Quantum Advisory Limited v Quantum Actuarial LLP

Quantum Advisory Limited v Quantum Actuarial LLP

LLP owed fiduciary duties to Quad in respect of the conduct of Quad's business under the Services Agreement. LLP's right to use the Mark and associated branding was coterminous with the Services Agreement, and all goodwill accrued to Quad. LLP's registration of the Word Trade Mark, Device Trade Mark, Device Series Trade Mark, and Q Device Trade Mark was in breach of fiduciary duty. Section 10B TMA 1994 entitled Quad to rectification for the first three marks, and equity entitled Quad to rectification for the Q Device Trade Mark. The Q Device Trade Mark was not similar to the Mark for section 10B, but its registration was still a breach of fiduciary duty.

Parties
Claimant/appellant in CA 2023 000480 / Respondent in CA 2023 000484: Quantum Advisory Limited; Defendant/respondent in CA 2023 000480 / Appellant in CA 2023 000484: Quantum Actuarial LLP
Jurisdiction
England and Wales
Judgment Date
11 November 2024
Procedural Posture
Civil Appeal / Court of Appeal Judgment on Cross Appeals From High Court
Outcome
Quad's appeal allowed in respect of the Q Device Trade Mark; LLP's appeal dismissed.
Legal Topics
Trade Marks, Passing Off, Fiduciary Duties, Rectification of Register, Concurrent Goodwill, Agency, Breach of Fiduciary Duty
Intellectual Property Equity and Trusts Commercial Law Trade Marks Passing Off Fiduciary Duties Rectification of Register Concurrent Goodwill +2 more

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Parties

Quantum Advisory Limited

Claimant/appellant in CA 2023 000480 / Respondent in CA 2023 000484

Quantum Actuarial LLP

Defendant/respondent in CA 2023 000480 / Appellant in CA 2023 000484

Procedural Posture

Civil Appeal / Court of Appeal Judgment on Cross Appeals From High Court

Legal Issues

  1. 1 Whether LLP owed fiduciary duties to Quad in respect of the use of the mark QUANTUM ADVISORY and associated branding; Whether LLP was entitled to use the mark and acquire separate goodwill; Whether Quad was entitled to rectification of the trade mark register under section 10B of the Trade Marks Act 1994 for various marks registered by LLP; Whether equity provides a remedy for marks not covered by section 10B; Whether the Q Device Trade Mark was similar to the Mark for the purposes of section 10B; Whether Quad was entitled to equitable relief in respect of the Q Device Trade Mark.

Ratio Decidendi

LLP owed fiduciary duties to Quad in respect of the conduct of Quad's business under the Services Agreement. LLP's right to use the Mark and associated branding was coterminous with the Services Agreement, and all goodwill accrued to Quad. LLP's registration of the Word Trade Mark, Device Trade Mark, Device Series Trade Mark, and Q Device Trade Mark was in breach of fiduciary duty. Section 10B TMA 1994 entitled Quad to rectification for the first three marks, and equity entitled Quad to rectification for the Q Device Trade Mark. The Q Device Trade Mark was not similar to the Mark for section 10B, but its registration was still a breach of fiduciary duty.

Court Disposition

Quad's appeal allowed in respect of the Q Device Trade Mark; LLP's appeal dismissed.

Orders

  • Order for rectification of the Register of Trade Marks to substitute Quantum Advisory Limited for Quantum Actuarial LLP as proprietor of the Q Device Trade Mark, the Device Trade Mark, the Device Series Trade Mark, and the Word Trade Mark.
  • LLP to cease use of the Mark and associated branding upon termination of the Services Agreement.