Turbo-K Ltd v Turbo-K International Ltd

Turbo-K Ltd v Turbo-K International Ltd

TKL had established substantial goodwill in the 'Turbo-K' name and logo prior to TKIL’s incorporation and registration of the mark. TKIL’s use and registration of the mark constituted passing off and was made in bad faith, as TKIL’s directors were aware of TKL’s rights and acted contrary to acceptable commercial standards. Mr Roselli, as an active participant and director, was personally liable for acts of passing off. TKIL’s UK trade mark was invalid under s.5(4)(a) and s.3(6) of the Trade Marks Act 1994. TKIL’s counterclaims for infringement failed as the registration was invalid.

Parties
Claimant/part 20 Defendant: Turbo-K Limited; First Defendant/part 20 Claimant: Turbo-K International Limited; Fourth Defendant: Rony Roselli; Fourth Party: Oliver Harald Platz
Jurisdiction
England and Wales
Judgment Date
05 August 2020
Procedural Posture
Civil Intellectual Property / Judgment After Trial
Outcome
TKL’s claims for passing off and invalidity of TKIL’s UK trade mark succeed. Mr Roselli is personally liable for passing off. TKIL’s counterclaims are dismissed.
Legal Topics
Passing Off, Trade Mark Invalidity, Bad Faith Registration, Personal Liability of Directors
Intellectual Property Company Law Passing Off Trade Mark Invalidity Bad Faith Registration Personal Liability of Directors

Case Brief

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Parties

Turbo-K Limited

Claimant/part 20 Defendant

Turbo-K International Limited

First Defendant/part 20 Claimant

Rony Roselli

Fourth Defendant

Oliver Harald Platz

Fourth Party

Procedural Posture

Civil Intellectual Property / Judgment After Trial

Legal Issues

  1. 1 Whether TKIL is liable to TKL for passing off
  2. 2 Whether TKIL’s UK trade mark is invalid due to TKL’s prior rights and/or bad faith
  3. 3 Whether Mr Roselli is personally liable for TKIL’s acts of passing off

Ratio Decidendi

TKL had established substantial goodwill in the 'Turbo-K' name and logo prior to TKIL’s incorporation and registration of the mark. TKIL’s use and registration of the mark constituted passing off and was made in bad faith, as TKIL’s directors were aware of TKL’s rights and acted contrary to acceptable commercial standards. Mr Roselli, as an active participant and director, was personally liable for acts of passing off. TKIL’s UK trade mark was invalid under s.5(4)(a) and s.3(6) of the Trade Marks Act 1994. TKIL’s counterclaims for infringement failed as the registration was invalid.

Court Disposition

TKL’s claims for passing off and invalidity of TKIL’s UK trade mark succeed. Mr Roselli is personally liable for passing off. TKIL’s counterclaims are dismissed.

Orders

  • Declaration that TKIL is liable for passing off against TKL
  • Declaration that Mr Roselli is personally liable for passing off