The National Guild of Removers and Storers Ltd v Milner (t/a Intransit Removals and Storage) & Ors

Liability for infringement or passing off is not established merely because a publisher or website provider uses a claimant’s mark in advertising a defendant’s business. Copyright authorisation requires an express or implied grant, or purported grant, of the right to perform the relevant act. Apparent authority depends on a representation by the alleged principal, intended to be acted upon and acted upon, giving rise to estoppel. Procurement of a tort requires intention that the tortious act occur. A trade mark may lawfully identify goods or services as originating from the proprietor or from licensees, including multiple licensees. Such licensed use may constitute genuine use, and an applicant does not act in bad faith by intending lawful use.

The claimant trade association sued a former member concerning a directory advertisement and a website which displayed or referred to the claimant’s name, logo and associated ombudsman scheme after membership ended. It alleged trade mark infringement, copyright infringement, passing off and breach of contract.

The defendant denied responsibility for the publications and counterclaimed for invalidity and revocation of four trade marks. The claimant conceded revocation of two marks for non-use and partial revocation of another. The central issues were whether the defendant had authorised, procured or was otherwise responsible for the alleged torts, and whether two remaining marks were invalid because they functioned as collective marks or had not been genuinely used.

1. Claim. The claims for trade mark infringement, copyright infringement, passing off and, insofar as pursued, breach of contract failed. The defendant neither consented to nor authorised use of the logo in the directory advertisement. Copyright authorisation requires the grant or purported grant, express or implied, of the right to do the act complained of.
2. Agency. The directory publisher was not the defendant’s agent. Apparent or ostensible authority is based on estoppel and requires a representation by the principal to the relevant party, intended to be acted upon and in fact acted upon. The defendant had made no representation that the publisher was authorised to use the claimant’s name or logo.
3. Procurement. A person is jointly liable for another’s infringement only where he procures the act by inducement, incitement or persuasion and intends that it occur. The defendant neither intended nor knowingly procured the directory or website use.
4. Trade marks and collective marks. Although the marks principally identified members of the association, that use did not make them incapable of distinguishing goods or services under section 3(1)(a) of the Trade Marks Act 1994. A mark may indicate a source which is either the proprietor or a person licensed by the proprietor. The licence need not be exclusive. Such use was therefore not deceptive or contrary to public policy under sections 3(3)(a) and 3(3)(b).
5. Bad faith and non-use. There could be no bad faith where the intended use was lawful. Use by licensees with the proprietor’s consent, even as a badge of membership, constituted genuine use for non-use purposes.
6. Counterclaim. Trade marks 351 and 710 were revoked entirely for non-use. Trade mark 722 was revoked for non-use except in Class 39. The counterclaim otherwise failed.