Marussia Communications Ireland Ltd v Manor Grand Prix Racing Ltd & Anor

Trade mark consent requires actual consent, demonstrated unequivocally by the proprietor’s renunciation of its exclusive rights. A merely implied contractual term, or consent deemed by national law, is insufficient, although an implied term may provide evidence of actual consent. National-law estoppel cannot circumvent the exclusive rights conferred by the Community trade mark regime. Fact-sensitive defences based on likelihood of confusion, reputation and honest practices may have a real prospect of success even where success is improbable, making summary judgment inappropriate. In that situation, the court may impose conditional security for pursuing the defences to trial.

The claimant sought summary judgment in a trade mark infringement claim. It owned the “Marussia” trade mark, had licensed its use to the first defendant for Formula One racing until 31 December 2014, and alleged that the defendant continued using the mark during the 2015 season after the licence expired.

The defendant relied on implied consent, estoppel, absence of likelihood of confusion, absence of the required reputation, and the own-name defence based on honest practices. The application did not concern the passing-off claim or other claims involving the additional parties. The central questions were which defences had no real prospect of success and whether the remaining defences, although improbable, should proceed to trial subject to security.

Application granted in part. The consent defence had no real prospect of success. The estoppel defence was unavailable as a matter of law. The Article 9 and Article 12 defences had a real prospect of success, although success was improbable, and could proceed only if security of £1.75 million was provided.

1. Consent. Under the Council Regulation (EC) No 207/2009 on the Community trade mark, consent has an autonomous Community meaning. Following Zino Davidoff SA v A&G Imports Ltd and Levi Strauss & Co v Tesco Stores Ltd [2002] Ch 109, there must be actual consent, demonstrated unequivocally as a renunciation of exclusive rights. A contractual term implied under English law may be evidence of consent, but does not itself establish the actual consent required. No term could be implied: the agreement was coherent without a licence, its duration was indeterminate, and carefully drafted written agreements omitted the subject.
2. Estoppel. The Regulation formed a complete code concerning the proprietor’s exclusive rights. Estoppel by acquiescence operated as a substantive deemed-consent defence, not merely as a procedural or evidential rule under Article 101(3). It therefore could not defeat Article 9 rights. The judge’s observations that the estoppel would in any event have been improbable were alternative and unnecessary.
3. Article 9.1(b). Likelihood of confusion required a global assessment through the eyes of the average consumer. The relevant public was not confined to Formula One insiders. Continued use of a previously licensed mark could lead the public to believe that an economic link remained. Nevertheless, the issue was evidential and required trial determination.
4. Article 9.1(c) and Article 12. Reputation was not dependent on actual sales. The Article 9.1(c) requirements included reputation, a link, injury and absence of due cause. The broad honest-practices inquiry under Article 12 was similarly unsuitable for summary judgment. Both defences were improbable but had a sufficient prospect of success to require trial.
5. Security. The court could make a provisional assessment of likely damages by reference to a reasonable licence negotiation, without determining the final remedy. Security was fixed at £1.75 million as a condition of pursuing the Article 9 and Article 12 defences.