Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor [2021] EWHC 11 (IPEC) (18 January 2021)

Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor [2021] EWHC 11 (IPEC) (18 January 2021)

The 2003 oral agreement between the parties granted the First Defendant a licence to use 'CORMETON ELECTRONICS' and the domain name for the supply and sale of electrical safety equipment only, but not for mechanical fire protection goods and services or use of 'CORMETON' alone. The Defendants' use of 'CORMETON' alone and in relation to mechanical fire protection goods and services was outside the scope of the licence and constituted trade mark infringement and passing off. The Defendants' counterclaims for invalidity and revocation of the Mark failed as section 3(3)(b) and section 46(1)(d) of the Trade Marks Act 1994 were not engaged on the facts. The copyright claim failed as the...

Citation
[2021] EWHC 11 (IPEC)
Parties
Claimant: Cormeton Fire Protection Limited; First Defendant: Cormeton Electronics Limited; Second Defendant: John Aitchison
Jurisdiction
England and Wales
Judgment Date
18 January 2021
Procedural Posture
Intellectual Property Claim / Judgment After Trial
Outcome
Claim allowed in part; counterclaim dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Copyright Infringement, Trade Mark Validity, Licensing, Estoppel, Acquiescence
Intellectual Property Law Trade Mark Infringement Passing Off Copyright Infringement Trade Mark Validity Licensing Estoppel Acquiescence

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Parties

Cormeton Fire Protection Limited

Claimant

Cormeton Electronics Limited

First Defendant

John Aitchison

Second Defendant

Procedural Posture

Intellectual Property Claim / Judgment After Trial

Legal Issues

  1. 1 Whether the Defendants infringed the Claimant's registered trade mark for 'CORMETON' under sections 10(1), 10(2), and 10(3) of the Trade Marks Act 1994
  2. 2 Whether the Defendants infringed copyright in the artistic work known as 'the Work'
  3. 3 Whether the Defendants committed passing off

Ratio Decidendi

The 2003 oral agreement between the parties granted the First Defendant a licence to use 'CORMETON ELECTRONICS' and the domain name for the supply and sale of electrical safety equipment only, but not for mechanical fire protection goods and services or use of 'CORMETON' alone. The Defendants' use of 'CORMETON' alone and in relation to mechanical fire protection goods and services was outside the scope of the licence and constituted trade mark infringement and passing off. The Defendants' counterclaims for invalidity and revocation of the Mark failed as section 3(3)(b) and section 46(1)(d) of the Trade Marks Act 1994 were not engaged on the facts. The copyright claim failed as the...

Court Disposition

Claim allowed in part; counterclaim dismissed

Orders

  • Declaration that the First Defendant is entitled to use 'CORMETON ELECTRONICS' and the domain name for the supply and sale of electrical safety equipment only, pursuant to the 2003 licence.
  • Injunction restraining the Defendants from using 'CORMETON' alone or in relation to mechanical fire protection goods and services, and from using the signs and indicia outside the scope of the licence.