Caspian Pizza Ltd & Ors v Shah & Anor

Caspian Pizza Ltd & Ors v Shah & Anor

Local goodwill established by the defendants in Worcester prior to the claimants' registration of the Caspian and Device Marks was sufficient to found an action for passing off and thus invalidated the national marks under s.5(4)(a) TMA 1994. There is no power to limit invalidity geographically after registration.

Parties
Appellant/claimant: Caspian Pizza Limited; Appellant/claimant: Behzad Zarandi; Appellant/claimant: Nadar Zand; Appellant/claimant: Caspian Franchise Holdings Limited; Respondent/defendant: Maskeen Shah; Respondent/defendant: Malvern Hills Estates Limited
Jurisdiction
England and Wales
Judgment Date
23 November 2017
Procedural Posture
Civil Appeal / Court of Appeal Judgment
Outcome
Appeal dismissed; cross-appeal allowed
Legal Topics
Trade Mark Infringement, Passing Off, Trade Mark Validity, Territorial Scope of Trade Marks
Intellectual Property Commercial Law Trade Mark Infringement Passing Off Trade Mark Validity Territorial Scope of Trade Marks

Case Brief

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Parties

Caspian Pizza Limited

Appellant/claimant

Behzad Zarandi

Appellant/claimant

Nadar Zand

Appellant/claimant

Caspian Franchise Holdings Limited

Appellant/claimant

Maskeen Shah

Respondent/defendant

Malvern Hills Estates Limited

Respondent/defendant

Procedural Posture

Civil Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether the Caspian Mark and Device Mark were invalidly registered under s.5(4)(a) of the Trade Marks Act 1994 due to prior local goodwill by the defendants
  2. 2 Whether local goodwill sufficient for a s.11(3) defence also establishes invalidity under s.5(4)(a)
  3. 3 Whether a declaration of invalidity can be geographically limited

Ratio Decidendi

Local goodwill established by the defendants in Worcester prior to the claimants' registration of the Caspian and Device Marks was sufficient to found an action for passing off and thus invalidated the national marks under s.5(4)(a) TMA 1994. There is no power to limit invalidity geographically after registration.

Court Disposition

Appeal dismissed; cross-appeal allowed

Orders

  • Declaration of invalidity in respect of the Caspian Mark upheld
  • Device Mark also declared invalidly registered