Aga Rangemaster Group Ltd v UK Innovations Group Ltd & Anor

Trade mark exhaustion permits resale of goods first marketed by the proprietor or with its consent, but Trade Marks Act 1994, s 12(2) preserves legitimate reasons to oppose further dealings. Recognised grounds include alteration or impairment, serious reputational damage and a misleading impression of commercial connection. The categories are not exhaustive.

In an ordinary exhaustion case, the court asks whether the dealings create that impression for normally informed and reasonably attentive customers. The more permissive origin test involving customers being unable, or able only with difficulty, to ascertain origin belongs to keyword-advertising cases. A relevant connection may concern the origin of a product or service, not only an affiliation between undertakings. A reseller entitled to refurbish or convert goods must still avoid misleading composite branding and should dispel any false impression.

Aga Rangemaster Group Ltd brought trade mark and copyright claims concerning old AGA cookers refurbished and converted by UK Innovations Group Ltd to run on electricity using its eControl System. The High Court held that the trade mark claim was not defeated by exhaustion because UKIG’s marketing created an impression of a commercial connection. It also found copyright subsistence and copying, but held that the defence in s 51 of the Copyright, Designs and Patents Act 1988 applied.

UKIG appealed the trade mark decision, challenging the legal test and the factual findings. AGA filed a respondent’s notice concerning post-sale confusion and cross-appealed the copyright ruling. The Court of Appeal considered whether the marketing created a relevant commercial connection and whether the control-panel design document was for an artistic work.

Trade marks. The Court dismissed UKIG’s appeal. Section 12(1) of the Trade Marks Act 1994 provides an exhaustion defence, subject to s 12(2). The recognised situations in which legitimate reasons may exist include changed or impaired goods, serious damage to reputation and an impression of commercial connection. Those situations are a useful, non-exhaustive framework and may overlap.

1. The origin test expressed in Google France SARL and others [2010] RPC 19, under which consumers being able only with difficulty to ascertain origin may suffice, was devised for keyword advertising. It did not apply generally to this ordinary exhaustion case. The trial judge referred to it, but his operative finding was that UKIG’s marketing was likely to create the impression that an eControl AGA was an AGA product. The error therefore did not justify reversal.
2. The relevant connection is not confined to an affiliation between undertakings. It may include a false impression that the product or material incorporated into it originated from the proprietor, or that a conversion service was provided by the proprietor. The court should assess the impression created for the relevant consumer, taking account of sector practices. It should not conduct a free-standing balancing exercise. The balance mentioned in Viking Gas A/S v Kosan Gas A/S [2011] ETMR 58 describes the legislative scheme.
3. UKIG’s use of eControl AGA and AGA eControl, together with its website and invoices, rationally supported the finding that customers might believe the system or conversion service came from AGA. The fact that refurbishment and conversion were otherwise permissible, or that UKIG had to refer to the original AGA goods, did not authorise misleading presentation. The compound signs should not be used, and clear statements could dispel the false impressions.
4. Post-sale confusion may generally be considered, but it was unnecessary to revisit that issue. The respondent’s notice was dismissed.

Copyright. Arnold LJ dismissed AGA’s cross-appeal. Under s 4 of the Copyright, Designs and Patents Act 1988, being a thing to be looked at is necessary but insufficient for a graphic work. The statutory examples and separate categories show that the definition cannot encompass every artistic or functional object incorporating graphic elements. The control panel was primarily functional and was not, as a whole, a graphic work. The s 51 defence therefore applied.

The Court did not decide whether s 51 was incompatible with assimilated EU law under Cofemel. That issue was academic, and the cross-appeal was dismissed.

• Court of Appeal (Civil Division) — The appeal by UK Innovations Group Ltd, AGA’s cross-appeal, and AGA’s respondent’s notice were dismissed. [2025] EWCA Civ 1622
• High Court of Justice, Intellectual Property Enterprise Court — Nicholas Caddick KC, sitting as a deputy High Court judge, decided the trade mark and copyright claims in case IP-2023-000036. The judgment held that UKIG’s marketing defeated the exhaustion defence but that the copyright claim was met by s 51 of the Copyright, Designs and Patents Act 1988. The lower court citation is not stated in the judgment.