) shall not incorporate any alpha, numeric or graphic additions to the Trade Marks; and (e) subject to clause 2.2, shall not sublicence, assign or transfer this Agreement or any rights granted hereunder. 3.2 The Licensee acknowledges the Licensor’s ownership of the Trade Marks and agrees that any goodwill accruing as a result of the Use of and attributable to the Trade Marks by the Licensee shall be for the benefit of the Licensor.”
“The Licensee shall not represent that it has any title in, or right of ownership to, any of the Trade Marks or do any act or thing which substantially impairs the rights of the Licensor in any of the Trade Marks, or brings into question the validity of their registration……., and shall ensure that any its agreements [sic] with any Sublicensee relating to use of the Trade Marks contain equivalent obligations.”
“5.2 The Licensor may terminate this Agreement immediately by notice in writing if: (a) The Licensee materially breaches this Agreement or any other member with the H&B Group commits an act which would amount to a material breach of this Agreement or (without prejudice to the Licensor’s other rights to terminate under this Agreement) otherwise infringes the Licensor’s rights under the Trade Marks to an extent likely to cause material lost to the Licensor; or (b) The Licensee commits any other breach of this Agreement or any other member of the H&B Group commits an act which would amount to any other breach of this Agreement and, to the extent that the breach or such other act is capable or remedy, fails to remedy it within sixty days after being given a written notice containing full particulars of the breach and requiring it to be remedied. ……. 5.6 If the Licensee ceases to Use the Trade Marks or any of them in respect of the Products for a continuous period of 5 years or more the Licensor shall be entitled to terminate this Licence in respect of such Trade Mark or Trade Marks.” (a) The Licensee materially breaches this Agreement or any other member with the H&B Group commits an act which would amount to a material breach of this Agreement or (without prejudice to the Licensor’s other rights to terminate under this Agreement) otherwise infringes the Licensor’s rights under the Trade Marks to an extent likely to cause material lost to the Licensor; or (b) The Licensee commits any other breach of this Agreement or any other member of the H&B Group commits an act which would amount to any other breach of this Agreement and, to the extent that the breach or such other act is capable or remedy, fails to remedy it within sixty days after being given a written notice containing full particulars of the breach and requiring it to be remedied. ……. 5.6 If the Licensee ceases to Use the Trade Marks or any of them in respect of the Products for a continuous period of 5 years or more the Licensor shall be entitled to terminate this Licence in respect of such Trade Mark or Trade Marks.”
“… Assignor does hereby sell, assign, transfer, and set over unto Assignee the entire right, title and interest in, to an under the Trademarks, together with the goodwill of the business symbolized by the Trademarks and in accordance with which the Trademarks are used, together with all common law rights of Assignor, including, without limitation, the right to bring action and recover for past infringement, if any, of the Trademarks.”
“It is said that that [ie exercise by the assignee] is a valid exercise of the option. My answer is that it is not such a valid exercise. My reason for that answer is that the only rights that an equitable assignment can create in the equitable assignee are rights against his assignor who thenceforth becomes trustee of the benefit of the option for the assignee, and the assignor could, of course, be compelled in equity to exercise those rights for the benefit of the assignee.”
“….. it seems to me that the fatal obstacle in the way of Mr Drake’s [he appeared for the assignee] contention is that when [the assignee] purported to exercise the option by the letter of August 7, 1973, there was no contractual relation in existence between [the assignee] and Stewart [who had granted the option]. Where there is a contract between A and B, and A makes an equitable but not a legal assignment of the benefit of that contract to C, this equitable assignment does not put C into a contractual relation with B, and consequently, C is not in a position to exercise directly against B any right conferred by the contract on A. The equitable assignment may be converted into a legal assignment by notice to B: seesection 136 of the Law of Property Act 1925 ; but, so long as the assignment remains equitable only, C has no more than a right in equity to require A to protect the interest which A has assigned and to do so by exercising the option himself.”
“The statute does not forbid or destroy equitable assignments or impair their efficacy in the slightest degree.”
“Unless the licence provides otherwise, it is binding on a successor in title to the grantor’s estate.”
“In order to make the assignee’s title effective against the debtor or fundholder and third parties notice of the assignment must be given to the debtor or fundholder, though no assent or acquiescence on the part of the debtor or fundholder is necessary. Thus an equitable assignee of a contractual option who has not given notice is not entitled to exercise the option in his own name.” ii) Chitty on Contracts, 32nd Edition, at 19-005: “A statutory assignee can sue the debtor without joining the assignor as a party to the action, whereas an equitable assignee often cannot do this. Furthermore, it must be observed that whereas a statutory assignment passes a legal right to the assignee, an equitable assignment passes only an equitable right. In practice, as already observed, this usually makes little difference as a matter of substantive law to the efficacy of the assignment; but there are some situations where the distinction can prove of practical importance. For example, it has been held that an assignee of an option to renew a contract for services who had not given notice of his assignment to the other contracting party could not exercise the option: the reasoning is based on the fact that the assignment was equitable only.” iii) Snell’s Equity, 33rd Edition, at 3-021 to 3-023: “3-021. The effect of an equitable assignment depends upon whether or not the whole interest in the chose has been vested in the assignee. 3-022. (a) Whole interest assigned. When the chose is merely equitable and the whole interest in it has been vested in the assignee, equity has always permitted him to sue in his own name without joining the original creditor…. 3-023. (b) Some interest outstanding. The rule is otherwise if the assignment leaves some interest outstanding. This occurs where there is an equitable assignment of part of the chose, or an equitable assignment of a legal chose; for in the latter case, even if the whole chose is assigned, the original creditor still owns the chose in law, holding it in trust for the assignee…. Further, an equitable assignee of a legal chose in action cannot exercise contractual rights such as an option conferred on the original creditor. Nor can he give an effective discharge to the debtor unless authorised to do so by the Assignor.”
“Even if such notices under contractual rights reserved contain errors they may be valid if they are ‘sufficiently clear and unambiguous to leave a reasonable recipient in no reasonable doubt as to how and when they are intended to operate’”
“Prima facie one would expect that if a notice unambiguously conveys a decision to determine a court may nowadays ignore immaterial errors which would not have misled a reasonable recipient”
“On the face of each notice, Life was said to be the tenant as successor in title to Direct and that, if true, could only have become about as a result of an assignment without consent. But such an assignment would be effective to make the assignee the lessee for the purposes of clause 7(x) [the break clause exercisable by “the lessee”]. The reasonable recipient could not know in the absence of proof of the assignment whether Life was the lessee. It might have been. If Life was not in fact the lessee but Direct was, the reasonable recipient could not know whether Amery-Parkes [Life’s solicitors] were authorised by Direct to act for it and to serve the break notice, contrary to the express terms of the notice. To my mind, because it is not obvious from each notice that there was an error in the name of the lessee, nor is it obvious who the actual current lessee was, nor whether [the solicitors filing the notice] were authorised by anyone other than Life, it is impossible as a matter of construction to cure what we now know to be the defect by substituting Direct for Life as the person on whose behalf Amery-Parkes were giving each notice.”
“Notices of this sort, particularly if served near the last minute, as happened in this case, have to be clear and unambiguous because the recipient is entitled, and may need, to make dispositions in the faith of such notices, i.e. on the basis that such notices can be confidently relied on. If such a notice contains a mistake then, while any mistake which cannot possible mislead a reasonable recipient should not stand in the way of validity, a mistake which could reasonably mislead a reasonable recipient cannot fairly be overridden.”
“First off, GNC foolishly, while owned by a PE firm some 15 years ago, sold the Brand name and the rights for GNC in the UK to Holland & Barrett. Similar to the old La Senza issue. So we have nothing to do with the stores there except to have people believe it is part of our company! Trying to get the name back now. Will take a while…”
“My personal view on that is, if we had at least something that we could control and portray in a similar manner, or at least have control or approval over and present the brand in a particular way that was consistent with the US, that could potentially force, at least Holland & Barnett/NBTY Europe, to move to something that was a level of consistency of what we had in the US, and then at least that would be a small win.” vi) Mr Cupples suggested, before giving that answer, that to have control of the domain name would help, if only in a small way, to minimise the risk of confusion between GNC US and GNC UK. Mr Bloch expressed difficulty understanding that since, as he put it, “gnc.london is going to be associated with the UK, is it not?” to which Mr Cupples answered “potentially, or London, Ontario, I do not know”
“GNC, he said, wants to shake the “historical stereotyping” image of an intimidating storefront tailored for body builders. In that respect, the company’s 87 per cent brand familiarity “is not always a good thing when you’re trying to change a brand.”” ii) One of the slides used by Mr Hennion for that speech was headed “Customer Goals” and included this: “Listening to our customers drove critical goals that aligned with our segments, including: ….. The need to drive an increased number of female customers….. Reducing the reliance on hard core sports customers (the old GNC bodybuilders)”. iii) Mr Baldwin does not dispute that Mr Hennion said what he is reported as saying nor does he deny that the slide was included in the presentation. What he does say is that, taking what Mr Hennion actually said with the slide, it is a misrepresentation by Mr Bloch to characterise the evidence in the way that he does, that is to say as a recognition that GNC was perceived as a sports nutrition brand. The relevant part of the presentation was about customer goals as the slide makes clear. According to Mr Baldwin, what Mr. Hennion was saying in the slide was that GNC wanted to reduce reliance on sales to bodybuilders and expand on sales to, for example, female customers. He is talking about the customers that he thinks GNC should focus upon. iv) However, I think that rather more than that can be taken from Mr Hennion’s presentation. I accept that in the US (which is what Mr Hennion was talking about), whatever the position was in the UK, GNC was not an exclusively sports nutrition brand. But equally it is clear that part of the brand was, indeed, sports nutrition including bodybuilding. From what Mr Hennion was saying, it is clear that he, at least, thought that an important part of that brand in the perception of consumers was its bodybuilding image. He acknowledged the historical stereotyping image of intimidating storefront tailored for bodybuilders and he acknowledged the need to reduce reliance on hard-core sports customers (the old GNC bodybuilders); this was a historical stereotyping as he described it and therefore not something, I infer, which had recently come about. Whatever the actual spread of business may have been, the perception of consumers as Mr Hennion presented matters was that the hard-core sports element was significant (exemplified by the historical stereotypical shop front) and the business reliant on that element (reducing reliance on hard core sports customers). And so Mr Hennion, as reported, said that GNC’s “87% brand familiarity is not always a good thing when you are trying to change a brand” and “I’d like to introduce a brand to the consumer for the first time again”
“I think it is re-aligning with the original message that, with our original message. I think with any company you sometimes deviate with different management teams, and I think it is about getting back to the core business. That is how I have interpreted it.”
“This was particularly apparent when dealing with the parts of Ms Cockerill’s evidence that H&B had indicated Mr Craddock would adopt, and had indicated that he could speak to. So for example when it was suggested that H&B had set about trimming away all of those products that were not sportsrelated, his response was to state that this was “complete rubbish”
“Q. Were you aware that after the purchase H&B set out to rationalise the product range of GNC? A. Yes. We removed, as I previously referred to, from the stock file the lines which we found on the recent stocktakes were effectively, there was no stock that actually existed, the stock had had to be destroyed because it was out-of-date, or it was so short dated or damaged that it did not exist, so that was removed from the stock file. We also removed or we put as future delete all of the really slow-moving lines, where there was absolutely no purpose in continuing with the business with them. In our view, the business was completely unmanageable with the scale of SKUs [stock keeping units] that it carried. Q. What was happening was that in order to reflect H&B's desire to position GNC UK as a sports nutrition brand, it set about trimming away all of those products that were not sportsrelated; that is correct, is it not? A. Complete rubbish. Q. Can we look at what Ms. Cockerill says in paragraph 64? ….. "As explained in paragraphs 27 to 33 above, the position was exactly the same ... prior to the acquisition. A very wide range of SKUs were being sold in GNC stores when we acquired them in 2003. Over the years, we have condensed and rationalised the products sold in the stores to ensure that they are more closely aligned with sports nutrition. This has in no way damaged the GNC brand: it has enhanced it." Are you saying Ms. Cockerill is talking absolute rubbish? A. No. This paragraph deals with over the years. The question you directed to me was in relation to what happened immediately following the 2003 acquisition.”
“Q. Is this what you are saying, as I understand it, you are now agreeing with Ms. Cockerill, but when you are saying that she says a wide range of SKUs were being sold, you have rationalised them so they are more closely aligned, are you saying the process was two-fold: first, you got rid of a whole lot of SKUs; and then you rationalised to make them more closely focused to sports nutrition? A. Yes, it was a two-stage process…… [Mr Craddock goes on to explain the first stage in some detail] …. There was then a process over a number of years, or has been a process over a number of years, where we have condensed and rationalised the stock file still further, because of the fact that the sports nutrition market has increased proportionally, or proportionate to the general health and well-being market; so, we have tended to focus on that market over the years since then….”
“Absolutely not; quite the opposite. In 2003, you could, there was not the market to sell just sports nutrition. GNC sold a range of products that specialised in sports nutrition. It was known as a sports nutrition retailer. That was its USP. Since then the sports nutrition market has grown and developed. There are more products and there are more consumers wanting to buy sports nutrition. So, effectively, you can sell either greater quantities of sports nutrition products and/or a wider range of sports nutrition products; so, you do not need to carry the slow-selling lines to actually attract the consumers any more…”
“(1) In certain circumstances a court may be entitled to draw adverse inferences from the absence or silence of a witness who might be expected to have material evidence to give on an issue in an action. (2) If a court is willing to draw such inferences, they may go to strengthen the evidence adduced on that issue by the other party or to weaken the evidence, if any, adduced by the party who might reasonably have been expected to call the witness. (3) There must, however, have been some evidence, however weak, adduced by the former on the matter in question before the court is entitled to draw the desired inference: in other words, there must be a case to answer on that issue. (4) If the reason for the witness's absence or silence satisfies the court, then no such adverse inference may be drawn. If, on the other hand, there is some credible explanation given, even if it is not wholly satisfactory, the potentially detrimental effect of his/her absence or silence may be reduced or nullified.”
“144. The current practice, which Arnold J. understandably followed, is to allow the evidence in unless the judge can be satisfied that it will be valueless. In my judgment that is the wrong way round. I consider that, even if the evidence is technically admissible, the judge should not let it in unless (a) satisfied that it would be valuable and (b) that the likely utility of the evidence justifies the costs involved.”
“This decision does not mean that the days of survey evidence are over. It is possible to conduct fair surveys and they may indeed lead to witnesses of value. And that may turn a case — some of the Jif lemon witnesses were of that character. But if the survey amounts to no more than scratching around for something and produces so little as this one has, then there is every good reason in common sense and procedural economy for excluding it along with any resultant witnesses.”
“Q. The branded T-shirt serves a marketing or promotional purpose, does it not? A.Yes, that is correct. Q.The person who see it in the street will not know whether the particular shirt that is being worn was sold to the wearer or given away to him, will they? A. No. Q. It performs the same marketing or promotional function in both cases, does it not? A. Yes it does.”
“MR. JUSTICE WARREN: …… There seemed to be a complaint which involves Kit Bag and Canterbury because they were manufacturing and distributing and were charging for it. You see these things for sale on the website. They were being sold in the club shop, presumably to make some money. MR. BALDWIN: Yes. MR. JUSTICE WARREN: Is there a distinction, do you rely on that over and above, would it be different if they had been free? MR. BALDWIN: No. MR. JUSTICE WARREN: The same point? MR. BALDWIN: Yes. MR. JUSTICE WARREN: Okay. MR. BALDWIN: The fact that they were charging, Ms. Hobbs made the point, that Holland & Barrett were not getting anything out of it; which they were not. We have the same point if they are free, but it is significant that they are not free, because some third party sub-licensee of Holland & Barrett is making money out of it. The case is a fortiori because they are goods out of which somebody is making a profit. I can make all the same points if they were giving them away, but if they are giving them away, it is more clearly just promotional stuff; but if they have a business in them, we are in a much stronger position, because it is clearly sub-licensing, somebody is making a profit, it is not us, and you have damage. When it comes to the reasonableness of that being stopped, and the steps that they took, what is significant, they made no effort to stop Canterbury or its distributors stopping this. That is why they are still available for sale today. What they did is they bought up Kit Bag stock and with Kit Bag, the evidence is that they got Kit Bag to agree not to get any more, but they did not do the same with Canterbury and they did not enquire of Canterbury of the distributions Canterbury had made to their distributors or to other people.”
“When you are referring to "entirely conventional marketing activities", by that, am I right in thinking that you mean these are the sort of activities you might well do with the Holland & Barrett brand? Ms Hobbs answered “Yes”
“The package of sponsorship benefits under negotiationalso included sponsorship rights for the team’s non-match day training kit under the GNC mark, two pages of advertising in each match programme (one of which we intended for GNC and one for HOLLAND & BARRETT), some very limited GNC signage on the East Stand, corporate entertainment, the opportunity to supply GNC-branded VHMS product to the team (amongst other products) and, most importantly, the right to use player quotes and Club imagery to promote the productcategories sold by GNC UK.”
“Preventative Petra”, “Fitness Finn” and the “Millennials”
“the reason I do not see a problem with that is that I do not necessarily feel that because he happens to be a rugby player that that is detrimental, and the reason for that is it is aspirational. You do not have to be completely focused on sports nutrition to have a brand ambassador who is a sports personality, if you like. There are many brands, for example, in the United Kingdom that would not be perceived to be a sports nutrition brand, and yet have ambassadors that are sporting personalities. It is commonplace and that is largely because the general public, I believe, aspire to be famous, they aspire to be fit and well and they hold these people in great esteem as examples of how to do it well. And that is why brands chose sports people, because they are famous and there is a great deal of interest in them. So, you do not have to be a sportsorientated supplement company; you could just be a multivitamin company and still have a brand ambassador that is a sporting hero.”
“use of the Community trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered”
“Having reflected upon the evidence, H&B does not pursue its claim in relation to the Threats (at ¶¶342 to 367 of its opening submissions) in its own right, though it asks the Court to take notice of the correspondence, upon which the threats claim was factually founded, as one relevant factor, to the extent that it is necessary to consider H&B’s bad faith claim.”
“Parties entering into a commercial contract…will assume the honesty and good faith of the other, absent such an assumption they would not deal.”
“What good faith requires is sensitive to context. That includes the core value of honesty….”
“Arguably, as least, that dichotomy is too simplistic. While it seems unlikely that any duty to disclose information in the performance of a contract would be implied where the contract involves a simple exchange, many contracts do not fit this model and involve a longer term relationship between the parties which they make a substantial commitment. Such “relational” contracts, as they are sometimes called, may require a high degree of communication, cooperation and predictable performance based on mutual trust and confidence and involve expectations of loyalty which are not legislated for in the express terms of the contract but are implicit in the parties’ understanding and necessary to give business efficacy to the arrangements. Examples of such relational contracts might include some joint venture agreements, franchise agreements and long-term distributorship agreements.”