Models One Limited v Phillips & Ors

Use of a sign identical with a registered trade mark for identical services infringes the mark. Additional matter which does not change the mark’s identity may be disregarded. Where the statutory conditions for infringement are met, lack of knowledge, good faith, company registration, or a disclaimer of connection provides no defence.

A disclaimer may also fail to prevent passing off where recommendations are made by word of mouth and the disclaimer cannot control how others refer to the businesses. Permission to appeal may properly be refused where the proposed defence has no real prospect of success.

Models One Limited brought proceedings against Kevin Phillips, Models 1 UK Limited and Studio 4 for infringement of registered trade marks and passing off. Pumfrey J refused an extension of time for acknowledgement of service and entered summary judgment for the claimant on both causes of action.

The defendants applied to the Court of Appeal for permission to appeal and a stay. They challenged the adequacy of the preparation time, the refusal to hear witnesses, the similarity between the names, and the findings of infringement and passing off. The central issue was whether the defendants had any arguable defence warranting permission to appeal.

1. Application refused. Permission to appeal was refused because the defendants had no real prospect of successfully challenging the judgment.
2. The use of “Models 1 UK” constituted use of a sign identical with the registered “Models 1” mark for identical model-agency and employment-agency services. The addition of “UK” did not alter the identity of the mark and was to be disregarded for the purposes of Trade Marks Act 1994, section 10(1).
3. Alternatively, if the marks were not identical, the sign was similar to the registered mark and was used for identical or similar services, giving rise to infringement under section 10(2). The proprietor’s exclusive rights under section 9 meant that good faith, acquisition of the domain name, registration of the company, or lack of knowledge of the law did not provide a defence.
4. The further evidence did not establish a defence to passing off. A disclaimer that the businesses were unconnected could not control verbal recommendations and did not necessarily distinguish the defendants from the claimant’s established reputation.
5. Allegations of impropriety were not essential to the trade mark or passing-off causes of action. The proceedings were therefore not an appropriate vehicle for determining Mr Phillips’s reputation or refuting those allegations.

• High Court of Justice, Chancery Division: Pumfrey J refused an extension of time to file acknowledgements of service and entered summary judgment for Models One Limited on trade mark infringement and passing off.
• Court of Appeal (Civil Division): Lord Justice Aldous refused permission to appeal and consequently refused the application for a stay.