Oran Pre-Cast Ltd v Oranmore Precast Ltd & Anor

A general release must be construed in its documentary, factual and commercial context. Where the commercial purpose is to achieve a clean slate between parties, wide wording may encompass known and foreseeable claims, including future claims, even if the release does not expressly identify them. Releasing one joint tortfeasor ordinarily releases the others unless the agreement reserves the right to sue them.

For trade mark infringement under Trade Marks Act 1994, the court must assess similarity and confusion globally through the perspective of the average consumer, taking account of the context of use, imperfect recollection, distinctiveness and all relevant circumstances.

The claimant, an Irish manufacturer of precast concrete products, owned the registered mark ORAN PRE-CAST and brought claims for trade mark infringement and passing off against a related UK company, its directors and a former senior employee. The defendants relied on a 2013 compromise agreement and release, together with alleged consent, acquiescence and a copyright licence.

The central issues were whether the release covered the claims, future conduct and the other alleged joint tortfeasors; whether the defendants had established consent or acquiescence; and, alternatively, whether the signs ORANMORE, ORANMORE PRECAST and associated device were confusingly similar and amounted to passing off.

1. Compromise agreement. The Oran Release was a true release, not merely a covenant not to sue. Its wording had to be read with the surrounding circumstances, including the parties’ knowledge that Oranmore would continue trading and that Richard Burke would continue working for it. The commercial purpose was to provide a clean slate. The release therefore covered known and foreseeable claims connected with Mr Burke’s departure, including the present trade mark and passing-off claims and future claims arising from continued use of the signs.
2. The court declined to imply a term limiting the agreement to Irish law. Such a term was not necessary for business efficacy and would undermine the agreement’s commercial purpose. The release of Richard Burke also released Oranmore and Ross Melville as alleged joint tortfeasors. No reservation of rights could be implied.
3. Alternative infringement findings. Applying the six requirements identified in Interflora v Marks & Spencer, and the global assessment required by Specsavers International Healthcare Ltd v Asda Stores Ltd, the court found the registered mark highly distinctive. The signs were visually and aurally very similar, the goods and services were identical, and the device only slightly reduced the similarity. The evidence supported a likelihood of confusion among the average professional consumer. Section 10(2) infringement was established.
4. Alternative passing off findings. The similarity and evidence of confusion also established a misrepresentation likely to cause deception. The claimant had goodwill and was likely to suffer damage as a direct competitor. The claim was nevertheless dismissed because of the compromise agreement.
5. The alleged copyright licence was granted by Michael Melville personally and did not amount to consent by the claimant. The 7 December 2011 email was not an unequivocal renunciation of trade mark rights, and neither it nor the licence established acquiescence.