“We refer to recent correspondence from yourselves. We note that, without our consent, you use the letterhead of the LLP which contains our logo as well as other registered Trade Marks. The LLP is the owner of four registered marks (UK00003320702, UK00003320706, UK00003320709 and UK00003350849). Please refrain from using the LLP’s Trade Marks on your correspondence.”
“We refer to our letter dated9 July 2020 , which concerned your use of the LLP’s letterhead. As made clear in our previous letter, the LLP’s logo and other parts of the letterhead are protected by registered trade marks. The LLP has not provided its consent for you to use its trade marks (contained in the letterhead or otherwise), nor will consent be provided. To the contrary, our letter of9 July 2020 specifically asked you to refrain from using the LLP’s trade marks on your correspondence. Given that your letters of24 July 2020 and6 August 2020 were issued on the LLP’s letterhead, you have evidently refused to comply with that request. Please confirm within 7 days of the date of this letter that you will stop using the LLP’s trade marks, be that on your correspondence or otherwise. If you fail to provide that confirmation and/ or continue to unlawfully make use of the LLP’s trade mark(s), the LLP will have no option other than to take further action against you. Should further action be necessary, the LLP will refer to this correspondence (and our letter dated9 July 2020 ) to show that the LLP has provided you with an opportunity to resolve this matter amicably.”
“Quad has resolved to appoint the LLP to carry out certain responsibilities for and on behalf of Quad in relation to its business, and the LLP agrees to carry out such responsibilities (the Services, as defined below) in consideration for the payment by Quad of the Administration Fees and any other payments due to Quad pursuant to this Agreement.”
“the clients and schemes to which Quad has provided any Services prior to1st April 2007 together with such clients as are attributable to the Pipeline Business and any parties introduced either to Quad or the LLP by any of the Introducers during the Extended Period including (without limitation) those clients and schemes as are set out in Part 1 of Schedule 2 to this Agreement which expression shall include (where appropriate) any companies within the same group of companies as the relevant Client from time to time and any pension schemes sponsored by any Clients and any new entrants into such schemes”
“7.1 The LLP shall provide the Services to Quad subject to the terms and conditions set out in this Agreement. 7.2 Quad shall at its own expense from time to time supply the LLP with all necessary information, data, documentation and other records and materials relating to the Services (the ‘Input Documentation’) within sufficient time to enable Quad [clearly this should read ‘the LLP’] to provide the Services in accordance with this Agreement. The parties hereby acknowledge and confirm that as at the date hereof Quad has provided to the LLP all such Input Documentation as may be necessary for the LLP to commence provision of the Services to Quad. In addition, Quad shall make available the Assets to the LLP in order to enable it to perform the Services PROVIDED HOWEVER THAT such consent to use the Assets shall be terminated immediately upon the termination or expiration of this Agreement. 7.3 The LLP shall provide the Services in a professional, competent, diligent and efficient fashion in accordance with Best Industry Practice and shall devote such time and efforts as it deems reasonably necessary for the efficient operation of Quad’s business. 7.4 The LLP shall in providing the Services comply with any statutory, regulatory or professional requirements as well as any other reasonable requirements made known to it from time to time by Quad which shall include (but not be limited to) the implementation of any actions arising from any reviews of service standards by Quad with any Clients or Introducers. The LLP shall consider in good faith any recommendations made by Quad in the LLP’s performance of the Services and the LLP shall be deemed to accept any such recommendation unless the LLP promptly notifies Quad in writing of the LLP’s rejection of any such recommendation and provides reasonably detailed reasons for such rejection. 7.5 Without prejudice to the generality of the LLP’s obligations contained in this Agreement, the Services shall be performed to a standard no less favourable than that provided by the LLP from time to time for other clients in respect of services the same as or similar to the Services.”
“In consideration of the provision of the Services by the LLP to Quad, the LLP shall on the last working day of each month invoice Quad in the sum of 57% of the aggregate of the amounts Quad has invoiced to the Clients and received payment for during each respective month for the Services … together with any Commissions received by Quad for that month to the extent that the Services were carried out on or after1st April 2007 (‘the Administration Fees’). For the avoidance of doubt the amounts referred to above shall include payments and Commissions received in respect of QFC matters. …” (This arrangement reflected the fact that it was envisaged that the Clients would contract directly with Quad, not with the LLP; therefore, as a matter of form, the LLP would seek payment from Quad. The formal position was reversed under the Introducer’s Agreement in respect of regulated business: the Clients there contracted with the LLP, which accounted to QFC, and subsequently to New Quad, for the relevant percentage of fees.) Clause 9.8 made provision for the advance of set-up costs by Old Quad to the LLP: “The LLP shall invoice Quad in respect of set up fees in the sum of£250,000 within 28 days of the date of this Agreement. Quad shall be entitled to a reduction of the amounts invoiced in accordance with clause 9.1 above to such amount as equates to the set up fees invoiced to it by the LLP. This reduction shall be effected by the LLP declining to invoice and waiving any future entitlement to invoice in respect of any period after1st April 2009 which reduction and waiver shall have effect until such time as the full reduction has taken effect. In the event of this Agreement being terminated prior to the full reduction being achieved, then the difference between any reduction achieved and the amount invoiced in respect of set up fees shall become immediately due and payable from the LLP to Quad.”
“The LLP is required to ensure the orderly transition of the Services from the LLP to Quad or any Replacement Provider in the event of any termination (including partial termination) or expiry of this agreement. This Schedule sets out the principles of the exit and service transition arrangements which are intended to achieve this and upon which the Exit Plan shall be based.”
“18. The LLP and Quad are not partners with each other and neither the terms of this Agreement nor the fact that Quad and the LLP or anybody affiliated to the LLP may have joint interests in any one or more investments shall be construed so as to make them partners of each other or impose any liability as such on either of them.” “20.1 The LLP may not assign, sub-contract, novate or otherwise dispose of any or all of its rights and obligations under this Agreement without the prior written consent of Quad other than in accordance with this Agreement. 20.2 Quad may assign, novate or otherwise dispose of any or all of its rights and obligations under this Agreement to any third party of its choice without consent.”
“17.1 This Agreement and the documents referred to in it constitute the entire agreement between the parties and supersedes all prior arrangements, written or oral with respect thereto. All other terms and conditions, expressed or implied by statute or otherwise, are excluded to the fullest extent permitted by law. … 17.3 If any of the provisions of this Agreement are held by any competent authority to be invalid or unenforceable in whole or in part, the validity of the other provisions of this Agreement and the reminder [scil. remainder] of the provisions in question shall not be affected.”
“… the extent and nature of the fiduciary duties owed in any particular case fall to be determined by reference to any underlying contractual relationship between the parties. Thus, in the case of an agent employed under a contract, the scope of his fiduciary duties is determined by the terms of the underlying contract. Although an agent is, in the absence of contractual provision, in breach of his fiduciary duties if he acts for another who is in competition with his principal, if the contract under which he is acting authorises him so to do, the normal fiduciary duties are modified accordingly: see Kelly v. Cooper [1993] A.C. 205, and the cases there cited. The existence of a contract does not exclude the co-existence of concurrent fiduciary duties (indeed, the contract may well be their source); but the contract can and does modify the extent and nature of the general duty that would otherwise arise.”
“That contractual and fiduciary relationships may co-exist between the same parties has never been doubted. Indeed, the existence of a basic contractual relationship has in many situations provided a foundation for the erection of a fiduciary relationship. In these situations it is the contractual foundation which is all important because it is the contract that regulates the basic rights and liabilities of the parties. The fiduciary relationship, if it is to exist at all, must accommodate itself to the terms of the contract so that it is consistent with, and conforms to, them. The fiduciary relationship cannot be superimposed upon the contract in such a way as to alter the operation which the contract was intended to have according to its true construction.”
“A fiduciary is someone who has undertaken to act for or on behalf of another in a particular matter in circumstances which give rise to a relationship of trust and confidence. The distinguishing obligation of a fiduciary is the obligation of loyalty. The principal is entitled to the single-minded loyalty of his fiduciary. This core liability has several facets. A fiduciary must act in good faith; he must not make a profit out of his trust; he must not place himself in a position where his duty and his interest may conflict; he may not act for his own benefit or the benefit of a third person without the informed consent of his principal. This is not intended to be an exhaustive list, but it is sufficient to indicate the nature of fiduciary obligations. They are the defining characteristics of the fiduciary. As Dr. Finn pointed out in his classic work Fiduciary Obligations (1977), p. 2, he is not subject to fiduciary obligations because he is a fiduciary; it is because he is subject to them that he is a fiduciary.”
“… fiduciary duties typically arise where one person undertakes and is entrusted with authority to manage the property or affairs of another and to make discretionary decisions on behalf of that person. … The essential idea is that a person in such a position is not permitted to use their position for their own private advantage but is required to act unselfishly in what they perceive to be the best interests of their principal. This is the core of the obligation of loyalty which Millett LJ in the Mothew case[1998] Ch 1 at 18, described as the ‘distinguishing obligation of a fiduciary’. Loyalty in this context means being guided solely by the interests of the principal and not by any consideration of the fiduciary’s own interests. To promote such decision-making, fiduciaries are required to act openly and honestly and must not (without the informed consent of their principal) place themselves in a position where their own interests or their duty to another party may conflict with their duty to pursue the interests of their principal. They are also liable to account for any profit obtained for themselves as a result of their position.”
“(1) Agency is the fiduciary relationship which exists between two persons, one of whom expressly or impliedly manifests assent that the other should act on his behalf so as to affect his legal relations with third parties, and the other of whom similarly manifests assent so to act or so acts pursuant to the manifestation. The one on whose behalf the act or acts are to be done is called the principal. The one who is to act is called the agent. Any person other than the principal and the agent may be referred to as a third party. (2) In respect of the acts to which the principal so assents, the agent is said to have authority to act; and this authority constitutes a power to affect the principal’s legal relations with third parties.”
“32. Whilst, clearly, this is an instance of agency, I do not accept that the relationship of agency is limited to this case. An agent can affect his legal relations with third parties in many cases where the agent has no power to conclude a contract on behalf of his principal. Thus, and purely by way of example, a solicitor acting for a vendor in a house purchase, has authority to receive and give good discharge for the purchase monies received, but does not have authority to conclude the sale itself; equally, an insurance broker may have no power to conclude the contract of insurance, but may well be the ‘agent to know’ for the purposes of disclosure and – if guilty of a non-disclosure or misrepresentation – may very well render the contract of insurance voidable even though the contract itself was concluded by the principal. This is because it is perfectly possible for an agent to affect the principal’s legal relations with third parties in ways other than the conclusion of a contract. 33. Clearly the label cannot drive the legal consequence, and the term ‘agent’ is used frequently and in a variety of contexts. The fact that a person adopts or is given the label ‘agent’ – or, conversely, seeks to avoid it – cannot be determinative. That is why is it necessary to focus on the functions that the agent is performing. But it is important not to be too prescriptive about what functions qualify a person as being an agent with fiduciary duties and what functions do not (even though the term ‘agent’ may be used).”
“34. For that reason, it is dangerous to seek to equate the term agent with the status of a fiduciary. If the concept of agency is a wide-ranging and indeterminate one, then to say that all agents are fiduciaries is likely to be wrong. This point was made by the Court of Appeal in Eze v Conway[2019] EWCA Civ 88 : (1) In that case, an extremely broad concept of agency was contended for. Asplin LJ made clear that the enquiry was inevitably extremely fact sensitive. The facts and circumstances needed to be carefully examined to see whether in fact a purported agent – and even a confidential agent – was in a fiduciary relationship to his or her principal. (2) There is no absolute correlation between ‘agency’ and fiduciary duties. A person not an agent might be a fiduciary; and an agent would not necessarily be a fiduciary. Asplin LJ stated: ‘It is clear from the authorities that in order for the law of bribery and secret commissions to be engaged there must be a relationship of trust and confidence between the recipient of the benefit or the promise of a benefit and his principal (used in the loosest of senses) which puts the recipient in a real position of potential conflict between his interest and his duty. Not all agents will be in such a position and the relationship may arise where there is no agency at all. It is not helpful, therefore, to consider what might be considered to be the paradigm of any particular type of agent, whether an ‘introducing agent’ or otherwise. It all depends on the nature of the individual’s duties and which of those duties is engaged in the precise circumstances under consideration. Although the relationship of principal and agent is a fiduciary one, not every person described as an ‘agent’ is the subject of fiduciary duties and a person described as an agent may owe fiduciary duties in relation to some of his activities and not others …’” ‘It is clear from the authorities that in order for the law of bribery and secret commissions to be engaged there must be a relationship of trust and confidence between the recipient of the benefit or the promise of a benefit and his principal (used in the loosest of senses) which puts the recipient in a real position of potential conflict between his interest and his duty. Not all agents will be in such a position and the relationship may arise where there is no agency at all. It is not helpful, therefore, to consider what might be considered to be the paradigm of any particular type of agent, whether an ‘introducing agent’ or otherwise. It all depends on the nature of the individual’s duties and which of those duties is engaged in the precise circumstances under consideration. Although the relationship of principal and agent is a fiduciary one, not every person described as an ‘agent’ is the subject of fiduciary duties and a person described as an agent may owe fiduciary duties in relation to some of his activities and not others …’”
“[T]he aim [of the reorganisation of the business of the legacy companies] was to permit the LLP to grow a new business (‘the LLP Business’) using the staff, assets, mark QUANTUM ADVISORY (‘the Mark’) (in conjunction with new staff, including two equity partners, and assets that were intended to be—and were—brought in) and Domain Name employed and used by Old Quad, while ringfencing the goodwill of Old Quad’s existing business (‘the Legacy Business’). The essence of the reorganisation was therefore to permit LLP to develop a separate goodwill attaching to the Mark which would exist concurrently with the Old Quad’s goodwill attaching to the Mark. In that regard it is to be noted that the Services Agreement does not contain any provisions dealing with ownership of goodwill and in particular does not contain any term providing that goodwill accruing to LLP should pass by contract to Old Quad. Following the reorganization LLP did develop the separate LLP Business and goodwill under the Mark. The annual turnover of the LLP Business (excluding any turnover associated with the Legacy Business) is now approximately£7m .”
“First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. … Thirdly, he must demonstrate that he suffers or … that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff."”
“Passing-off is a wrongful invasion of a right of property vested in the plaintiff, but the property which is protected by an action of passing-off is not the plaintiff’s proprietary right in the name or get-up which the defendant has misappropriated but the goodwill and reputation of his business which is likely to be harmed by the defendant’s misrepresentation.”
“For the plaintiffs to prove their point about the right to use the name does not of itself prove a case in passing-off; it merely removes one defence to it.”
“‘Dawnay Day’ is not a registered mark. So there is no right of property in the name. There are rights of property only in the goodwill associated with the name. Nonetheless, the right to use an unregistered mark can be, and often is, conferred as a contractual right. Franchising agreements are an example in point. The franchisor grants to the franchisee the right to sell the franchisor’s goods and to use for that purpose the name of the franchisor as, or as part of, the franchisee’s trading style. The contract is likely to prohibit the use by the erstwhile franchisee of the franchisor's trading style after the franchise has come to an end. The prohibition may be express or it may be implied. But, contract apart, the ex-franchisee’s ability to continue to use the trading style will depend upon whether to do so would constitute passing-off. The use of the style while the franchise lasted may have had the result that the style has ceased to be sufficiently distinctive of the business of the franchisor. It may, indeed, have become distinctive of the business of the franchisee. These considerations are dealt with in the dissenting judgment of Dixon J in the High Court of Australia in Need v. J. H. Coles Proprietary Ltd (1931) 46 C.L.R. 470 and in the Privy Council judgment [1934] A.C. 82 which allowed an appeal from the High Court. In the Privy Council Lord Wright said this: ‘... all the right that the respondent ever had in regard to the user of the appellants’ trade names was a revocable licence to use these names so long as the business arrangement continued between the appellant and the respondent ...’ (page 87).” ‘... all the right that the respondent ever had in regard to the user of the appellants’ trade names was a revocable licence to use these names so long as the business arrangement continued between the appellant and the respondent ...’ (page 87).”
“So long as DDSL was carrying on its business as ‘part of the Dawnay Day Group’, an attempt by any or all of the other Dawnay Day companies to restrain DDSL from trading as Dawnay Day Securities would, in my opinion, have failed. It would have failed because DDSL could have relied on its implied licence to trade as ‘Dawnay Day Securities’. It would have failed, also, because DDSL in trading under that style would not have been misrepresenting anything. … But once DDSL has ceased to be ‘part of the Dawnay Day Group’ it could not longer [sic] rely on the implied licence. It would be vulnerable to a passing-off action if the ingredients of passing-off could be established. Its position would, in my opinion, be on all fours with that of a franchisee whose franchise had come to an end.”
“First, the Joint Venture Agreement of January 31, 1992 ought not, in my opinion, to have provisions added to it in order to accommodate various points on which agreement may have been reached in the course of the negotiations but which the parties did not choose to incorporate into the final agreement. But, secondly, the Agreement must be construed by reference to the intentions of the parties objectively ascertained. The identification of what, if any, terms should be implied into the Agreement as to the use by the new company of the ‘Dawnay Day’ name is part of the process of construction of the Agreement.”
“There were all sorts of meetings at the time. It was about the Services Agreement and it would have been around what name we put in the Service Agreement with the outsourcing party. It was all amicable discussions, but it was, ‘Well, no, you can’t have Quantum Advisory Ltd because we might want to take it back if it doesn’t work.’ I don’t remember the specific meeting, but I do remember the conversation and that was certainly the reason we would not allow to change the businesses (sic) name to Quantum Advisory but had no objection to them trading as ‘Quantum Advisory’.”
“With my LLP hat on, I think we have a bit of a problem here now. Quantum Advisory Limited is not happy to give the LLP the name ‘Quantum Advisory’ for a mixture of emotional and financial reasons. I suggest that we may want to consider naming the LLP something completely different from ‘Quantum’, as should Quantum move from the LLP in the future there may well be legal implications for the name and its usage, whilst the LLP will have run up a number of years’ worth of marketing that name for it to fall as a windfall benefit to the Pascal [i.e. Quad] shareholders and then have to change their name. This would be clearly unfair, so we may want to let Quantum Advisory Limited keep the name and so be able to use that brand n years from now should they separate from the LLP. This would have some administrative complexities, but does allow us to start anew and prevent freeloading at the expense of the LLP.”
“The LLP was troubled about the impact on its business and its ability to plan which the loss of the services agreement would bring about. Andrew had circulated an email about the LLP not having Quantum branding due to the implications of losing the Services Agreement at the end of the 10 year term. [This email is set out below.] The Quantum Advisory brand was recognised as being important but [Old Quad] would not agree to relinquish the name as it wished to retain it given the potential need to move the business away from the LLP at the end of the term. As a result, the LLP decided to call itself Quantum Actuarial LLP. Subsequently, in May 2007 following further discussions I had with the LLP partners, it was agreed that the LLP would use the trading name of Quantum Advisory with a note in the letter footer that Quantum Advisory is a trading name of Quantum Actuarial LLP. This was in anticipation that the contract would be retained at the end of the 10 year term but there was clearly an acknowledged risk that the trading name could be lost. A key factor in the LLP’s marketing is the longstanding servicing of various of legacy clients who provide website testimonials and references for the LLP … I recall an informal meeting between myself, Andrew [Reid-Jones] (and I believe Dave [Deidun]), at which we discussed the problems (as well as diversion) of renegotiating terms in 10 years’ time … and the disruption and damage that would ensue to the LLP if it lost the business and brand. There were also concerns that the potential loss of business in year 10 would make it very difficult to plan in advance for future facilities and staff planning. I do not believe that we came to any conclusions at that meeting other than that it needed to be addressed. Following that meeting, Andrew asked to meet with Martin [Coombes] to review progress on the services agreement. … The extension of the term to 99 years was proposed by Martin as a way of dealing with the LLP’s issues and this was agreed by Andrew on behalf of the LLP at the meeting referred to above on15 August 2007 . I see from Martin's email to the lawyers following that meeting that the extension of the Initial Term would reduce the profile of the exit/transition provisions. It killed off the LLP’s concern about losing the contract other than by its fault.”
“Q. You became a partner, didn’t you, of LLP and worked there for many years, building up what you, as we saw from your statement in the first proceedings, considered to be a separate goodwill for that company? A. Yes. Q. Wouldn’t you think that it would be dreadfully unfair for your work building up that separate goodwill essentially to go to people who hadn’t had a hand in building it up in the event of a termination and a reversion? A. As I always understood it, if there was a termination, the LLP would have to rename itself as something else and would then transfer its clients to whatever that other thing was. … If you go back to the 10-year situation, let ’s say we had separated at the end of ten years. We couldn’t have two companies in Quantum operating as Quantum Advisory doing the same work. There would have to be one company that changed its name. Q. Why is that not said in any of the documents at the time? A. Well, the document didn’t really deal with the name, did it? It was dealing with the management fee. Q. Well, if it was such a concern and people were discussing the name, are you honestly saying no one would say, ‘You will stop using the name in the contract’, if that had been a consideration at the time? A. Well, isn’t it just common sense? You couldn’t have two Quantum Advisories operating in the same … … Q. And that [reversion of business to Quad] was unacceptable to the new business because they couldn’t have a situation where they would have to stop. A. Well, it wouldn’t have worked very well for either party, to be honest. I think the 99-year term works quite well.”
“A. No, as I say, I think it was just always assumed it was common sense that we couldn’t both trade as Quantum Advisory. Q. Well, you could. It’s not comfortable both trading alongside each other, but it’s possible, isn’t it? A. Well, okay, possible being maybe not very sensible. We would have both, I assume, been largely Cardiff−centric. So we would have had two businesses marketing themselves in a relatively small market.”
“As above, it was agreed that the LLP could use (and indeed the LLP has used) the Quantum Advisory name in respect of its dealings with both its own clients and Legacy clients. The LLP has therefore traded under the Quantum Advisory name since the effective date of the Services Agreement in 2007. Separate to the Legacy clients, the LLP has bid for, and has won, bona fide LLP clients (i.e. clients that have no prior connection to Quad) under the Quantum Advisory name and as a result of the LLP’s considerable marketing effort. From 2007 onwards, when the Quantum Advisory business was being marketed, it was the LLP that was driving that, and all new connections and relationships with referrers and potential clients were made with the LLP. … As with the Quantum Advisory name, when the Services Agreement was being negotiated, I do not recall any detailed discussions around the logo and branding and, in particular, what would happen in the event that the LLP rebranded. It was obvious that, during the course of a 99-year agreement, the LLP would, at some point, have to rebrand. As with the name, it was not agreed between the parties, or even proposed by Quad, that any logos or branding created by the LLP would belong to Quad or revert to Quad upon termination of the Services Agreement.”
“Q. One of the reasons for the discussion of increasing the term to 99 years, or the proposal to increase it to 99 years, was your concern about the loss of the brand at the end of the term of the agreement, wasn’t it? A. That was an aspect, yes. Q. So the effect of the extension to 99 years was to remove the problem for you, wasn’t it? A. I don’t think that’s necessarily the case, because whilst the LLP doesn’t have any—or has very limited—rights to terminate, I believe, Quad has more rights to terminate. So, although the agreement may well say 99 years, that’s sort of really within the gift of Quad, rather than the gift of the LLP. Q. But it solves your problem about—assuming all went well, which is what everyone anticipated, correct? [A. Mm hm]—that you would have the use of Quantum Advisory for 99 years? A. With concurrent rights, yes. Q. Mr Reid-Jones, please stick to the answer to the question. The 99-year term allowed for you to trade—as long as the agreement was in place—allowed you to trade under Quantum Advisory, correct? A. Yes. … Q. You were not at any stage told that you could go off and use the brand by yourself if there was no Services Agreement? A. I don’t think anybody had those discussions, positively or negatively. I don’t recall them.”
“Q. So why on earth do you think, given that, that Quad would have agreed anything different in relation to your trading under Quantum Advisory as a brand? A. Because I believe that it’s not hugely satisfactory, but they would have been able to carry on trading as Quantum Advisory Limited and we would be able to carry on trading as Quantum Advisory. Q. But Quantum Advisory Limited trades as Quantum Advisory, doesn’t it? A. I believe it does, yes. … Q. Mr Reid-Jones, are you really suggesting that it was thought sensible that two companies doing the same thing could use the same mark, pitching to Welsh Water for the same work? A. I think it’s an issue that both parties kicked down the road. Q. It doesn’t make commercial sense, Mr Reid-Jones. A. It does make commercial sense, if one party doesn’t believe it’s going to be around in 10 or 15 years’ time as an organisation which goes out and touts for its own business.”
“It was a bespoke agreement, fashioned to address the competing needs and interests of a group of professional people and, in particular, the practical issues involved in permitting one part of the group enjoy the benefits of the established Quantum brand and business when they were unable to afford a buy-out of the interest of the other part of the group.”
“[T]he benefit to the new entity was that it would receive a turnkey business: it would take over all of the staff of the legacy companies and have the full use of their premises and equipment and the Quantum brand name, as well as having an established client base on which to build new business. Thus it would be enabled to develop its own business without the usual costs and risks associated with starting a business from scratch.”
“It is the benefit and advantage of the good name, reputation, and connection of a business.”
“(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act. (2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such, but nothing in this Act affects the law relating to passing off.”
“A registered trade mark is personal property …”
“(1) No notice of any trust (express, implied or constructive) shall be entered in the register; and the registrar shall not be affected by any such notice. (2) Subject to the provisions of this Act, equities … in respect of a registered trade mark may be enforced in like manner as in respect of other personal or moveable property.”
“(1) A registered trade mark is transmissible by assignment, testamentary disposition or operation of law in the same way as other personal or moveable property. It is so transmissible either in connection with the goodwill of a business or independently.”
“(1) Subsection (2) applies where a trade mark is registered in the name of an agent or representative of a person (‘P’) who is the proprietor of the trade mark, without P’s consent. (2) Unless the agent or representative justifies the action mentioned in subsection (1), P may do either or both of the following— (a) prevent the use of the trade mark by the agent or representative (notwithstanding the rights conferred by this Act in relation to a registered trade mark); (b) apply for the rectification of the register so as to substitute P’s name as the proprietor of the registered trade mark.”
“(1) The following provisions apply where an application for registration of a trade mark is made by a person who is an agent or representative of a person who is the proprietor of the mark in a Convention country. (2) If the proprietor opposes the application, registration shall be refused. (3) If the application (not being so opposed) is granted, the proprietor may— (a) apply for a declaration of the invalidity of the registration, or (b) apply for the rectification of the register so as to substitute his name as the proprietor of the registered trade mark. (4) The proprietor may (notwithstanding the rights conferred by this Act in relation to a registered trade mark) by injunction restrain any use of the trade mark in the United Kingdom which is not authorised by him. (5) Subsections (2), (3) and (4) do not apply if, or to the extent that, the agent or representative justifies his action. (6) An application under subsection (3)(a) or (b) must be made within three years of the proprietor becoming aware of the registration; and no injunction shall be granted under subsection (4) in respect of a use in which the proprietor has acquiesced for a continuous period of three years or more.”
“(1) If the agent or representative of the person who is the proprietor of a mark in one of the countries of the Union applies, without such proprietor’s authorization, for the registration of the mark in his own name, in one or more countries of the Union, the proprietor shall be entitled to oppose the registration applied for or demand its cancellation or, if the law of the country so allows, the assignment in his favour of the said registration, unless such agent or representative justifies his action. (2) The proprietor of the mark shall, subject to the provisions of paragraph (1), above, be entitled to oppose the use of his mark by his agent or representative if he has not authorized such use. (3) Domestic legislation may provide an equitable time limit within which the proprietor of a mark must rights provided for in this Article.”
“(1) It is a principle of legal policy that, except in relation to procedural matters, changes in the law should not take effect retrospectively. (2) Legislation is retrospective if it alters the legal consequences of things that happened before it came into force.”
“(1) Unless the contrary intention appears, an enactment is presumed not to be intended to have a retrospective operation. (2) The strength of the presumption varies from case to case, depending on the degree of unfairness that would result from giving the enactment retrospective effect. (3) The greater the unfairness the clearer the language required to rebut the presumption. (4) Special considerations apply to procedural changes.”
“There is a general presumption that changes to procedure apply to pending as well as future proceedings.”
“37. [T]he words ‘agent or representative’ in section 60 should be interpreted in the same way as the same words in Article 8(3) of the CTM Regulation have been interpreted by the Office for Harmonisation in the Internal Market in the three decisions which I cited in BRUTT at [101], namely Promat Ltd v Pasture BV (Decision 164C/00054844/1, Cancellation Division,19 December 2002 ), Sotorock Holding Ltd v Gordon (Case R336/2001-2, Board of Appeal,7 July 2003 ) and Sybex Inc v Sybex-Verlag GmbH (Decision 2486/2004, Opposition Division,26 July 2004 ). 38. In Promat v Pasture it was held at [14]: ‘The terms “agent” or “representative” must be interpreted broadly to cover all kinds of commercial relationships, regardless of the nomenjuris of the contractual relationship between the principal-proprietor and the agent-CTM applicant. Thus, it is sufficient for the purposes of Article 8(3) CTMR that there is some kind of agreement of commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty or trust and loyalty as regards the interests of the TM owner. It follows that Article 8(3) may also extend, for example, to licensees of the owner or to authorised distributors of the goods for which the mark in question is used.’ 39. In Sotorock v Gordon it was held at [17]: ‘Article 8(3) CTMR has its origins in Article 6septies of the Paris Convention for the protection of Industrial Property (OJ OHIM 9/97, p.805). In the spirit of the original provision, Article 8(3) CTMR aims at providing a safeguard for trade mark proprietors against attempts at misappropriation of the trade marks by persons who are in a close business relationship with the proprietors. Such persons may have the capacity of a proprietor’s agent or representative, as is mentioned in the wording of Article 8(3) CTMR. The term “representative” is a broad concept and may include a distributor or an importer of the proprietor’s goods or any party who acts for the proprietor in any trade connection. Both agent and representative, by virtue of the close commercial relationship they have with the trade mark proprietor, may be able to take advantage of the proprietor’s intellectual property. This provision sets down the limits of this relationship and offers protection to the trade mark proprietor where there is proof that the relationship exists and that the trade mark proprietor never consented to the agent’s or representative’s registering the proprietor’s trade mark in its own name.’ 40. In Sybex v Sybex-Verlag it was held at page 9 section 3: ‘In view of the purpose of this provision, which is to safeguard the legal interests of trade mark owners against arbitrary usurpation of their trade marks by trusted commercial associates, the terms “agent or representative” should be interpreted broadly to cover all kinds of equivalent cases regardless of the nomen juris of the contractual relationship between the principal/proprietor and the CTM applicant. Thus, this provision could also encompass, for instance, local distributors, franchisees or licensees of the proprietor.’”
“84. It follows that the attainment of that objective requires a broad interpretation of the concepts of ‘agent’ and ‘representative’ within the meaning of that provision. That finding as to the meaning of the condition relating to the status of the applicant for registration of the mark vis-à-vis the proprietor of the earlier mark is, moreover, corroborated by the fact that, under that provision, those two concepts are linked by the co-ordinating conjunction ‘or’, which testifies to the application of article 8(3) of Regulation No 207/2009 in the various cases of representation of the interests of one party by another. 85 The Board of Appeal therefore did not commit an error of law by stating, in para 20 of the decision at issue, that those concepts must be interpreted in such a way as to cover all forms of relationship based on a contractual agreement under which one of the parties represents the interests of the other, with the result that it is sufficient, for the purposes of the application of that provision, that there is some agreement or commercial co-operation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark.”
“4.5.1 [A]applying Article 8(3) EUTMR exclusively to identical marks for identical goods or services would render this provision largely ineffective, as it would allow the applicant to make variations either to the earlier mark or to the specification of goods and services that would still allow the contested mark to be attributed to the original proprietor. Therefore, the scope of application of Article 8(3) EUTMR should not be limited to identical marks but should also extend to similar marks (11/11/2020 , C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 74, 91 and 99). Likewise, its application cannot be precluded just because the goods or services are similar, and not identical (11/11/2020 , C‑809/18 P, MINERAL MAGIC, EU:C:2020:902 References to the MINERAL MAGIC case are to EUIPO v John Mills Ltd. , § 99). However, the assessment of similarity for the purposes of Article 8(3) EUTMR must be made in due consideration of the objective pursued by that provision, which is to prevent the misappropriation of the earlier mark by the agent or representative of the proprietor of that mark. Moreover, not just any degree of similarity between the marks and the goods or services at issue may entail a misappropriation of the earlier mark. In particular, likelihood of confusion is not a condition for the application of Article 8(3) EUTMR (11/11/2020 , C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 92). The degree of similarity between the marks and the goods or services should be such so as to guarantee that the purpose of Article 8(3) EUTMR is met, namely to prevent the misappropriation of the mark by the proprietor’s agent (11/11/2020 , C‑809/18 P, MINERAL MAGIC, EU:C:2020:902, § 72).” “4.5.2 It must be verified that the contested mark is sufficiently close to the earlier mark that, despite any variations, it would still be attributed to the original proprietor. Variations to the earlier mark which do not affect its original distinctiveness are not sufficient to exclude the application of Article 8(3) EUTMR. On the other hand, where the contested mark contains variations that alter the original distinctiveness of the earlier mark, it would be, in principle, more unlikely to find that there was misappropriation.” 4.5.3 It must be verified whether the goods and services display a close relationship in commercial terms such that the use of the contested mark for those goods or services would pose a serious obstacle for the original proprietor to enter the EU market or continue exploiting its mark on that market. What counts is that the contested goods or services may be perceived by the public as being provided as a result of an agreement between the parties and that it would be reasonable for the original proprietor to provide such goods or services itself in view of the scope of protection of the earlier mark.”
“The signs and the goods and services are identical or closely related” (my italics). This way of putting it makes a significant difference, as appears from the way the formulation was applied in submissions. Quad’s skeleton argument said at paragraph 88: “In the present case the trade mark applications were all made with respect to marks that had been used with respect to the services provided to Quad’s clients by LLP processing business on Quad’s behalf under the Services Agreement.”
“So the question then goes on: are the signs and the goods and services identical or closely related? Now, again, it is clear from the case law, both in the UK under section 60 and in Europe, that you don’t need identicality. And that closely related is −−again, it will be a matter for my Lord, and I will make submissions as to what that means. … [T]he judgment in the John Mills case sets out the criteria . Now, the signs in this case, all the marks applied for, are ones that had been used with respect to Quad’s clients. The Word Mark is, on any view, identical to the Mark, Quantum Advisory, that has been admitted to be used since 2000. And the others, save for the Hero Q on its own [i.e. the Q Device Trade Mark], all contain as their distinctive element ‘Quantum Advisory’. Now, unlike other aspects of trademark law, there’s no need for confusion or thinking there will be confusion on this part in this case. It’s simply a question of looking at the marks and thinking: are they either identical—which we would say, in my respectful submission they are identical—to the marks of Quad, or so closely related that they would fall within section 10B?”
“[T]he assessment of similarity for the purposes of Article 8(3) EUTMR must be made in due consideration of the objective pursued by that provision, which is to prevent the misappropriation of the earlier mark by the agent or representative of the proprietor of that mark.”
“98 In so far as John Mills criticises the Board of Appeal on the ground that it found that article 8(3) of Regulation No 207/2009 was applicable in the present case, even though not all of the goods to which the application for registration of the contested mark refers were identical to those covered by the earlier mark, it should be borne in mind that, even though that provision does not mention the goods or services for which the mark is sought, the essential function of a mark is to indicate the commercial origin of the goods or services covered (AS v Deutsches Patent- und Markenamt (Case C-541/18 ) [2019] Bus LR 2248, para 18). 99 Consequently, for reasons similar to those set out in paras 70 to 73 of the present judgment, having regard to the general scheme of article 8(3) of Regulation No 207/2009 and the objective pursued by it, the application of that provision cannot be precluded by the fact that the goods or services covered by the application for registration and those covered by the earlier mark are similar, and not identical.”
“It must be verified whether the goods and services display a close relationship in commercial terms such that the use of the contested mark for those goods or services would pose a serious obstacle for the original proprietor to enter the EU market or continue exploiting its mark on that market. What counts is that the contested goods or services may be perceived by the public as being provided as a result of an agreement between the parties and that it would be reasonable for the original proprietor to provide such goods or services itself in view of the scope of protection of the earlier mark.”
“47. It is settled case law that, for the purposes of applying article 8(1)(b) of Regulation No 207/2009, the likelihood of confusion presupposes both that the trade mark applied for and the earlier trade mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier trade mark was registered, those conditions being cumulative: see Office for Harmonisation in the Internal Market (Trademarks and Designs) (OHIM) v riha WeserGold Getränke GmbH & Co KG (Case C-558/12 P) EU:C:2014:22, para 41 and the case law cited. 48 Also according to settled case law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary: see, inter alia, Sunrider Corp v Office for Harmonisation in the Internal Market (Trademarks and Designs) (OHIM) (Case C-416/04 P)[2006] ECR I-4237 , para 85 and Les Éditions Albert René SARL v European Union Intellectual Property Office (EUIPO) (Case C-16/06 P)[2008] ECR I-10053 , para 65.”
“An act which compromises the interests of the trade mark proprietor, such as the filing of a trade mark application in the agent’s or a representative’s name without the proprietor’s consent, and is driven solely by an intention to safeguard the agent’s or a representative’s own interests, is not considered justifiable for the purposes of Article 8(3) CTMR. The same applies to the applicant’s second argument, that is, that it was justified in doing so because it bore the registration costs. The interests of the trade mark proprietor cannot be subordinate to an agent’s or a representative’s financial expenses. The fact that an opponent might be unwilling to incur any financial expenses to register a trade mark, does not automatically grant a right to the agent or representative to proceed with the registration of the trade mark in its own name. This would constitute a violation of the agent’s or representative’s duty of trust and loyalty towards the trade mark proprietor.”
“Although Article 8(3) EUTMR treats the lack of the proprietor’s consent and the absence of a valid justification on the part of the applicant as two separate conditions, these requirements largely overlap to the extent that if the applicant establishes that the filing of the application was based on some agreement or understanding to this effect, then it will also have provided a valid justification for its acts. In addition, the applicant may invoke any other kind of circumstance showing that it had a justification for filing the EUTM application in its own name. However, in the absence of evidence of direct consent, only exceptional reasons are accepted as valid justifications, in view of the need to avoid a violation of the proprietor’s legitimate interests without sufficient indications that its intention was to allow the agent to file the application in its own name. … Justifications exclusively linked to an applicant’s economic interests, such as the need to protect its investment in setting up a local distribution network and promoting the mark in the relevant territory, cannot be considered valid for the purposes of Article 8(3) EUTMR. Nor can the applicant successfully argue in its defence that it is entitled to some financial remuneration for its efforts and expenditure in building up goodwill for the mark. Even if such remuneration were well deserved or is expressly stipulated in the agency agreement, the applicant cannot use the registration of the mark in its own name as a means of extracting money from the opponent or in lieu of financial compensation, but should try to settle its dispute with the proprietor either by way of agreement or by suing for damages.”
“LLP was justified in registering the Trade Marks in its own name and in its own right, given: (i) LLP applied for the Trade Marks to protect the LLP Business, which it had a right to establish under the Services Agreement and which carried with it the right to use the Mark in respect of that business independently of Quad. (ii) Its ownership of the copyright in the devices registered as Trade Marks (and payment for the creation of those devices). (iii) Its payment for the applications for the Trade Marks.”
“21. In the circumstances Quad is entitled to declarations that it is entitled in equity (i) to the benefit of the trade marks; and/or … (iii) the goodwill and reputation in the name Quantum Advisory and its associated brand. … 23. Further or alternatively Quad is entitled to such other relief in equity, including any necessary declarations or injunctions, to ensure that Quad is (i) registered as the owner of the marks in the Trade Marks register and/or obtains the entire benefit of such registration …”
“(8) In order to serve the objective of fostering and creating a well-functioning internal market and to facilitate acquiring and protecting trade marks in the Union, to the benefit of the growth and the competitiveness of European businesses, in particular small and medium-sized enterprises, it is necessary to go beyond the limited scope of approximation achieved by Directive 2008/95/EC and extend approximation to other aspects of substantive trade mark law governing trade marks protected through registration pursuant to Regulation (EC) No 207/2009.” “(10) It is essential to ensure that registered trade marks enjoy the same protection under the legal systems of all the Member States. In line with the extensive protection granted to EU trade marks which have a reputation in the Union, extensive protection should also be granted at national level to all registered trade marks which have a reputation in the Member State concerned.” “(12) Attainment of the objectives of this approximation of laws requires that the conditions for obtaining and continuing to hold a registered trade mark be, in general, identical in all Member States.” “(14) Furthermore, the grounds for refusal or invalidity concerning the trade mark itself, including the absence of any distinctive character, or concerning conflicts between the trade mark and earlier rights, should be listed in an exhaustive manner, even if some of those grounds are listed as an option for the Member States which should therefore be able to maintain or introduce them in their legislation.”