The Comptroller-General of Patents, Designs and Trade Marks & Anor v Intellectual Property Agency Ltd & Anor

A government department or executive agency may possess goodwill capable of protection by passing off. Misrepresentation that a private renewal service is, or is connected with, the official intellectual property authority may constitute passing off where it causes relevant members of the public to believe the representation and damages the authority’s reputation. Damage may consist of harm to the claimant’s standing, even where the official renewal fees are ultimately paid.

For trade mark infringement under section 10(2) of the Trade Marks Act 1994, the court must make a global assessment from the perspective of the average consumer. A word element may have an independent distinctive role within a composite mark. Similarity between “office” and “agency”, together with evidence of actual confusion, may establish a likelihood of confusion.

The claimants, including the government body responsible for the United Kingdom Intellectual Property Office, sued Intellectual Property Agency Ltd and its sole director and shareholder. The defendants sent official-looking renewal reminders to proprietors of patents and trade marks and charged substantially more than the official renewal fees.

The claimants alleged passing off, infringement of a registered trade mark containing the words “Intellectual Property Office”, and joint tortfeasance by the second defendant. The defendants did not appear at trial. The issues were whether the claimants had protectable goodwill, whether the reminders constituted actionable misrepresentation causing damage, whether “Intellectual Property Agency Ltd” infringed the registered mark, and whether the director was jointly liable.

1. Passing off. A government department or executive agency may own goodwill associated with its name and services. The Intellectual Property Office’s services, website and helpline generated goodwill associated with “Intellectual Property Office”. The goodwill was personal property, and the uncertainty about which claimant held it did not affect the claim.
2. The defendants’ “Reminder” forms and presentation conveyed an official source. Although persons familiar with the intellectual property system might not have been confused, evidence from recipients established actual confusion among other right-holders. On the balance of probabilities, a large proportion paid because they believed the defendants were the official government body or connected with it.
3. Damage was established. Harm to the reputation and standing of the Intellectual Property Office was a sufficient form of damage, even though the official renewal fees were paid. The court applied the principle recognised in Spalding v Gamage (1918) 35 R.P.C. 101 (CA). Passing off was therefore established.
4. Trade mark infringement. Under section 10(2) of the Trade Marks Act 1994, likelihood of confusion was assessed globally, taking account of the average consumer, the visual, aural and conceptual similarities, the overall impression, and the context of use. The words “Intellectual Property Office” had an independent distinctive significance and were the dominant part of the composite mark. “Intellectual Property Agency Ltd” conveyed a sufficiently similar concept. The reference to “Ltd” did not dispel the likelihood of confusion, which was reinforced by actual evidence. Infringement was established.
5. Joint tortfeasance and remedy. Applying Vertical Leisure Ltd v Poleplus Ltd [2015] EWHC 841 (IPEC) and Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10, the director had actively cooperated in, and intended, the acts of passing off and infringement. He was jointly liable. On the admitted account, the gross profit was £1,106,510, but the court awarded the maximum IPEC cap of £500,000.