Industrial Cleaning Equipment (Southampton) Limited v Intelligent Cleaning Equipment Holdings Co, Ltd & Ors

Statutory acquiescence under section 48 of the Trade Marks Act 1994 requires five years’ acquiescence in use of a registered trade mark. Time begins only when the later mark is registered and the earlier proprietor knows both of its registration and its post-registration use. Invalidity proceedings alone do not stop time; opposition to use must be pursued by measures capable of leading to a legally binding remedy.

Goodwill from selling third-party or co-branded goods may accrue to the distributor’s mark, including in relation to the goods themselves. Passing off may be established on the basis of notional and fair use, without proof of actual damage. A registered proprietor may be jointly liable for a distributor’s infringement where an exclusive distribution arrangement and subsequent coordinated conduct establish assistance pursuant to a common design.

The claimant operated a UK business selling, renting and servicing cleaning equipment under ICE signs and logos. The defendants comprised the proprietor of several ICE trade marks, its UK group company, an earlier parent distributor and the later exclusive distributor.

The claimant sought invalidity of the defendants’ 2015 and 2020 marks, alleging passing off, likelihood of confusion, unfair advantage, detriment and bad faith. It also claimed infringement of its own marks. The defendants relied on statutory acquiescence, later-mark defences, due cause and challenges to the claimant’s marks, and counterclaimed for infringement.

The central issues included the relevant date and scope of acquiescence, the extent of goodwill from distribution and co-branding, likelihood of confusion, bad faith, and liability for joint tortfeasorship.

1. Acquiescence. The five-year period under section 48(1) of the Trade Marks Act 1994 begins only after the later mark has been registered and the earlier proprietor knows both of the registration and of use after registration. The statutory language concerns acquiescence in use of a registered mark, not acquiescence in registration. The Court of Appeal’s decision in Combe supported that construction. Invalidity proceedings alone do not end acquiescence; the principles in Heitec require opposition to use followed within a reasonable period by proceedings or another measure capable of producing a legally binding solution.
2. Passing off and goodwill. By the relevant dates the claimant possessed substantial goodwill in its ICE sign and logo. That goodwill extended to the sale of floor-cleaning machines, notwithstanding that some machines were manufactured by third parties, overstickered or co-branded. Notional and fair use of the defendants’ marks would create a likelihood of misrepresentation and damage. Actual confusion was unnecessary.
3. 2020 marks. The claimant’s marks had enhanced distinctiveness and a UK reputation. The defendants’ robotics and cobotics marks had a high or very high degree of similarity with them and covered closely related goods and services. There was a likelihood of direct and indirect confusion, unfair advantage and detriment, and the applications were made in bad faith. The defendants had no due cause: their prior use had itself been liable to constitute passing off and materially intruded upon the claimant’s legitimate interests.
4. Infringement and joint liability. Killis infringed under sections 10(2) and 10(3). D3 was not shown to have committed the infringing acts. D1 was not a primary infringer, but its exclusive distribution agreement, knowledge of the claimant’s rights and subsequent coordinated decisions established assistance pursuant to a common design with Killis. D1 was therefore jointly liable under the principles in Fish & Fish.
5. The claimant’s invalidity claims succeeded. Its infringement claims against Killis and D1 succeeded, but the claim against D3 and the defendants’ counterclaims failed. The remaining passing-off issues were not determined.