Fearns (t/a Autopaint International) v Anglo-Dutch Paint and Chemical Co. Ltd & Ors [2007] EWHC 955 (Ch) (02 May 2007)

Fearns (t/a Autopaint International) v Anglo-Dutch Paint and Chemical Co. Ltd & Ors [2007] EWHC 955 (Ch) (02 May 2007)

There was an oral agreement in May 2004 permitting Defendants to supply franchisees only where Claimant could not supply, but Defendants exceeded this consent by supplying more broadly and soliciting franchisees, thereby infringing trade marks and passing off. Some ancillary product sales and the June 2005 solicitation were not authorised. Malicious falsehood was not established. Copyright in tin design was limited to 15 years. Defendants breached contract by supplying branded tins to others. Royalty for Australia was 3%. Malta supply was permitted while credit issues persisted. Defendants intentionally inflicted economic harm only to the extent of the unauthorised acts.

Citation
[2007] EWHC 955 (Ch)
Parties
Claimant / Part 20 Defendant: Gary Fearns t/a Autopaint International; First Defendant: Anglo-Dutch Paint and Chemical Company Limited; Second Defendant / Part 20 Claimant: De Beer Lakfabrieken BV; Third Defendant: Christopher Welch; Fourth Defendant: Richard Jongsma; Fifth Defendant: Marco Van Der Woude; Sixth Defendant: Theo Wemmers
Jurisdiction
England and Wales
Judgment Date
02 May 2007
Procedural Posture
High Court Chancery Division Trial and Counterclaim / Judgment After Full Trial
Outcome
Claimant succeeds in part; Defendants liable for trade mark infringement, passing off, breach of contract, and partial copyright infringement; counterclaim for debt admitted.
Legal Topics
Trade Mark Infringement, Passing Off, Malicious Falsehood, Copyright Infringement, Breach of Contract, Intentional Infliction of Economic Harm
Intellectual Property Contract Tort Trade Mark Infringement Passing Off Malicious Falsehood Copyright Infringement Breach of Contract +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 7 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Gary Fearns t/a Autopaint International

Claimant / Part 20 Defendant

Anglo-Dutch Paint and Chemical Company Limited

First Defendant

De Beer Lakfabrieken BV

Second Defendant / Part 20 Claimant

Christopher Welch

Third Defendant

Richard Jongsma

Fourth Defendant

Marco Van Der Woude

Fifth Defendant

Theo Wemmers

Sixth Defendant

Procedural Posture

High Court Chancery Division Trial and Counterclaim / Judgment After Full Trial

Legal Issues

  1. 1 Whether Defendants infringed Claimant's trade marks and passed off goods as Claimant's
  2. 2 Whether Defendants committed malicious falsehood
  3. 3 Whether Defendants infringed copyright in Claimant's tin design

Ratio Decidendi

There was an oral agreement in May 2004 permitting Defendants to supply franchisees only where Claimant could not supply, but Defendants exceeded this consent by supplying more broadly and soliciting franchisees, thereby infringing trade marks and passing off. Some ancillary product sales and the June 2005 solicitation were not authorised. Malicious falsehood was not established. Copyright in tin design was limited to 15 years. Defendants breached contract by supplying branded tins to others. Royalty for Australia was 3%. Malta supply was permitted while credit issues persisted. Defendants intentionally inflicted economic harm only to the extent of the unauthorised acts.

Court Disposition

Claimant succeeds in part; Defendants liable for trade mark infringement, passing off, breach of contract, and partial copyright infringement; counterclaim for debt admitted.

Orders

  • Enquiry as to damages or account of profits for trade mark infringement and passing off
  • Declaration of breach of contract regarding tin supply and Australian royalties