Prysmian Cables & Systems Ltd v M/S Apple International & Ors [2023] EWHC 2176 (IPEC) (07 September 2023)

Prysmian Cables & Systems Ltd v M/S Apple International & Ors [2023] EWHC 2176 (IPEC) (07 September 2023)

The claimant failed to establish a good chain of title to the goodwill in the BICC name, and even if such goodwill was acquired, it was abandoned or extinguished by deliberate rebranding and non-use. Therefore, the claim for passing off fails.

Citation
[2023] EWHC 2176 (IPEC)
Parties
Claimant: Prysmian Cables & Systems Limited; First Defendant: M/S Apple International; Second Defendant: Rajesh Manharlal Sanghvi; Third Defendant: BICC Components Limited; Fourth Defendant: Specialised Wiring Accessories Limited; Fifth Defendant: Termination Technology Limited
Jurisdiction
England and Wales
Judgment Date
07 September 2023
Procedural Posture
Intellectual Property Infringement (trade Mark and Passing Off) / Trial Judgment on Liability Only
Outcome
Claim dismissed
Legal Topics
Trade Mark Infringement, Passing Off, Goodwill, Chain of Title, Abandonment of Goodwill
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Goodwill Chain of Title Abandonment of Goodwill

Case Brief

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Parties

Prysmian Cables & Systems Limited

Claimant

M/S Apple International

First Defendant

Rajesh Manharlal Sanghvi

Second Defendant

BICC Components Limited

Third Defendant

Specialised Wiring Accessories Limited

Fourth Defendant

Termination Technology Limited

Fifth Defendant

Procedural Posture

Intellectual Property Infringement (trade Mark and Passing Off) / Trial Judgment on Liability Only

Legal Issues

  1. 1 Whether the claimant owns the goodwill in the BICC name for the purposes of passing off
  2. 2 Whether any such goodwill was abandoned or extinguished
  3. 3 Whether the defendants' use of 'BICC Components' constitutes passing off or trade mark infringement

Ratio Decidendi

The claimant failed to establish a good chain of title to the goodwill in the BICC name, and even if such goodwill was acquired, it was abandoned or extinguished by deliberate rebranding and non-use. Therefore, the claim for passing off fails.

Court Disposition

Claim dismissed