Spire Healthcare Holdings v E-Spire Group Ltd & Ors

HIS HONOUR JUDGE HACON: This is an application for summary judgment. The claimant is a holding company of one or more other companies which together run around 38 private hospitals in this country under the name Spire Healthcare. The business dates from 2007 when 25 BUPA Hospitals were acquired and rebranded; since then further hospitals and clinics have been added to the group.

The claimant owns a number of trade marks, including: UK trade mark number 2450869. This is a series mark filed on 20 June 2007 and it is a series of three word marks, all three being the word “Spire”. In the first mark the word is in block capitals, in the second with an upper case initial “S” and then lower case “pire” and in the third is “spire” all lower case. It is registered, amongst other things, in class 44 for the following: medical services, hospital services, dentistry services, nursing care services, convalescent home services, nursing home services, rest home services, outpatient services, health and medical information services, medical research services, medical health or fitness assessment services, massage and therapy services, injury assessment and treatment services. I think it is sufficient if I stop the list there.

The second trade mark relied on today by the claimant is UK trade mark number 2474024A. This is for the words “Spire Healthcare” and it was registered on 4 December 2007 under class 44 in respect of the same services as UK mark 2458969. Thirdly, there is UK mark 2475276, consisting of the words “Spire Hospitals”; its specification includes in class 44 the same services in relation to which the previous two trade marks are registered.

There is a fourth trade mark I should mention briefly. It is UK trademark 31151453. This is again a series mark for two words: first of all, the word “Spire” upper case and, secondly, the word “spire” lower case. The application for this mark was filed on 24 February 2016 and it is granted in relation to services in class 35, including employment agency and recruitment services. This was referred to in argument as the “recruitment trade mark” and I will come back to it in a moment.

The claimant claims goodwill in its business of healthcare services associated with the name “Spire”.

The businesses of the first and second defendants date from September 2013. Both are recruitment consultancy businesses; in other words, they recruit staff which are then provided on a temporary basis to corporate clients. Both the first and second defendants operate in Shropshire, Stafford and North Wales under the trading name “ESpire”.

As I understand the position, until October 2015 the first defendant recruited and provided staff. At least a company called E-Spire Limited, which may or may not be the same company as the first defendant, recruited and provided staff, mostly shelf fillers, to the retail sector. S ince October 2015 that part of the business has been operated by another company, E-Spire Retail Limited, which is not one of the defendants.

The second defendant provides temporary staff, to care homes and also I think to companies which provide care services to patients in their own homes. To date at least, according to the evidence of the third defendant, Mr Bolton, this has not included staff

The claimant alleges that use of the E-Spire name by the first and second defendants has infringed its trade marks and has led to passing off those businesses as being connected with the business of the claimant. In relation to the trade marks, the claimant pleads infringement under section 10(1), section 10(2) and section 10(3) of the Trade Marks Act 1994. Helpfully today Mr Edenborough, who appeared for the claimant, focused on the alleged infringement pursuant to section 10(2) and to some degree pursuant to section 10(1). More specifically, he did not urge me to consider the allegations under section 10(3) or passing off. There was plainly no intent to resile from those allegations, they may be pursued at a trial, but they add nothing so far as the application today for summary judgment is concerned.

The particulars of claim were filed on 1 September 2016 and served on 5 September

To deal with the counterclaim briefly, it is for the revocation of the recruitment mark mentioned earlier. Since Mr Edenborough did not press infringement of the recruitment mark for the purposes of today’s application, I can leave the counterclaim to one side.

The substantive defences advanced are first of all that the services provided by the defendants are neither identical to those in relation to which the three principle trade marks relied on are registered. Secondly that there is no likelihood of confusion in relation to the respective services within the meaning of section 10(2) of the 1994 Trade Marks Act.

In addition, two further defences were mentioned. The first is pursuant to section 11(2)(a) of the 1994 Act, namely that the first two defendants are using their own name and such use is in accordance with honest practices in industrial or commercial matters. As to that, Mr Cregan did not push the defence very hard, it seems to me for good reason. If I were satisfied that the defendants infringed the trade marks pursuant to section 10(1) or section 10(2), I can see no grounds either pleaded or set out in the evidence to suggest that such use would be in accordance with honest practices in industrial or commercial matters.

The second extra defence is under section 11(3) of the 1994 Act. The defendants rely on their local goodwill. This may or may not provide a good defence in relation to the recruitment mark, but cannot do so in relation to the three marks relied on by the claimant today because they were filed at a date before the defendants started trading.

I turn to the law. The principles to be applied in relation to an application for summary judgment were set out by Lewison J as he then was in Easyair Ltd (t/a Openair) v OpalTelecom Ltd [2009] EWHC 339 (Ch). Those principles have since been twice approved by the Court of Appeal, once in AC Ward & Son v Caitlin (Five) Ltd [2009] EWCA Civ 1098 and again more recently in Mellor v Partridge [2013] EWCA Civ 477, at paragraph 3:

“John and Frank applied for summary judgment on all the claims made against them. That application came before Beatson J (as he was then) who summarily dismissed some of the claims, but refused to dismiss others on the summary basis. Both sides now appeal. Our task is not to decide whether the claimants are right. Our task is to decide which parts of the case (if any) are fit to go to trial. If I may repeat something I have said before (Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch), approved by this court in AC Ward & Son v Catlin(Five) Ltd [2009] EWCA Civ 1098):

‘The correct approach on applications by defendants is, in my judgment, as follows:

i)

The court must consider whether the claimant has a

"realistic" as opposed to a "fanciful" prospect of success:

Swain v Hillman [2001] 1 All ER 91;

ii)

A "realistic" claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8]

iii)

In reaching its conclusion the court must not conduct a

"mini-trial": Swain v Hillman

iv)

This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents:

ED & F Man Liquid Products v Patel at [10]

v)

However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No

5)

[2001] EWCA Civ 550;

vi)

Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group

Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 63;

vii)

On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers

Ltd v TTE Training Ltd [2007] EWCA Civ 725."