ALM Manufacturing v ALM IMP EX Ltd

This is an application for summary judgment in an action in which the Claimants allege infringement of registered trademarks and passing off.

The Claimants comprise three: the first a company called ALM Manufacturing Limited (“the Company”); the second a Mr Paul Adcock and the third; his wife, Mrs Teresa Adcock.

The evidence shows several (I think five in number altogether) registrations of trademarks in favour of Mr and Mrs Adcock or one or other of them, trademarks in relation to which the registered owner has granted a licence to the Company, a company owned by Mr and Mrs Adcock.

The trademark concerned protects the use of the letters “ALM” in relation to various classes of goods dealt in by way of business by the Company, Claimant, those classes including in particular tools for use in gardening and household goods of various sorts.

The business carried on by the Company was, in fact, carried on from a date some 40 years ago by the second and third Claimants, Mr and Mrs Adcock, in partnership. The business was eventually taken over more recently by the Company when they formed that company for the purpose.

On 6 February of this year the Claimants became aware of the fact that a well established trade journal dealing with gardening products contained an advertisement which was headed with, amongst other things, the letters ALM and which indicated that the promoter of the advertisement was carrying on the business of distributing products within some of the classes, in particular garden tools and household goods, protected by the Claimant’s registration of the ALM text trademark.

In order to find out more about this a representative of the Claimants telephoned a number which was contained in the advertisement, asking whoever answered the telephone call for information relating to the products marketed by the company promoting the advertisement. In response the representative of the Claimant’s received a letter dated 7 February 2008, which was on letterhead headed on the left-hand side, “ALM International Trading,” on the right-hand side, “ALM” and then on the line underneath, “ALM Imp Ex,” which one assumes refers to Import and Export, “Limited.

Attached to the letter was a business card headed with the name of the second Defendant in this action and on the main part of the card was printed, “ALM International Trading” and below that, “ALM Imp Ex Limited,” with an email address itself starting with the letters ALM. The letter referred to the telephone conversation which the representative of the Claimants (in fact, a member of the Claimants’ solicitors) had had the previous day on seeing the advertisement and said this:

“Referring to our telephone conversation yesterday, please find enclosed photos and prices. Please remember that these prices are based on container load basis.”

Then there is a list of eight products, which include: builders’ bucket; big hand grass collector; mixing bowl; pudding bowl; yellow duster; dish cloth; flower bucket and a seed tray. The letter went on to give prices and said they were subject to VAT, and then went on to say that on volume orders or regular deliveries there could be some further discussion of prices.

The Defendants to the action, which has been started as a result of that information being acquired by the Claimants, are, firstly a company called at the time (although it has since changed its name) ALM Imp Ex Limited and, secondly, Mr Kalim Rana, the gentleman whose name appears at the top of the business card attached to the letter sent by ALM Imp Ex Limited on 7 February 2008 to the Claimants.

It is not entirely clear what the extent of the interest of Mr Rana in the first Defendant is, but he is a director of that company, together with, I think, two other directors. On the present application both Defendants have been represented, not by lawyers, but by Mr Rana appearing in person, because he says neither Defendant can afford legal representation.

Correspondence followed the letter of 7 February 2008, in which undertakings were asked for from the Defendants by the Claimants to prevent any further infringement alleged by the Claimants of their trademark by using the letters ALM in connection with the promotion of goods which fell within the various classes of goods in respect of which the ALM logo was protected by the registered trademark to which I have referred, but no satisfactory undertakings were forthcoming. The present action resulted, in which the Claimants claim infringement of the trademark and passing off, on the basis that by using the letters ALM in its promotional literature of its goods the first Defendant, by the second Defendant, is guilty of passing off the first Defendant’s goods as being those of the Claimants.

Having started proceedings the Claimants obtained an interim injunction from Mann J prohibiting any further acts of infringement of the trademark and providing for delivery up of certain documents. That injunction was continued by Norris J on a return date provided by Mann’s J original order and that injunction remains in force.

On 17 April of this year the Claimants launched the application which is now before me for summary judgment on the basis that the Defendants have disclosed no reasonable grounds for defending the claim.

Two documentary attempts have been made by the Defendants to put forward a defence, or several defences, to the claim made in the particulars of claim by the Claimants. The first of the alleged defences emerging from those documents is that none of the goods sold by the Defendant or either of them were marked “ALM.” They were, in fact, marked with another trade name used by the Defendants, MASPRO. The second defence that has been put forward is that the advertisement and letterhead complained of by the Claimants did not, in fact, simply use the letters, ALM, but used them only in conjunction with ALM Import Export or in another case, ALM International Trading. The third alleged defence put forward on behalf of the Defendants is that, in fact, there have been no actual sales of products comprised in the advertisement and letter complained of by the Claimants as dealing with products comprised in the class protected by the Claimants’ trademark registration.

Today, in the course of his very careful and thorough submissions to me, Mr Rana also relies on the fact, as he says, that neither he nor anyone else on behalf of the first Defendant company was ever aware of the existence of the Claimants and their rights to the trademark ALM before the advertisement complained of by the Claimants was produced and that, in fact, that was the only occasion on which such an advertisement appeared in any journal.

Secondly, a further point relied on by Mr Rana in his submissions is that, the range of products dealt by the Claimants is, in fact, very different from the range dealt in by the Defendant.

The Claimants, by Mr Brandreth of counsel, forcefully submit that none of those alleged defences constitutes any reasonable defence to the claim that has been made and that, accordingly, the Defendants have failed to show any defence at all to the claim made in the Claimants’ action. So it is now appropriate to bring this unhappy saga of litigation to an end by striking out the alleged defences put in by the Defendants and granting summary judgment in favour of the Claimants.

Mr Rana in his submissions, equally forcefully, makes the point that there was never any intention on his part that the Defendants should infringe any right of the Claimants. As I have said, he says that he knew nothing about the Claimants or their trademark rights until after the offending advertisement had been put in the trade journal and after the correspondence between the Claimants and the Defendants had come into being. So, says Mr Rana, any infringement, if there was one, is entirely innocent and should not be visited by orders of the court and, in particular, substantial financial orders for costs against the Defendant.

In my judgment, Mr Brandreth is entirely correct in saying that none of the attempted defences put forward on behalf of the Defendants amount to any real defence at all. The fact that the goods marketed by the Defendants were not marked themselves with the letters ALM is neither here nor there. It is not a pre-requisite of an act of infringement of the trademark under s.10 of the Trademarks Act 1994 that the goods complained of should actually be marked with the trademark that is protected. It is sufficient, as happened in this case, that the letters the protected mark should be used by the Defendant in the course of promoting sales of goods within the same classes as those that are within the protection granted by the trademark registration

Also, in my judgment, Mr Brandreth is correct in saying that the second alleged defence, namely that the letters ALM were not used by the Defendants on their own, but in conjunction with other words such as International Trading and Imp Ex Limited is misconceived. Mr Brandreth is right in saying that that again is of no relevance whatsoever, because the fact is that the literature with the advertisement and the letters and letterhead complained of by the Claimant and used by the Defendants clearly included, as indeed did their business card, the letters ALM as the most prominent letters in the letterhead and on the card. The use of the letters ALM is, by virtue of the trademark registration, prohibited in the context of the promotion of business in classes of goods covered by the registration, whether the literature complained of as infringing those rights of the Claimants actually contained some other descriptive terms or not. It is the use of the letters ALM, particularly in the prominent way in which they were used on the Defendant’s letterhead that is offensive.

Again, the extent of any sales of products pursuant to promotional literature used by the Defendants containing the letters ALM is, as Mr Brandreth submits, wholly irrelevant to the question of infringement. The infringement under s.10 of the Act is effected, not by selling goods, but by using the protected term ALM in the course of promoting or attempting to promote sales of goods within the classes comprised in the trademark registration. Again, it seems to me, that whether the Defendants knew of the existence of the Claimants before the advertisement complained of was put in the trade journal is entirely irrelevant to the question of trademark infringement.

As to the further defence put by Mr Rana in his submissions today, that the product list of the Claimants is completely different from the product list of the Defendants, that is is in my judgment, again nothing to the point, if, in fact, as does appear from the evidence to be the case, the product list sought to be sold by the Defendants by use of the letters ALM in its literature included goods within the classes of goods sold by the Claimants and protected by the trademark registration. The fact that the list of products sold by the Claimants on the one hand and the Defendants on the other hand also included products quite different as between the two lists is neither here nor there. The infringement consists of using the protected mark, ALM, in the context of promoting sales of such of the Defendants’ goods as fall within such of the Claimants’ goods as are within the class protected by the trademark registration. The fact that either list comprises other things, as I say, is irrelevant.

I understand Mr Rana’s submission that he finds it very hard that his company and he himself should be subjected to substantial penalties by reason of the fact that he has committed, what he says, is a purely innocent infringement of the Claimants’ rights. But I am afraid, again, the question is whether the Defendants have put forward any defence to the infringement claim, not whether they had any immoral or illegal or other intention in relation to committing that infringement. The sole question is whether the Claimants have properly alleged infringement within the meaning of s.10 of the 1994 Act and whether the Defendants have shown any real defence to that alleged claim.

In my judgment, nothing that I have read or heard shows that the Defendants have any realistic defence to the claims both in infringement of trademark and passing off made in the particulars of claim filed on behalf of the Claimants. I see no other reason, public policy or otherwise, why this action should be required to go to trial. Far too much money has been spent already as a result, I am afraid, of the intransigence of the Defendants, and I shall strike out the purported defence or indeed, both of them I suppose, put in on behalf of the Defendants and grant summary judgment in favour of the Claimants in the terms of the minute of order annexed to their application for summary judgment, but with the omission of paragraph number 3 in that minute of order, which would have required the first Defendant to change its name. In fact, it has now changed its name very recently to a name which does not include the letters ALM.

That leaves only the question of costs. It seems to me clear that the Claimants, having succeeded in their application for summary judgment are entitled to their costs of the action and that will necessarily carry with it costs of the application for interim injunctions, which were dealt with by Norris J on the second application on the footing that they should be the Claimants’ costs in the case.

I am finally asked to make a summary assessment of the costs concerned, in so far as they have not already been dealt with. The only ones that have been dealt with are the costs of the hearing before Peter Smith J, when he gave directions for the further hearing of this application for summary judgement. I have been shown a schedule of the Claimants’ costs of the action as a whole, including the application for summary judgment, except the costs already dealt with by Peter Smith J, and that produces a total of £34,990.05. It seems to me entirely appropriate, to save any further waste of money by detailed assessments of costs, that I should make the summary assessment and I shall accordingly assess the costs in the sum claimed, which is £34,990.05.