Spire Healthcare Holdings v E-Spire Group Ltd & Ors

On summary judgment, the court asks whether the claim or defence has a realistic prospect of success. It must avoid a mini-trial, but may decide a short legal or construction issue where the evidence is sufficient and further evidence is unlikely to affect the result. In a trade mark case, likelihood of confusion may be assessed without expert or factual witness evidence where the court can put itself in the position of the average consumer. Similarity of services and marks may therefore be decided summarily when the existing evidence permits no realistic contrary outcome. A sole director who is also effectively the sole shareholder may bear an evidential burden to explain why he is not personally responsible for the company’s infringing acts.

The claimant, a healthcare group trading under the name Spire, alleged that the defendants’ use of E-Spire for recruitment and care-staff services infringed its trade marks and constituted passing off. The application concerned summary judgment on the pleaded trade mark infringement, principally under section 10(2) of the Trade Marks Act 1994. The defendants contended that their services were not identical or similar to the claimant’s registered services and that there was no likelihood of confusion. They also relied on the own-name defence, local goodwill, and sought permission to amend their defence and counterclaim. The central issues were whether the evidence permitted summary determination of similarity and confusion, and whether the sole director was jointly liable.

1. Summary judgment. The governing principles were those stated in Easyair Ltd (t/a Openair) v Opal Telecom Ltd [2009] EWHC 339 (Ch), approved in AC Ward & Son v Caitlin (Five) Ltd [2009] EWCA Civ 1098 and Mellor v Partridge [2013] EWCA Civ 477. The court had to decide whether the claimant had a realistic, rather than fanciful, prospect of success without conducting a mini-trial. It could decide a short point of law where the evidence was sufficient and further evidence was unlikely to affect the outcome.
2. Trade mark infringement. The services offered by the defendants, including the supply of medically qualified individuals and care workers, were at least extremely similar to the claimant’s registered healthcare services. The marks were visually and orally very close. Conceptually they were similar, although the concept of a spire was not particularly relevant to either party’s services.
3. Under section 10(2) of the Trade Marks Act 1994, the court may assess likelihood of confusion without witness evidence where it can put itself in the position of the average consumer unaided. On the evidence, the defendants had no realistic prospect that further evidence would reverse the conclusion that there was at least a likelihood of confusion. Summary judgment was therefore appropriate, although the relief was to be constrained to reflect the findings made.
4. The own-name defence under section 11(2)(a) required use in accordance with honest practices. No pleaded or evidential basis supported that defence if infringement under section 10(1) or section 10(2) were established. The local-goodwill defence under section 11(3) could not assist in relation to the claimant’s three principal marks, which pre-dated the defendants’ trading.
5. A director is not jointly liable merely because he is a director. However, where he is the sole director and effectively the sole shareholder, he bears an evidential burden to explain why he is not the individual responsible for the company’s acts. No such evidence was provided. The claimant was entitled to summary judgment against Mr Bolton as jointly liable for the defendants’ trade mark torts.