“[Greenwich Polo Club] is a polo club in Greenwich, Connecticut, USA. It is one of the leading polo clubs in the World and has, as one would expect, produced merchandising using its own branding for years. In the late 1990s, it decided to expand that merchandising and the services of the First Defendant…were engaged. [The First Defendant] is a licensing agency representing writers, artists and brand owners around the World. It licenses wellknown assets such as Paddington Bear, Peter Rabbit and The Snowman. It has, over the years, been perceived as one of the leading global players in this market. The Second Defendant…is a director of the [First Defendant]. He was Chairman and CEO until 2016…”
“On the basis of these and other cases the Trade Marks Registry has developed thefollowing useful and accurate summary of key principles sufficient for thedetermination of many of the disputes coming before it: (a) the likelihood of confusion must be appreciated globally, taking account ofall relevant factors; (b) the matter must be judged through the eyes of the average consumer of thegoods or services in question, who is deemed to be reasonably well informedand reasonably circumspect and observant, but who rarely has the chance tomake direct comparisons between marks and must instead rely upon theimperfect picture of them he has kept in his mind, and whose attention variesaccording to the category of goods or services in question; (c) the average consumer normally perceives a mark as a whole and does notproceed to analyse its various details; (d) the visual, aural and conceptual similarities of the marks must normally beassessed by reference to the overall impressions created by the marks bearingin mind their distinctive and dominant components, but it is only when allother components of a complex mark are negligible that it is permissible tomake the comparison solely on the basis of the dominant elements; (e) nevertheless, the overall impression conveyed to the public by a compositetrade mark may, in certain circumstances, be dominated by one or more of itscomponents; (f) and beyond the usual case, where the overall impression created by a markdepends heavily on the dominant features of the mark, it is quite possible thatin a particular case an element corresponding to an earlier trade mark mayretain an independent distinctive role in a composite mark, without necessarilyconstituting a dominant element of that mark; (g) a lesser degree of similarity between the goods or services may be offsetby a greater degree of similarity between the marks, and vice versa; (h) there is a greater likelihood of confusion where the earlier mark has ahighly distinctive character, either per se or because of the use that has beenmade of it; (i) mere association, in the strict sense that the later mark brings the earliermark to mind, is not sufficient; (j) the reputation of a mark does not give grounds for presuming a likelihoodof confusion simply because of a likelihood of association in the strict sense; (k) if the association between the marks causes the public to wrongly believethat the respective goods [or services] come from the same or economically linkedundertakings, there is a likelihood of confusion.”
“(1) a reputation (or goodwill) acquired by the [claimant] in his goods, name, mark, etc. (2) a misrepresentation by the defendant leading to confusion (or deception) causing (3) damage to the [claimant]”
“(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of the trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to the business or goodwill of the trader by whom the action is brought.”
“From a precise date unknown to the Claimants but before the issue of the Claim Form herein and believed to have been from around the second quarter of 2015, the Defendants and each of them have used or threatened to use in the course of trade in the UK and/or in the EU the following signs and each of them, and other signs that also contain a representation of at least one polo payer with a polo stick on a pony…”
“16. The Second Defendant is and has been a director of the First Defendant at all times since it was incorporated. The website of the First Defendant (the Website) reached via the URL <www.copyrights.co.uk> includes a page entitled “About Us” which states that the Second Defendant is the “Chairman and CEO” of the First Defendant. Further, in a witness statement made in September 2017 and filed in response to an application to revoke certain UK trade marks owned by the Third Defendant, the Second Defendant described himself as the Chairman of the First Defendant, and its founder. He further stated that he had “experience and history in dealing with the [Third Defendant’s] licensing programme”. 17. The First and Second Defendants are referred to herein together as the CGL Defendants. The First and Second Defendants are jointly and severally liable for the acts of the CGL Defendants of which complaint is made herein for the reasons set out below under the heading “Joint Liability of the CGL Defendants”.”
“35. The First and Second Defendants are jointly and severally liable for the acts of the CGL Defendants of which complaint is made herein. In support of the foregoing allegation of this paragraph, and pending disclosure, further information and/or evidence, the Claimants will rely in particular on the following facts and matters: 35.1 The facts and matters set out in paragraph 16 herein. 35.2 The fact that the First Defendant is stated on the terms and conditions page of the Website to be the company that operates the Website. 35.3 The fact that the licences between the First Defendant and each of the Fourth to Eighth Defendants was signed by the Second Defendant. 35.4 The fact that the Second Defendant was the person within the First Defendant who made all the decisions in respect of the grant of licences in respect of the Signs, as illustrated by his signature on each such licence, and by the email from Tracy Casabere of the First Defendant to Mirna Keshishian of the Fourth Defendant on31 March 2017 at 10:26 in which she indicated that she could only approve a deal for Spain because she had spoken to the Second Defendant, referred to therein as Nicholas, and he had approved that deal… 36. In light of the facts and matters set out in paragraphs 35.1 to 35.4 above, it is inferred that the Second Defendant is the guiding mind of the First Defendant. Each of the acts of the First Defendants are undertaken personally by the Second Defendant, are authorised and/or procured by him, and/or he had engaged in a common design with the First Defendant to secure that the acts of which complaint is made herein took place, knowing and intending in each case that such acts should take place. 37. In the premises, the First and Second Defendants are jointly and severally liable for the acts of trade mark infringement and passing off of the CGL Defendants of which complaint is made herein, including the joint and several liability of the CGL Defendants for the acts of the Fourth to Eighth Defendants.”
“25.3 The CGL Defendants are jointly and severally liable for each of the acts of the Fourth to Eighth Defendants of which complaint is made herein and each of them because: 25.3.1 By entering into licence agreements with each such Defendant, the CGL Defendants authorised and/or procured the acts of each such Defendant of which complaint is made herein and each of them; and/or 25.3.2 By entering into licence agreements with each such Defendant, the CGL Defendants entered into a common design with each such Defendant to secure that the acts of that Defendant of which complaint is made herein and each of them took place. In each case, the CGL Defendants knew and intended that their acts would lead to the acts of each such Defendant of which complaint is made herein.” 25.3.1 By entering into licence agreements with each such Defendant, the CGL Defendants authorised and/or procured the acts of each such Defendant of which complaint is made herein and each of them; and/or 25.3.2 By entering into licence agreements with each such Defendant, the CGL Defendants entered into a common design with each such Defendant to secure that the acts of that Defendant of which complaint is made herein and each of them took place. In each case, the CGL Defendants knew and intended that their acts would lead to the acts of each such Defendant of which complaint is made herein.” (4) It is quite clear that this pleading seeks to spread the web of liability extremely wide, both in terms of the persons it seeks to ensnare and the territory it seeks to embrace, for paragraph 24 of the Particulars of Claim Quoted in paragraph 26 above. expressly pleads infringements or threatened infringements “in the course of trade in the UK and/or in the EU”
“The services offered by the First [and] Third…Defendants, The pleading contains reference to the Fourth Defendant who, as I understand it, was a sub-licensor: for the reasons given in paragraph 3(2) above, I do not propose to consider the position of the Fourth Defendant and have omitted reference to the Fourth Defendants as making no material difference to the issues arising in this dispute. namely the granting of trade mark licences and the arrangement of merchandising agreements, are offered to sophisticated commercial businesses who themselves arrange for the manufacture of the goods or even sublicence. The average consumer of those services pays a high degree of attention prior to entering into an agreement and entering into an agreement is the result of many discussions and negotiations. A high degree of attention is paid in relation to these services from the outset. The goods sold by the Fifth to Eighth Defendants are ordinary consumer items and the average consumer would be reasonably circumspect and observant.”
“28. However, none of the licensees based in the EU have ever sold any products in the EU bearing or utilising [Greenwich] Signs 1, 2 or 4. All products that have been sold by them in the EU (including packaging bags given to customers who purchase a [Greenwich Polo Club] product use [Greenwich] Sign 3. I am informed by Edwin Coe that the Claimants’ Particulars of Claim states that the Defendants have offered or exposed goods for sale and/or put them on the market in the UK and in the EU under [Greenwich] Signs 1, 2 and 4. However, this is not true. 29. Indeed, Sign 4 has not been used at all, whether on products or as part of any promotion or marketing. As a result of the suddenly aggressive approach taken by Lifestyle Equities starting in 2015, it was thought that the time was right to design a new logo which was even further away than ever from [the Logo]. [Greenwich] Sign 4 was the result – two horses facing left with the words ‘GREENWICH POLO CLUB’ as prominent as ever.”
“17.2 Secondly, the figurative element of [Greenwich] Sign 3 without associated words. Use or threatened use of that figurative element of [Greenwich] Sign 3 alone is shown, e.g. on the mulitcoloured t-shirts on A/2/A68. It has the following appearance…”
“17.2 Secondly, the figurative element of [Greenwich] Sign 3 without associated words. Use or threatened use of that figurative element of [Greenwich] Sign 3 alone is shown, e.g. on the mulitcoloured t-shirts on A/2/A68. It has the following appearance…”
“11. [The Claimants] object to all the Signs. Their position appears to be that any branding with a polo player on a horse infringes, however many horses and whichever way they are facing. [The Claimants] consider their exclusive monopoly to extend to parties who “imitate the appearance, the spirit and the style of the Brand”… 12. [The Defendants’] position is that the respective marks are not similar enough, This point is considered further below: for the present, I am considering the anterior point regarding the significance of the polo and horse rider motif generally. 48 Paragraph 48 of their written opening submissions. but there is also no likelihood of confusion because there is a crowded and welldeveloped market for consumer items, in particular clothing, using logos of polo players on horses. Consumers will be familiar with there being various brands on the market and appreciate that not all of them come from the same brand owner. Polo Ralph Lauren being a well-known example. 13. [In Greenwich Polo Club’s] case, it is a polo club and making a connection with that polo club in its branding does not deceive or confuse the public. It is not as though Greenwich Polo Club is trying to copy Beverly Hills. That would be absurd…”
“Sought licensees for goods to be sold under and by reference to the [Greenwich Signs] and each of them in all countries in the EU, including in the UK, by: 25.1.2.1 Advertising the Signs to potential licensees on the Website; 25.1.2.2 Procuring an entry promoting the Signs to potential licensees in “The Licensing Source Book Europe” from Autumn 2014; 25.1.2.3 Attending the Brand Licensing Europe trade shows in October 2015 and October 2016, and prominently displaying references to the Signs on their stand at that show in order to attract licenses; 25.1.2.4 Frequently communicating with the trade press (including in particular the publications or publishers Max Publishing, Total Licensing, License Global, Licensing Biz, Lema Publishing, Licensing World and Amaze Marketing Limited) to promote the Signs to potential licensees; 25.1.2.5 Appointing the Fourth Defendant as an agent to obtain licensees in Greece and Cyprus; and Cyprus; and 25. 1.2.6 Communicating with international agents in an effort to generate new licensees.” 99. These activities are very far removed from a third party using a sign similar to that of the Logo in the course of trade. The trade, in order to be relevant for present purposes, cannot be the trade of that of a brand agent such as the Copyrights Group: the Claimants’ marks are not registered in relation to such services. What we are here concerned with is infringement by the use of signs similar to that of the Logo in respect of classes of goods in relation to which the Claimants have some form of protection. Of course, I accept that “use in the course of trade” goes well beyond the use of a mark on the actual goods in question: it will extend to swing-tags, packaging, invoices and order documentation, as well as advertising. But what the Claimants are relying on are merely preparatory steps done in order to promote either its own business (i.e., getting in new licencees and/or the owners of new brands) or that of its clients (by which I mean getting new licensees for brand owners who are clients), and I would require pleadings of altogether more specific nature and considerably more cogent evidence for this part of the Claimants’ case even to get off the ground. In particular: (a). Paragraph 25.1.2 of the Particulars of Claim suggests that the promotional steps there described concerned only Greenwich Polo Club. I am satisfied, having heard Mr Durbridge, that this suggestion is simply wrong. At trade shows and in the trade press, the Copyrights Group was promoting its business generally. This point was made by Mr Durbridge during crossexamination, but he was really only confirming his written evidence: 53 Durbridge 1. “120. As I have already mentioned above, the Copyrights Group acts for a number of brands and franchises, including most notably, Paddington Bear. I have been involved with the licensing of Paddington Bear right from the beginning with Gabrielle Designs (founded by Eddie and Shirley Clarkson and who are the parents to the TV presenter Jeremy Clarkson) being the first licensee in 1972 following a copyright infringement dispute when they produced toy bears without the approval of the owner of the rights. Due to my involvement with the Paddington Bear brand, I was appointed as a Director of Paddington and Company Limited which owned the intellectual property rights to Paddington Bear in which I served as Director from 1977 up until30 June 2016 . 121. The Paddington Bear brand comprises a large proportion of the Copyrights Group’s business and, as mentioned previously, the [Greenwich Polo Club] brand forms a tiny proportion of Copyright Group’s operations and business. The Copyrights Group has also acted for a number of other wellknown brands, such as Beatrix Potter, which has also served to limit the time spent on the [Greenwich Polo Club] brand and it takes up a very small proportion of my time…. 122. An article by the Copyrights Group written in 2004 as an insert to a trade magazine celebrating Copyrights Group’s last 20 years of history was included in the Defendants’ disclosure as No 52. The article largely refers to Paddington Bear and there is only a notional mention of [Greenwich Group’s business and, as mentioned previously, the [Greenwich Polo Club] brand forms a tiny proportion of Copyright Group’s operations and business. The Copyrights Group has also acted for a number of other wellknown brands, such as Beatrix Potter, which has also served to limit the time spent on the [Greenwich Polo Club] brand and it takes up a very small proportion of my time…. Polo Club]. There was not a lot of coverage for [Greenwich Polo Club] in 101. the article because, quite simply, [Greenwich Polo Club] only represents a small fraction of the Copyright Group’s business.” (b). Furthermore, there is a complete lack of specificity, on the Claimants’ part, as to precisely how the manner in which the Copyrights Group, by its conduct, infringed the Claimants’ rights. Reference is made to the “Signs” generally, but I am not satisfied that there was any use of a Greenwich Sign that infringed the Claimants’ rights. The closest that the Claimants come is in the case of the proposed licensing of eyeware, where Mr Durbridge says this: Paragraph 33 of Durbridge 1. “For example, New View Idea, licensee based in the United Arab Emirates (and in which the license agreement was entered into on7 August 2017 ) was licensed to produce sunglasses, optical frames, lenses and cases, but they had particular difficulty with the [Greenwich Polo Club] branding and the use of the [Green Polo Club] logo on glasses and sunglasses, due to the limited space available on them on the arms of a pair of glasses to place a logo. I am aware that they produced designs with [Greenwich] Signs 1, 2 and 3 (or variations of them) and produced samples with Signs 1 and 3, but we have not seen any evidence or received royalty statements showing any actual sales in the EU or elsewhere. As far as I am aware, no products from New View Idea have been sold or produced in the EU.”
“The Third Defendant is jointly and severally liable for the acts of each of the other Defendants of which complaint is made herein for the reasons set out in paragraphs 25.3.1 and 25.3.2 above.”
“47. In Mentmore Manufacturing Co Ltd v. National Merchandising Manufacturing Co Inc, (1978) 89 DLR (3d) 195, the Federal Court of Appeal of Canada described the question whether, and if so in what circumstances, a director should be liable with the company as a joint tortfeasor as “a very difficult question of policy”
“inquiries into the matter will or may involve an ‘elusive question’ turning on the particular facts of the case, and whose resolution may in turn involve the making of a policy decision as to the side of the line on which the case ought to fall.” 48. It is because there is a balance to be struck on the facts of each case that it is dangerous for an appellate court to appear to attempt a formulation of the principles which may come to be regarded as prescriptive. But I think it can be said with some confidence that the following propositions are supported by the authorities to which I have referred. 49. First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company – that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company – for example by voting at general meetings and by exercising the powers to appoint directors. Aldous LJ suggested, in Standard Chartered Bank v. Pakistan National Shipping Corporation (No. 2),[2000] 1 Lloyd’s Rep 218 , 235 – in a passage to which I have referred – that there are good reasons to conclude that the carrying out of the duties of a director would never be sufficient to make a director liable. For my part, I would hesitate to use the word “never” in this field; but I would accept that, if all that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. That is not to say, of course, that he might not be liable for his own separate tort, as Aldous LJ recognised at paragraphs 16 and 17 of his judgment in the Pakistan National Shipping case. 50. Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control though the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. As I have said, it seems to me that this is the point made by Aldous J (as he then was) in PGL Research Ltd v. Ardon International Ltd,[1993] FSR 197 . 51. Third, the question whether the individual is liable with the company as a joint tortfeasor – at least in the field of intellectual property – is to be determined under principles identified in CBS Songs Ltd v. Amstrad Consumer Electronics plc,[1988] AC 1013 and Unilever plc v. Gillette (UK) Limited,[1989] RPC 583 . In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in CBS Songs v. Amstrad at page 1058E to which I have already referred, the individual “intends and procures and shares a common design that the infringement takes place”. 52. Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does “intend, procure and share a common design” that the infringement should take place may be liable as a joint tortfeasor. As Mustill LJ pointed out in Unilever v. Gillette, procurement may lead to a common design and so give rise to liability under both heads.”
“inquiries into the matter will or may involve an ‘elusive question’ turning on the particular facts of the case, and whose resolution may in turn involve the making of a policy decision as to the side of the line on which the case ought to fall.”