Yellow Van Company Ltd v Driver

This is an application by the defendant, Edward Peter Rayner, to set aside a judgment in default of acknowledgement of service and defence. The order was made by ARNOLD J on (there is a court stamp recording the date as) 16 November 2013.

The claimant conducted a business providing a service by way of household removals and other transport of household items. The Particulars of Claim allege that in 2009 the business was started and at that time was conducted by a partnership consisting of Mr Luke Terry and the defendant, Mr Rayner. The Particulars go on to allege that in October 2010 a company known as The Big Yellow Van Company Limited was incorporated. The business including the goodwill was assigned to that company. The claimant company is said to have been incorporated in July 2012 and at that time the business and goodwill was transferred to the claimant from The Big Yellow Van Company Limited, and the latter company was then dissolved. It is also alleged that in July of 2012 the claimant commissioned a design company to create a logo and that copyright in the logo was assigned to the claimant by a written agreement dated 8 August 2012. It also seems to be the case that on 15 February 2013 the claimant applied for a registered trademark in the form of a logo for goods and services in classes 35 and 39.

So the claimant claims ownership of goodwill in the trading name ‘The Big Yellow Van Company’, the name ‘The Yellow Van Company’ and in two devices, that is to say, the logos, one with The Big Yellow Van Company featured prominently and the other with The Yellow Van Company featured.

The Particulars of Claim allege that when The Big Yellow Van Company Limited was incorporated in October 2010 Mr Rayner declined to take shares in the company. Although he was not appointed a director he acted in that capacity and was accordingly a shadow director or a de facto director. Mr Terry was a named director of the company. It is alleged that in June 2012 Mr Rayner, the defendant, resigned from The Big Yellow Van Company Limited. In fact to put it more accurately it is alleged that he resigned from the claimant, but since it is earlier said the claimant was not incorporated until a month later in July 2012 I take that to be that he resigned from The Big Yellow Van Company Limited. Whichever it was, the ties were severed with Mr Terry at around that time.

It is said that in June 2012 Mr Rayner set up his own competing business under two names, Urban Fetch and Big Yellow Van Company, and he registered a number of domain names which he still owns. 21 are listed in an annex to the Particulars of Claim, including www.bigyellowvan.biz, and it is alleged that by reason of carrying on business under or by reference to the claimant’s trading names and logos, the defendant has passed off his business as the claimant. It is also alleged he has infringed the claimant’s trademark and the claimant’s copyright in the logo.

The timetable of proceedings was as follows. On 9 September 2013 the defendant was served with a claim form and Particulars of Claim. On 25 October of that year the claimant applied for judgment in default of acknowledgement of service. On 13 November 2013 judgment was granted by Arnold J and the order included an injunction against the claimant restraining passing off, infringement of trademark andcopyright. On 18 November 2013 the order was served on the claimant and on 27 November 2013 the defendant gave notice to the claimant’s solicitors that he intended to set aside the order. However, he did very little until 7 February 2014 when he sent the claimant’s solicitors a copy of an unissued application notice to set aside the order and a witness statement by him dated 7 February 2014. On 25 February 2014 the claimant’s solicitors wrote to the defendant alleging that he was continuing in his acts in breach of the order of Arnold J and indicating that the claimant would shortly bring proceedings for contempt. Shortly thereafter on 28 February 2014 the defendant issued the present application to set aside the order of Arnold J. The application notice still bears the date of 4 February, that is to say, the date of the original draft sent to the claimants. The court stamp shows that the application notice was stamped on 28 February 2014.

I have read Mr Rayner’s grounds for setting aside the order. The overall point he makes is that he was always a partner with Mr Terry in the business, which seems to me entirely consistent with what the Particulars of Claim allege Mr Rayner refers to this as ‘Big Yellow Vans Ltd’ but I take him to mean ‘The Big Yellow Van Company Ltd’. Mr Rayner makes the following specific points. He does not, I should say, appear to dispute the basic facts set out in the Particulars of Claim, although he identifies the date of the parting of ways as July rather than June 2012 but I do not think anything hinges on that. He relies on an email dated 8 October 2012 from Mr Terry to Eversheds stating that the court action pertaining to the company should be directed to Mr Rayner. I assume Mr Rayner is relying on this as apparent evidence that Mr Terry acknowledged that the business at that date was being run by Mr Rayner. I don’t think it is. The background to the email, as I understand it, is that Eversheds act for a company called The Big Yellow Group PLC which runs a well-known self- storage business. That company bought proceedings against Mr Terry which were resolved by an order of Birss J dated 19 December 2012. The email referred to by the defendant is dated 8 October 2012 and concerns a complaint about the use of the domain name www.bigyellowvan.biz, which is one of the domain names owned and used by the defendant, so it seems to me entirely unsurprising Mr Terry in his email is referring Eversheds on to Mr Rayner, since it is Mr Rayner who owns the domain name.

Mr Rayner also relies on screenshots from the www.bigyellovan.biz website, which shows Big Yellow Van Limited as being owned by Network Vans Limited, Mr Raynor’s company. But this claim is made on a website which is run by the defendant.

Mr Rayner further exhibits an invoice which suggests that Mr Terry was working as a plumber in June 2010. Whether or not that was the case, it seems to me it makes no difference to the claimant’s claim in these proceedings.

Further, the defendant says he will produce three signed statements from employees of The Big Yellow Van Company Limited to say that they understood that Mr Terry and Mr Rayner were joint owners of that company. No witness statements have been produced, but he does exhibit one signed statement from a Rob Rogers. It seems to me that the main point Mr Rogers makes is that the defendant was the controlling partner in the business when Mr Terry and he were working together. I have no idea if that is true or not but even if it is true it is not inconsistent with the claimant’s allegations.

A press release dated 9 October 2012 by The Big Yellow Van Company Limited is exhibited in which Mr Terry refers to the defendant as his business partner. This, it seems to me, is not consistent with the Particulars of Claim since by that date the Particulars of Claim suggest that Mr Terry and the defendant has parted company. But then nor is it consistent with Mr Rayner’s account. He suggests they parted in July 2012. So in the end I think that curious statement as of October 2012 does not take the defendant any further.

The defendant exhibits a driver’s manual issued by The Big Yellow Van Company which is undated, and he states further that Mr Terry and Mr Rayner were owners of that company. The claimant’s case is that they were both directors of the company but Mr Terry owned the shares. I have not seen any company records, but even if it were correct that Mr Rayner owned shares it does not undermine the claimant’s case that The Big Yellow Van Company owned the goodwill which was subsequently assigned to the claimant.

Finally, the defendant relies on an email dated 29 April 2013 showing that he invited Mr Terry to mediate their dispute. It seems that Mr Terry declined but that is not inconsistent with his case that the defendant has been intransigent.

So that takes me to CPR 13.3, which although not stated in the application notice is the Rule under which Mr Rayner must be making his application. Under that Rule:

“…the court may set aside or vary a judgment entered under Part 12 if –

(a)

the defendant has a real prospect of successfully defending the claim; or

(b)

it appears to the court that there is some other good reason why –

(i)

the judgment should be set aside or varied; or

(ii)

the defendant should be allowed to defend the claim.”

My attention is specifically drawn to the delay on the part of the applicant to make his application to set aside. CPR 13.3(2) states:

“In considering whether to set aside or vary a judgment entered under Part 12, the matters to which the court must have regard include whether the person seeking to set aside the judgment made an application to do so promptly.”

In this case the application certainly was not prompt. Mr Austen’s skeleton calculates that it took 102 days, which I think is about 14 to 15 weeks, between the defendant being served with the order of Arnold J and Mr Rayner making the application. That on any view is a long delay and I would have to be convinced that Mr Rayner has a particularly good case on the merits of these proceedings for me to set it aside or that there be some other very compelling reason to do so. There is certainly no other compelling reason and, for the reasons I have set out earlier, none of the grounds that Mr Rayner relies on in his witness statement, to set aside the order seem to me to be at all compelling and do not raise the likelihood that Mr Rayner has a good defence.

So for those reasons I dismiss his application to set aside the order.