Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor

A trade mark registration is not deceptive under the absolute-ground provisions merely because consumers may be confused about which undertaking uses the mark. Deception as to business origin is ordinarily addressed through the relative grounds provisions. A licensee’s use is use with the proprietor’s consent and cannot ordinarily be recast as honest concurrent use when the licence ends. Estoppel and acquiescence cannot operate as a defence to registered trade mark infringement. Where a prior agreement permits use in one field but excludes another, use outside that licence may infringe the mark and constitute passing off.

The claimant and the first defendant had traded under related CORMETON names after working together from 1989. They separated in 2003. The claimant alleged that the first defendant’s later use of CORMETON, related signs, a domain name and a logo infringed its registered mark, copyright and goodwill.

The defendants denied infringement and relied on the terms of the 2003 agreement, honest concurrent use, estoppel and acquiescence. They also challenged the mark under sections 3(3)(b) and 46(1)(d) of the Trade Marks Act 1994. The central issues were the scope of the 2003 licence, the validity and revocability of the mark, and whether the unlicensed uses infringed or amounted to passing off.

1. Copyright. The pleaded artistic work was not created by the claimant’s witness, and the claimant could not rely on alleged copyright in a different work without amending its pleadings. The copyright claim therefore failed.
2. 2003 agreement. The oral agreement permitted the first defendant to trade under CORMETON ELECTRONICS and CORMETON ELECTRONICS LIMITED and to use the domain name. It confined the first defendant’s business under those signs to electrical safety equipment. It did not permit use in relation to mechanical fire protection goods or services.
3. Validity and revocation. Sections 3(3)(b) and 46(1)(d) of the Trade Marks Act 1994 address deception inherent in the mark or concerning the nature, quality or geographical origin of goods or services. They do not apply merely because the public may be confused about which undertaking supplies the goods or services. The invalidity and revocation claims therefore failed.
4. Infringement and passing off. Licensed use did not infringe and did not constitute passing off. Unlicensed use of CORMETON alone, and use of the signs in relation to mechanical fire protection, involved identical or similar goods and services, a likelihood of confusion, and a link with the mark. Those uses infringed sections 10(1), 10(2) and 10(3) and constituted passing off.
5. Defences. Honest concurrent use was unavailable for licensed use and was not established for the later unlicensed uses, which had not continued for a sufficiently long period and were not honest. Estoppel and acquiescence could not defend registered trade mark infringement.