Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor

Cormeton Fire Protection Ltd v Cormeton Electronics Ltd & Anor

The First Defendant’s use of CORMETON on its own and use of the Signs and CE Sign in relation to mechanical fire protection goods and services fall outside the scope of the 2003 licence and infringe the Claimant’s trade mark under sections 10(1), 10(2), and 10(3) of the TMA and constitute passing off. The Defendants’ arguments of honest concurrent use, estoppel, acquiescence, invalidity, and revocation fail. The Claimant does not own copyright in the Work.

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 / Final Judgment
Outcome
Claim partly allowed; Defendants found liable for trade mark infringement and passing off outside scope of licence; copyright claim dismissed; invalidity and revocation counterclaims dismissed.
Legal Topics
Trade Mark Infringement, Passing Off, Copyright, Estoppel, Acquiescence, Honest Concurrent Use, Revocation, Invalidity
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Copyright Estoppel Acquiescence Honest Concurrent Use +2 more

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Parties

Cormeton Fire Protection Limited

Claimant

Cormeton Electronics Limited

First Defendant

John Aitchison

Second Defendant

Procedural Posture

Intellectual Property Claim / Final Judgment

Legal Issues

  1. 1 Is the Work an original artistic work created by Michael Warburton Snr and in which copyright subsists?
  2. 2 Does the Mark have a reputation and/or enhanced distinctive character?
  3. 3 Does the Claimant own goodwill attached to the Mark and/or the Work?

Ratio Decidendi

The First Defendant’s use of CORMETON on its own and use of the Signs and CE Sign in relation to mechanical fire protection goods and services fall outside the scope of the 2003 licence and infringe the Claimant’s trade mark under sections 10(1), 10(2), and 10(3) of the TMA and constitute passing off. The Defendants’ arguments of honest concurrent use, estoppel, acquiescence, invalidity, and revocation fail. The Claimant does not own copyright in the Work.

Court Disposition

Claim partly allowed; Defendants found liable for trade mark infringement and passing off outside scope of licence; copyright claim dismissed; invalidity and revocation counterclaims dismissed.

Orders

  • Defendants restrained from using CORMETON on its own and from using the Signs and CE Sign in relation to mechanical fire protection goods and services.
  • Defendants permitted to use CORMETON ELECTRONICS and the Domain Name for electrical safety equipment under licence.