Lifestyle Equities CV v The Copyrights Group Ltd & Ors

I shall refer to it as the Logo. (Footnote: ¹) It will, of course, be necessary to delineate more clearly the precise marks that the Claimants rely upon, but the various marks are materially similar to the Logo and the parties (very sensibly) did not make anything of the (immaterial) differences.

The claims advanced by the Claimants against the Fifth to Eighth Defendants have been stayed pending the determination of the matters arising in this trial. Although I intend to say nothing more about these defendants, the claims against these defendants are material as regards the claims that are advanced by the Claimants against the First, Second and Third Defendants. I shall, therefore, refer to these defendants as D5 to D8.

The Fourth Defendant – PJB Brands Limited – refers either to a company incorporated in Cyprus (which closed in 2015) or to a similarly named company incorporated in Greece (which closed in 2018). Neither company has taken an

That leaves the First, Second and Third Defendants, who have (represented by the same legal team) taken an active part in defending the claims brought against them by the Claimants. It is necessary to differentiate between them, for their commercial roles are very different. Where I refer to them collectively, I do so as the Defendants.

The Third Defendant – Greenwich Polo Club Inc (Greenwich Polo Club) – is a company incorporated in the State of Connecticut in the United States of America. It, and its relationship with the First and Second Defendants, is most clearly described in paragraph 6 of the Defendants’ written opening submissions:

“[Greenwich Polo Club] is a polo club in Greenwich, Connecticut, USA. It is one of the leading polo clubs in the World and has, as one would expect, produced merchandising using its own branding for years. In the late 1990s, it decided to expand that merchandising and the services of the First Defendant…were engaged. [The First Defendant] is a licensing agency representing writers, artists and brand owners around the World. It licenses wellknown assets such as Paddington Bear, Peter Rabbit and The Snowman. It has, over the years, been perceived as one of the leading global players in this market. The Second Defendant…is a director of the [First Defendant]. He was Chairman and CEO until 2016…”

Thus, it is Greenwich Polo Club that is the owner of the “Greenwich Polo Club” brand and of the various marks that I shall come to describe. These marks are managed and licensed by the First Defendant as Greenwich Polo Club’s agent. I shall generally refer to the First Defendant as the Copyrights Group. The Second Defendant is Mr Nicholas Durbridge and I shall refer to him by his name. Mr Durbridge is the founder of the Copyrights Group and (in addition to other roles and designations within the Copyrights Group, which are not material) he is sued as a director of the Copyrights Group. Mr Durbridge has been a director since the Copyrights Group was incorporated.

What I shall refer to as Greenwich Sign 1 is:

Greenwich Sign 2 is:

Section B describes the manner in which the trial was conducted and the evidence before me, in particular the oral evidence.

Section C describes the Claimants’ brand and the various marks on which they rely.

Section D considers the relevant law underlying the infringement allegations made by the Claimants.

Section E sets out, considers and determines the various allegations of infringement advanced by the Claimants.

Ms Mariana Castro. At the time she gave her witness statemement (28 February 2020, Castro 1), Ms Castro was the director of events and marketing at Greenwich Polo Club. Since then, she had moved on to other work, but remained in close touch with Greenwich Polo Club. She was obviously an enthusiast of the sport, and explained (in both her written and her oral evidence) the business relationship that existed between Greenwich Polo Club and the Copyrights Group and – within the Copyrights Group – Mr Durbridge. Ms Castro gave her evidence briefly on Day 2, and was a transparently honest and helpful witness.

Mr Nicholas Durbridge. Mr Durbridge, the Second Defendant, is in a sense Mr Haddad’s “opposite number”, although of course the Copyrights Group does not own the rights to the Greenwich Signs but licenses them on behalf of Greenwich Polo Club. Like Mr Haddad, Mr Durbridge was clearly knowledgable and expert about his business, and I accept his evidence entirely. Unlike Mr Haddad, he was an expansive witness, and I got a far better impression of the business of Copyrights Group from Mr Durbridge than I did about the Claimants’ business from Mr Haddad. That is not a criticism of Mr Haddad, nor particularly praise of Mr Durbridge: this simply reflects the very different ways in which they gave their evidence. Mr Durbridge gave a witness statement dated 9 March 2020 (Durbridge 1) and gave evidence orally on Day 2.

Mr Howard Davis. Mr Davis is the chair of Ham Polo Club, and has been involved in the Club for many years. He gave one witness statement (Davis 1) dated 8 March 2020 and gave evidence orally on Day 2.

Mr John Moreland-Lynn. Mr Moreland-Lynn is the founder of the heritagelifestyle brand Polistas, which is a brand selling high-quality polo apparel for playing in and also for use off the polo field. He gave a witness statement dated 4 March 2020 (Moreland-Lynn 1), and gave evidence orally on Day 2. Mr Moreland-Lynn was clearly a polo enthusiast and gave his evidence enthusiastically and emphatically. He was at pains to make clear his disdain for “fake” brands, as he saw the Claimants’ brand. By “fake” he meant that such brands did not represent a club nor particularly the sport of polo. I am not sure how far I was assisted by this evidence; indeed, without in any way doubting Mr MorelandLynn’s evidence, I found it of limited use.

Mr James Morrison. Mr Morrison is the chair and chief executive of Royal County of Berkshire Polo Club Ltd. He gave a single witness statement dated 3 March 2020 (Morrison 1). He gave oral evidence briefly on Day 3. I accept his evidence, but found it of peripheral use.

Mr Simon Miles. Mr Miles is a solicitor and a partner in the firm of Edwin Coe LLP. He gave formal evidence as to certain purchases made by way of Amazon (using the amazon.co.uk website) in a statement dated 9 March 2020 (Miles 1), on which he was cross-examined briefly on Day 3. He gave his evidence succinctly and clearly.

Mr Paul Berrington – the former manager of the Fourth Defendant – gave a witness statement dated 9 March 2020 (Berrington 1). He was not required to attend for cross-examination, and I accept his evidence.

By a notice made under the Civil Evidence Act 1995 dated 9 March 2020, the Defendants sought to adduce into evidence:

Japan;

China;

Hong Kong;

The Republic of Korea;

Indonesia;

Malaysia;

Singapore;

Taiwan;

Philippines;

Thailand;

Brunei;

Vietnam;

Laos;

Union of Myanmar; and

Cambodia.

I shall refer to the Brand rights in respect of these countries as the Asian Territories. Subsequently, Young Sangyo Co Ltd sold the rights in China to a company named Wah Sing. (Footnote: ³) The precise ownership of the Brand rights in the Asian Territories is immaterial, provided it is borne in mind that these rights have nothing to do with the Claimants.

in the Brand – that is, the right to exploit the Brand and all related intellectual property rights worldwide in all territories save for the Asian Territories and the US Territory – were assigned to Lifestyle Equities CV (the First Claimant in these proceedings). (Footnote: ⁶) I shall refer to these territories as the Residual Territories.

Infringe or threaten to infringe the EUTMs contrary to Article 9(2)(b) and/or (c) of Regulation 2017/1001 on the European Union Trade Mark (the Regulation) and the equivalent provisions of the preceding Regulations on the European Union Trade Mark and/or on the Community Trade Mark. (Footnote: ⁸) Article 9 of the Regulation materially provides:

“Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:

...

(b)

the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c)

The sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.”

Infringe or threaten to infringe the UK Mark contrary to sections 10(2) and/or (3) of the Trade Marks Act 1994 (the Act). (Footnote: ⁹) Section 10 materially provides:

“(2)

A person infringes a registered trade mark if he uses in the course of trade a sign where because –

(a)

the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

(b)

the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

(3)

A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which – (a) is identical with or similar to the trade mark,

...

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(3A) Subsection (3) applies irrespective of whether the goods or services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered.”

Constitute the tort of passing off. (Footnote: ¹⁰)

The use of a sign by a third party within the relevant territory. It will be necessary, in this case, to be very clear what the “use” of the “sign” is in this case: that is a very fact-dependent inquiry, which it would be premature to anticipate. However, it is appropriate to say something about the “relevant territory”. In the case of an infringement under the Act, the relevant territory is the United Kingdom. In the case of the Regulation, it is the territory of the EU, including the United Kingdom. Following IP Completion Day (which was 11pm on 31 December 2020), EUTM protection does not extend to the United Kingdom, but has been replaced by the creation of a comparable trade mark, applying within the United Kingdom.

The use must be in the course of trade. Kerly notes that “use in the course of trade calls for use in the context of a commercial activity with a view to economic advantage, and not as a private matter”. (Footnote: ¹²) Moreover: (Footnote: ¹³)

““Trade” is defined in section 103(1) of the [Act] as including any business or profession and will include leasing, hire purchase and the like. However, it is to be noted that, for the purposes of infringement, the trade does not necessarily have to be in the goods or services the subject of the registration. Activities in the course of trade include communications, for example by way of orders and invoices, with suppliers and trade customers.”

The use must be without the consent of the proprietor of the trade mark. At least for purposes of the Regulation, the issue of whether there has been consent to the use of the sign is to be given a uniform interpretation throughout the EU. Consent may be given either by the proprietor or by a licensee of the proprietor, acting within the terms of a licence granted by the proprietor. Consent must be given by a party who has the right to control the use of the registered mark as a matter of trade mark law. (Footnote: ¹⁴)

The sign used by the third party must be identical with or similar to the trade mark. The registered mark and the sign alleged to infringe must be identical or similar; if they are not, the distinctiveness of the mark and the fact that the goods or services are identical are irrelevant. The condition of similarity requires the existence, in particular, of elements of visual, aural or conceptual similarity.¹⁵ More specifically:

The sign must be used in relation to goods or services which are identical with or similar to those for which the trade mark is registered. Kerly notes: (Footnote: ²²)

“The goods or services that are the subject of the registered mark and those that are the subject of any alleged infringing use must be identical or similar. It appears that this is not only a relevant matter to take into account in assessing the likelihood of confusion but is also a threshold requirement before infringement can be found under this provision.”

As Mr Hobbs QC, sitting as a Deputy High Court Judge, noted in Daimler AG v. Sany Group Co Ltd: (Footnote: ²³)

“Liability is clearly not confined to situations in which the parties are (or will be) traders engaged in a common field of activity under the mark(s) at issue. Quite how far beyond that a claim for protection against the likelihood of confusion can extend consistently with the requirement for ‘similarity’ between the goods (or services) at issue is a matter on which there is room for more than one view.”

A good example of the difficulty in assessing this threshold requirement is given by Kerly:²⁶

“The claimant was the proprietor of the mark “Viagra”, registered in Class 5 in respect of veterinary preparations and pharmaceutical substances. The defendant proposed to market a beverage to be used as a mixer under the sign “Viagrene”. It became apparent that the defendant proposed to market its product as a drink capable of stimulating the libido of men and women by incorporating a natural herb which was thought to act directly on the reproductive organs. Held that, once considered in the light of the defendant’s intention,

the similarity between the goods became more pronounced and infringement under section 10(2) was established.”

The use must give rise to a likelihood of confusion. The sort of likelihood of confusion required to satisfy this provision is confusion as to origin. It is not enough for the later mark to call the earlier mark to mind, if there is not some misapprehension as to the origin of the goods or services. (Footnote: ²⁴) In Specsavers International Healthcare Ltd v. Asda Stores Ltd, (Footnote: ²⁵) Kitchin LJ endorsed the following summary of the key principles:

“On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it:

(a)

the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b)

the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(c)

the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

(d)

the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e)

nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f)

and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g)

a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h)

there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i)

mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

(j)

the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k)

if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically linked undertakings, there is a likelihood of confusion.” At [87], Kitchin LJ noted:

“In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer’s mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.”

Article 9(2)(c) or section 10(3). The proprietor of a trade mark must prove: (Footnote: ²⁶)

The registered trade mark has a reputation in the relevant territory. The registered mark must have a reputation in the United Kingdom (in the case of a national registration) or in the EU (in the case of an EUTM). It is not necessary that this reputation extend over the whole of the relevant territory, but it must exist in a significant part of it. In the context of an EUTM, reputation within a single Member State may suffice. Of reputation, Kerly says this:³⁰

“There is no express requirement as to the extent of the reputation necessary, although the degree of required recognition must be considered to be reached when the mark is known by a significant part of the public concerned by the products or services covered by the trade mark. The relevant public comprises those concerned by the trade mark, such as those depending on the product or service marketed, either the public at large or a more specialised public. For example, traders in a specific sector. Where a mark satisfies the requirement of reputation in part but not all of the EU, inforngement may still follow even in territory where the mark does not have a reputation if a “commercially significant part” (as opposed to a “substantial part”) of the public in that state are aware of the mark in issue. In considering whether a repuation has been demonstrated, the court must take into account “all the relevant facts of the case”. In particular, this includes the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking promoting it, in each case (it is suggested) in respect of the goods and services relied upon.”

The use of a sign by a third party in the relevant territory. This requirement is, mutatis mutandis, the same as that considered in paragraph 22(1) above.

The use of that sign by the third party in the course of trade. This requirement is, mutatis mutandis, the same as that considered in paragraph 22(2) above.

The use of the sign by the third party without the consent of the proprietor of the trade mark. This requirement is, mutatis mutandis, the same as that considered in paragraph 22(3) above.

The sign used by the third party must be identical with or similar to the trade mark. This requirement is, mutatis mutandis, the same as that considered in paragraph 22(4) above.

The sign used by the third party must be in relation to goods or services. This is not the same as the requirement arising in relation to Article 9(2)(b) or section 10(2) in that it is broader: but nothing more need be said in relation to this requirement.

A link, in the mind of the average consumer, between the sign of the third party and the trade mark of the proprietor. This is not the same as a likelihood of confusion as to origin, which is not a requirement. In Marca Mode v. Adidas, the CJEU stated: (Footnote: ²⁷)

“The interpretation is not inconsistent with Article 5(2) of the Directive which establishes, for the benefit of well-known trade marks, a form of protection whose implementation does not require the existence of a likelihood of confusion. That provision applies to situations in which the specific condition of the protection consists of the use of the sign in question without due cause which takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”

That the infringement gives rise to injury. The injury must be one of three types:

That the infringement is without due cause.

a misrepresentation by the defendant leading to confusion (or deception) causing

damage to the [claimant]”

made by a trader in the course of trade,

to prospective customers of his or ultimate consumers of goods or services supplied by him,

which is calculated to injure the business or goodwill of the trader (in the sense that this is a reasonably foreseeable consequence) and

which causes actual damage to the business or goodwill of the trader by whom the action is brought.”

The Particulars of Claim begin with allegations against the Copyrights Group (the First Defendant) in paragraphs 25.1 to 25.3 of the Particulars of Claim. I shall, obviously, return to consider these allegations, but it is fair to note that they are quite broad-brush and not very closely tied to actual infringing use in the course of trade. Essentially, they fall into two classes:

The same allegations are equally made against Mr Durbridge (the Second Defendant). Essentially, no distinction is drawn between the Copyrights Group and Mr Durbridge. Paragraphs 16 and 17 of the Particulars of Claim plead:

“16.

The Second Defendant is and has been a director of the First Defendant at all times since it was incorporated. The website of the First Defendant (the Website) reached via the URL <www.copyrights.co.uk> includes a page entitled “About Us” which states that the Second Defendant is the “Chairman and CEO” of the First Defendant. Further, in a witness statement made in September 2017 and filed in response to an application to revoke certain UK trade marks owned by the Third Defendant, the Second Defendant described himself as the Chairman of the First Defendant, and its founder. He further stated that he had “experience and history in dealing with the [Third Defendant’s] licensing programme”.

17.

The First and Second Defendants are referred to herein together as the CGL Defendants. The First and Second Defendants are jointly and severally liable for the acts of the CGL Defendants of which complaint is made herein for the reasons set out below under the heading “Joint Liability of the CGL Defendants”.”

Pausing there, I do not consider that the potential liability of a company like Copyrights Group, contracted by the owner of a brand like Greenwich Polo Club to license and manage that brand, should automatically be equated with the potential liability of a director of that company. The two aspects are separate, albeit related, and must be considered separately. The basis for the joint and several liability of the CGL Defendants is then pleaded in paragraphs 35 to 37 of the

Particulars of Claim:

“35.

The First and Second Defendants are jointly and severally liable for the acts of the CGL Defendants of which complaint is made herein. In support of the foregoing allegation of this paragraph, and pending disclosure, further information and/or evidence, the Claimants will rely in particular on the following facts and matters:

35.1

The facts and matters set out in paragraph 16 herein.

35.2

The fact that the First Defendant is stated on the terms and conditions page of the Website to be the company that operates the Website.

35.3

The fact that the licences between the First Defendant and each of the Fourth to Eighth Defendants was signed by the Second Defendant.

35.4

The fact that the Second Defendant was the person within the First Defendant who made all the decisions in respect of the grant of licences in respect of the Signs, as illustrated by his signature on each such licence, and by the email from Tracy Casabere of the First Defendant to Mirna Keshishian of the Fourth Defendant on 31 March 2017 at 10:26 in which she indicated that she could only approve a deal for Spain because she had spoken to the Second Defendant, referred to therein as Nicholas, and he had approved that deal…

36.

In light of the facts and matters set out in paragraphs 35.1 to 35.4 above, it is inferred that the Second Defendant is the guiding mind of the First Defendant. Each of the acts of the First Defendants are undertaken personally by the Second Defendant, are authorised and/or procured by him, and/or he had engaged in a common design with the First Defendant to secure that the acts of which complaint is made herein took place, knowing and intending in each case that such acts should take place.

37.

In the premises, the First and Second Defendants are jointly and severally liable for the acts of trade mark infringement and passing off of the CGL Defendants of which complaint is made herein, including the joint and several liability of the CGL Defendants for the acts of the Fourth to Eighth Defendants.”

Greenwich Polo Club (the Third Defendant) is said to be “jointly and severally liable for the acts of each of the other Defendants of which complaint is made herein for the reasons set out in paragraphs 25.3.1 and 25.3.2 above. These paragraphs provide as follows:

“25.3

The CGL Defendants are jointly and severally liable for each of the acts of the Fourth to Eighth Defendants of which complaint is made herein and each of them because:

25.3.1

By entering into licence agreements with each such Defendant, the CGL Defendants authorised and/or procured the acts of each such Defendant of which complaint is made herein and each of them; and/or

25.3.2

By entering into licence agreements with each such Defendant, the CGL Defendants entered into a common design with each such Defendant to secure that the acts of that Defendant of which complaint is made herein and each of them took place. In each case, the CGL Defendants knew and intended that their acts would lead to the acts of each such Defendant of which complaint is made herein.”

It is quite clear that this pleading seeks to spread the web of liability extremely wide, both in terms of the persons it seeks to ensnare and the territory it seeks to embrace, for paragraph 24 of the Particulars of Claim (Footnote: ³⁰) expressly pleads infringements or threatened infringements “in the course of trade in the UK and/or in the EU”. Yet the facts and matters pleaded in the first instance concern an accessory liability arising out of the primary infringing conduct of D5, D6, D7 and

Table 1: Findings as to use of Greenwich Signs by D5 to D8

Use of the sign within a relevant territory

Use in the course of trade

Use without consent

Identical or similar

The pleadings make no such claim of infringement, and are confined to alleged infringements by use of Greenwich Signs 1, 2 and/or 3, no allegations being advanced in relation to Greenwich Sign 4. As I have indicated, Greenwich Sign 3 is the only sign that I find used by D5, D6, D7 and/or D8.

The reference to “proposed items of eyewear” (Footnote: ³⁷) is something that I will return to, but I should be clear that there is no evidence of actual or threatened use of any sign of Greenwich Polo Club by D5, D6, D7 or D8 in connection with eyewear. To the extent that such an allegation was made by the Claimants, I reject it as being unsupported by the evidence. To the extent that such an allegation arose in connection with a proposed licensing of the Greenwich Signs in connection with eyewear by the Copyrights Group to persons other than D5, D6, D7 or D8, I deal with that further below.

Paragraph 17 does refer to use of the figurative elements alone in other contexts. I have considered these. The image at A/2/A79 is of a single polo horse, with rider and mallet on a bedspread. It is not a mark at all, but purely a decorative image that no-one could sensibly regard as a badge of origin or reputation. The image at A/2/A68 is even more “arty” and decorative, being a single colour melange of two polo ponies and rider. These images are not trade marks at all.

I return, therefore, to the question of whether Greenwich Sign 3 is similar to the Logo, regarding both marks as a whole, including both figurative and word elements.

The figurative elements are different. I should say, at the outset, that I regard the figurative part of both the Logo and Greenwich Sign 3 as the least significant element of these marks. The fact is that the rider (or riders) on a polo horse (or horses) with polo mallet (or mallets) does not do anything more than evoke the sport of polo. This is not a case of a Nike “swoosh” or some other purely figurative sign that links to or evokes a particular brand or producer. As Mr Durbridge makes clear in his evidence, many brands, clubs and entities deploy the polo horse and rider motif in their branding, but always with an additional word element to

In these circumstances, the point made by the Defendants that Greenwich Sign 3 is actually – considering only the figurative element, and disregarding the context I have described – not similar to the figurative element in the Logo is correct but of secondary importance. Nevertheless, it is a point I accept. The visual dissimilarities between the two figurative elements are too great to give rise to much similarity. Thus:

The figurative element must be considered with the word element. The word element in the Logo and the word element in Greenwich Sign 3 are, self-evidently, very different. That is the point of the text, as any consumer would understand:

The short point is that it is the word element that is the critical part of both the Logo and Greenwich Sign 3, and this element is not similar but orally, visually and conceptually very different.

In paragraphs 81 to 84 of their written opening submissions, the Claimants sought to minimise the distinctiveness of the word element by suggesting that in the relevant territories – Greece, Cyprus and Bulgaria – the everyday language of consumers uses a different alphabet. I accept that, but it is difficult to see where the point goes. In the Greek and Cyrillic alphabets, the words “Polo Club” are, when translated, the same; but the words “Beverly Hills” and “Greenwich” are different in translation – making the very point that I am labouring, namely that these words, and the links and concepts that they reference, are very different. It seems to me that this point adds nothing.

Use of a sign by a third party in the relevant territory (3) Use of a sign by a third party in the course of trade (6) Use of the sign in relation to goods and services

Use of the sign without consent

Identical or similar

Enhanced reputation (7) A link in the mind of the average consumer (8) Injury

It is, of course, clear, that the Claimants need to show a reputation in respect of the goods they rely upon in respect of the particular markets where it is said infringement has occurred.

I am thus concerned with the items of clothing and household furnishings listed in Table 1 in the three territories there identified, Greece, Cyprus and Bulgaria. The evidence in support of enhanced reputation in relation to these goods in these territories was trifling. I am quite prepared to accept that these goods of this kind were sold and marketed in these territories, bearing the Logo, but I was actually provided with very little more than some marketing materials and some evidence as to volume of sales and/or sales revenue. Apart from this, the Claimants relied upon global factors (like “high end” retail outlets in other territories), plus evidence of a global reputation (although the Claimants were not very good at differentiating between their Residual Territories and the US and Asian Territories).

Of course, I accept that a global reputation both can derive from reputations in many specific territories and can then enhance a reputation in specific territories where it is perhaps less well established “on the ground”. But that sort of reputation must be proved, and I am afraid that I was furnished with no sense that the fact that (by way of example) “[t]he Brand has over 50 flagship stores in the Middle East, India and Egypt, including in malls in Dubai including Dubai Festival City, Al Ghurair Center, Burjaman and Ibn Battuta Mall” (Footnote: ⁴²) had any impact whatsoever on reputation in Greece, Cyprus and Bulgaria. I had no evidence of any kind of link in the mind of the average consumer and – from the frankly peripheral evidence of reputation provided – I am disinclined to infer that any such link existed, particularly given the very different nature of the signs in issue.

The Claimants refer to the Copyrights Group’s reference to certain of the Greenwich Signs in revocation or opposition proceedings before EUIPO. (Footnote: ⁴⁴) I am satisfied that the invocation of even an identical sign in such proceedings cannot constitute an infringement of the rights of the Claimant in the Logo. The whole point of such proceedings is to establish or vindicate the rights of the parties to such proceedings, and it would be wrong for such use, in the course of litigation, to be precluded or constrained by a separate infringement action. Parties ought to be free to advance such points as they are advised before tribunals tasked with evaluating the validity or otherwise of rights asserted.

The Claimants also rely upon the Copyrights Group’s conduct of its usual business in seeking to promote the business or brand of Greenwich Polo Club. Thus, by way of example, paragraph 25.1.2 of the Particulars of Claim pleads:

“Sought licensees for goods to be sold under and by reference to the [Greenwich Signs] and each of them in all countries in the EU, including in the UK, by:

25.1.2.1 Advertising the Signs to potential licensees on the Website;

25.1.2.2 Procuring an entry promoting the Signs to potential licensees in “The Licensing Source Book Europe” from Autumn 2014;

25.1.2.3 Attending the Brand Licensing Europe trade shows in October 2015 and October 2016, and prominently displaying references to the Signs on their stand at that show in order to attract licenses;

25.1.2.4 Frequently communicating with the trade press (including in particular the publications or publishers Max Publishing, Total Licensing, License Global, Licensing Biz, Lema Publishing, Licensing World and Amaze Marketing Limited) to promote the Signs to potential licensees;

25.1.2.5 Appointing the Fourth Defendant as an agent to obtain licensees in Greece and

Cyprus; and

The claim of accessory liability based upon infringements by D5 to D8 fails for the reasons given in Section E(2) above.

The attempt to create a primary claim against the Copyrights Group fails for the reasons given in previous paragraphs.

The claims against the Copyrights Group all fail.

The relevant law – in general terms – is set out in Clerk & Lindsell: (Footnote: ⁴⁷)

“…the agent who commits a tort on behalf of his principal and the principal himself are joint tortfeasors; so are the employee who commits a tort in the course of his employment and his employer (even if the employer became insolvent before the time of the trial); so are an independent contractor who commits a tort and his employer, in those cases in which the employer is liable for his independent contractor. Equally, a parent company and its subsidiary may be regarded as joint tortfeasors in respect of loss or injury suffered by employees of the subsidiary so long as a supervisory duty is borne by the parent company. But the mere fact that a parent company appoints a director of the subsidiary who holds responsibility for health and safety matters in that company is not enough to attach liability to the parent company. He would need to be acting not just as a director of the subsidiary, but also on behalf of the parent in order for this to be the case. Finally, a company director and the company itself may be regarded as joint tortfeasors where the director “is sufficiently bound up in [the company’s] acts” to make him personally liable. This will certainly occur where the wrongful acts complained of arise from a director’s participation in a manner that goes beyond the mere exercise of his power of control through the constitutional organs of the company. An example is where he facilitates the breach of a design right with a view to enabling a breach of that right to occur. Apart from these instances, concerted action is required. Where one person instigates another to commit a tort, they are joint tortfeasors; so are persons whose respective shares in the commission of a tort are done in furtherance of a common design. However, it is important to appreciate that although mere facilitation of the commission of a tort will not suffice, a sufficient common design may nonetheless be held to exist where D1 makes a more than de minimis contribution to the commission of a tort by D2…”

In the case of a company and a director or other agent of the company, the separate legal personality of the company gives rise to difficulties. Where the act of a natural person is not merely attributed to another, legal, person, but actually is the act of that legal person, because the legal person cannot act by itself, then it is difficult to see how the same act can be used to create a joint liability in both the legal and

Accordingly, the position of Mr Durbridge raises particular difficulties. The Claimants contended that this was not so, and referred me to the decision of the Court of Appeal in MCA Records Inc v. Charly Records Ltd. (Footnote: ⁴⁸) The Claimants contended that, by a straightforward application of the principles in this case, Mr Durbridge was a joint tortfeasor. In fact, the answer is by no means so clear-cut, for MCA Records contains a careful articulation of the difficulties in this area:

“47.

In Mentmore Manufacturing Co Ltd v. National Merchandising Manufacturing Co Inc, (1978) 89 DLR (3d) 195, the Federal Court of Appeal of Canada described the question whether, and if so in what circumstances, a director should be liable with the company as a joint tortfeasor as “a very difficult question of policy”. At page 202, Le Dain J delivering the judgment of the court, said this:

On the one hand, there is the principle that an incorporated company is separate and distinct in law from its shareholders, directors and officers, and it is in the interests of the commercial purposes served by the incorporated enterprise that they should as a general rule enjoy the benefit of limited liability afforded by incorporation. On the other hand, there is the principle that everyone should be answerable for his tortious acts.

Plainly, it is necessary, in the individual case, to achieve a balance between those two considerations. Equally plainly, the judge appreciated that. As he put it in paragraph 15 of his judgment: “inquiries into the matter will or may involve an ‘elusive question’ turning on the particular facts of the case, and whose resolution may in turn involve the making of a policy decision as to the side of the line on which the case ought to fall.”

48.

It is because there is a balance to be struck on the facts of each case that it is dangerous for an appellate court to appear to attempt a formulation of the principles which may come to be regarded as prescriptive. But I think it can be said with some confidence that the following propositions are supported by the authorities to which I have referred.

49.

First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company – that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company – for example by voting at general meetings and by exercising the powers to appoint directors. Aldous LJ suggested, in Standard Chartered Bank v. Pakistan National Shipping

Corporation (No. 2), [2000] 1 Lloyd’s Rep 218, 235 – in a passage to which I have referred – that there are good reasons to conclude that the carrying out of the duties of a director would never be sufficient to make a director liable. For my part, I would hesitate to use the word “never” in this field; but I would accept that, if all

that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. That is not to say, of course, that he might not be liable for his own separate tort, as Aldous LJ recognised at paragraphs 16 and 17 of his judgment in the Pakistan National Shipping case.

50.

Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control though the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. As I have said, it seems to me that this is the point made by Aldous J (as he then was) in PGL Research Ltd v. Ardon International Ltd, [1993] FSR 197.

51.

Third, the question whether the individual is liable with the company as a joint tortfeasor – at least in the field of intellectual property – is to be determined under principles identified in CBS Songs Ltd v. Amstrad Consumer Electronics plc, [1988] AC 1013 and Unilever plc v. Gillette (UK) Limited, [1989] RPC 583. In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in CBS Songs v. Amstrad at page 1058E to which I have already referred, the individual “intends and procures and shares a common design that the infringement takes place”.

52.

Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does “intend, procure and share a common design” that the infringement should take place may be liable as a joint tortfeasor. As Mustill LJ pointed out in Unilever v. Gillette, procurement may lead to a common design and so give rise to liability under both heads.”

The Claimants contended that the exception described at [49] of MCA Records did not apply, and that Mr Durbridge’s activities went beyond his constitutional role in the governance of the Copyrights Group. Unfortunately the facts and matters relied upon are pleaded with such vagueness (Footnote: ⁴⁹) that is it very difficult to understand precisely what is relied upon. More specifically:

If and to the extent that it is suggested that Mr Durbridge was the

“controlling mind” of the Copyrights Group, I confess that I have some difficulty in understanding how and why this is relevant to Mr Durbridge’s status as a joint tortfeasor. The fact is that the “controlling mind” doctrine is relevant when seeking – as I have said – to attribute a state of mind, including knowledge, to a company. It is not a means to imposing joint tortious liability on an agent of the company. I should make clear that I am making no finding that Mr Durbridge was the “controlling mind”, merely that if he was, I do not regard that as a particularly material point.

Of course, it is true that Mr Durbridge acted as the agent of the Copyrights Group, and it is clear that he did a number of acts for and on behalf of the

In analysing the position of Mr Durbridge, there is the fundamental difficulty that I have concluded that the Copyrights Group has not infringed the Claimants’ rights in the Logo. That being my conclusion, it is somewhat artificial to consider independently the liability of Mr Durbridge. However, it does seem to me that even if the conduct of the Copyrights Group amounted to an infringement of the

Kingdom from the European Union and after the expiry of the transitional provisions agreed between the United Kingdom and the European Union and implemented in the United Kingdom by the European Union (Withdrawal) Act 2018 and the European Union (Withdrawal Agreement) Act 2020.

ANNEX 1