AGA Rangemaster Group Limited v UK Innovations Group Limited & Anor

Trade mark rights are exhausted after genuine goods are placed on the market, but the proprietor may oppose later dealings where, on the facts as a whole, there are legitimate reasons to do so. The assessment requires a fair balance between the proprietor’s interests and those of the aftermarket. Refurbishment, replacement parts and conversion do not automatically justify opposition. Marketing which presents altered goods as the proprietor’s own product, or suggests a commercial connection, may do so. A descriptive-use defence fails where the mark is used as a badge of origin or contrary to honest practices. Copyright may subsist in a design drawing despite functional constraints, but Copyright, Designs and Patents Act 1988, s 51 may permit articles to be made to that design. Accessory liability requires knowledge of the essential facts making the primary act tortious.

The claimant manufactured AGA range cookers and brought trade mark and copyright infringement proceedings against the first defendant, which sold refurbished AGA cookers fitted with its own eControl System, and against the second defendant, its director. The defendants relied principally on trade mark exhaustion, descriptive and referential use, the copyright exception in s 51 of the Copyright, Designs and Patents Act 1988, and challenges to the validity of two marks.

The central issues were whether the defendants had legitimate reasons to oppose further dealings under s 12(2) of the Trade Marks Act 1994, whether their use fell within s 11(2), whether the control-panel drawing was protected and infringed, whether the director was an accessory, and whether the two device marks were invalid.

1. Trade mark exhaustion. The court held that s 12(2) requires an assessment of the facts as a whole and a fair balance between the proprietor’s interests and those of persons dealing in goods in the aftermarket. Change in condition, reputational damage or an impression of commercial connection are examples, not automatic answers.
2. Ordinary refurbishment and the use of replacement parts did not themselves provide legitimate reasons to oppose resale. Conversion from fossil fuel to electricity was a significant change in condition, but conversion itself did not justify opposition, particularly because the claimant accepted that customers could obtain and use the eControl System. The separate eControl badge also did not, by itself, justify opposition.
3. The defendants’ website and invoices, considered together, presented the goods as an “eControl AGA” and suggested that the eControl System was connected with the claimant. This created a legitimate reason to oppose the manner of marketing and sale. The s 12 defence therefore failed.
4. The use of “AGA” was distinctive, not descriptive, and was not honest referential use under s 11(2)(b) or (c). The defendants’ activities infringed the claimant’s marks under s 10, including by affecting the origin function and, where relevant, creating a likelihood of confusion. The marks had substantial reputation, and the use took unfair advantage of their distinctive character.
5. The control-panel drawing was an original artistic work. The designer had made free and creative choices notwithstanding functional influences. However, the drawing was a design document for a non-artistic article, so s 51 permitted the defendants to make control panels to that design. The copyright claim consequently failed.
6. Following Lifestyle Equities v Ahmed [2024] UKSC 17, accessory liability required knowledge of the essential facts making the acts tortious. The evidence did not establish that the second defendant knew the facts concerning origin-function impairment, confusion, unfair advantage or the failure of exhaustion. He was therefore not liable as a joint tortfeasor.
7. The counterclaim failed. The two-dimensional mark was sufficiently clear and precise. The visual and verbal representations of the three-dimensional mark were consistent, and its essential characteristics were not exclusively dictated by the nature of the goods, technical result or substantial value.

The first defendant was liable for trade mark infringement; the copyright claim, the claim against the second defendant and the invalidity counterclaim were dismissed.