Shard Financial Media Ltd v Blue Moon Group Ltd & Anor

This is an application by the claimant, Shard, for summary judgment. Shard is a publisher and organiser of events relating to the financial sector. The first defendant, Blue Moon, is also a publisher of magazines, I believe, in the same sector. The second defendant, Mr Dugdill, is the sole director of Blue Moon. The dispute concerns a UK trade mark, which takes the form of words "Credit Today". It is registered for magazines and newsletters, amongst other things. The trade mark is currently registered in the name of Blue Moon. Shard seeks an order for the assignment of the mark from Blue Moon to Shard and other related relief. Today Jonathan Hill appeared for Shard; Denise Mcfarland for Blue Moon and Mr Dugdill.

There is no dispute about the law regarding summary judgment, which was summarised by the Court of Appeal in Mellor v Partridge [2013] EWCA Civ 477, approving what had been said by Lewison J (as he then was) in Easyair Ltd. v Opal Telecom Ltd. [2009] EWHC 339 (Ch), in particular para.13 of that judgment. Ms Mcfarland also drew my attention to the judgment of Mr Stone, sitting as a Deputy High Court Judge, in Montreux Capital Management UK Ltd. v Godden [2018] EWHC 495 (Ch), in particular paras.25, 43, 49 and 50. I do not understand any of the points there made to be disputed by Mr Hill.

I should set out some of the background. In October 1998 Shard (which then traded under of name of Athene Publishing Ltd.) began publishing a magazine with a title "Credit Today". On 18 February 2008, Shard filed an application, number 2479716, for the words

Shard's case is that the alleged oral agreement of 8 September 2011 also contained an implied term. The Particulars of Claim state as follows:

I will return to the defendants' case regarding this alleged oral agreement in a moment, but first I will continue with the agreed chronology of events. On 8 September 2011, Mr Dugdill signed a form TM16 in respect of Blue Moon's trade mark application. I should explain that form TM16 is a form used by the IPO. The form is entitled "Application to record a change of ownership". It is used by parties who wish the register of trade marks to record that ownership has passed from one party to another, or sometimes it is used by parties who wish the register to record the correct name of a trade mark where it is said that the register incorrectly records that another party owns the trade mark.

On 27 October 2011 the IPO recorded the two oppositions as having been withdrawn, following requests from Mr Dugdill on behalf of Blue Moon, and by Shard's solicitors. On 11 November 2011 both trade mark applications were therefore granted by the IPO, and on 30 December 2011, following a request from Shard, the two trade marks were merged, resulting in the merged trade mark number 2537778, which is the trade mark at issue in the dispute today. Following this there was a period of about three and a half years during which little happened. Then, on 16^th June 2015, Mr Dugdill filed an application to have the register rectified on the basis that Blue Moon should be recorded as the proprietor of the merged trade mark. On 15 February 2016, the hearing officer of the IPO issued a decision dealing with Mr Dugdill's application. The hearing officer set out her summary of the evidence that she had received in support of the application from Mr Dugdill and responses filed on behalf of Shard:

Section 24(3) of the Trade Marks Act 1994 reads as follows:

Both parties appear to accept that discussions took place with a view to ending the aforementioned opposition proceedings by way of an assignment. Mr Dugdill accepts that he signed the form TM16 in order for the registry to record a change of ownership. The submission from APL that there is no legal requirement for an effective assignment to be in place prior to the filing of a form TM16 is nonsensical. The whole point of a TM16 is to record something and that something must surely have taken place. If there was any agreement between the parties regarding assignment, it was an oral one. That Mr Dugdill signed the form TM16 does not elevate this action into a written agreement of an effective assignment. It is merely a request to record a change of ownership. It is clearly not enough to satisfy the requirements of Section 24(3). The application for rectification succeeds."

In April 2016 Shard changed the name of its magazine, Credit Today, to Credit Strategy. According to Shard, this was due to a potential action for infringement of the trade mark by Blue Moon, since Blue Moon was now the proprietor.

I turn to the defendants' account of relevant events. It differs in particular in that, there was no oral agreement reached on 8 September 2011, and for that reason the entirety of Shard's claim falls away. The account of this pleaded in the defence was as follows. I pause to mention that in this court, the parties must set out all facts and arguments on which they rely. Paragraph 22 of the defence states:

I should also record what was said in para.29, which was in the following terms:

For the purposes of today's application, there was evidence filed by Mr Dugdill, and he says this in para.20(c) of his witness statement dated 14^th August 2018:

With this in mind, Ms Mcfarland today identified four matters on which the defence rests. She submitted that each of these matters, if established, would lead to a real prospect of the defendants succeeding at trial, and that in relation to none of them could I conclude today that there was no real prospect of that matter being established at trial. The first argument raised was that there was no consideration passing from Shard to Blue Moon pursuant to the alleged agreement of 8 September 2011, and in consequence there could have been no binding agreement. The second was that the negotiations which are said to have led to a binding agreement were nothing more than an agreement to agree; there was no binding contract pursuant to those negotiations. Thirdly, even if there was a binding oral agreement, the implied term relied on was not in fact part of the agreement. Finally, that even if there was a binding contract which contained the implied term relied on by Shard, this did not lead to the trust on which Shard relies. I will take these in turn.

Before that, I should say that there is some contemporaneous evidence of what happened. On the day that Shard says the oral agreement was concluded, 8 September 2011, Mr Dugdill sent an email to Rachael Lewis, an officer of the IPO, following the negotiations relied on by Shard. This email was copied to Shard's solicitors. It reads as follows:

I take the first point raised by Ms Mcfarland, namely that there was no consideration. It seems to me that there plainly was consideration. It was the usual consideration that arises when parties settle a legal dispute, namely that pursuant to the withdrawal of claims on each side, both sides are relieved of any risk as to costs and the time consumed that would otherwise have happened had the litigation continued. Specifically, in this case, Blue Moon was relieved of any risk as to costs and expenditure of time that would have happened had it lost the two oppositions.

I turn to the next point raised, namely that the negotiation led only to an agreement to agree. Ms Mcfarland made two arguments in this regard. She referred to the email I have quoted above from Mr Dugdill, sent at 4.09 on 8 September. Ms Mcfarland submitted that where Mr Dugdill said "I am currently sorting out the paperwork to the agreement", that meant nothing more than he was still thinking about whether there should be an assignment at all, and that if he decided there should be an assignment, then at that stage the paperwork would be completed. There are a number of difficulties with this. First of all, Mr Dugdill in his evidence does not say that this was what he meant by "I am currently sorting out the paperwork" in the relevant email. This email was specifically pleaded in the particulars of claim. It was responded to in the defence. Mr Dugdill must have clearly understood that it formed a central part of Shard's case, and yet he has not suggested that he had the understanding which Ms Mcfarland now advances. I take the view that I should not give any significant weight to alleged views held by Mr Dugdill which he has not stated for himself, particularly in circumstances where he had every reason to state such a view, either in the defence which he signed or in the evidence which was filed for this application. Moreover, in his email timed at 21.04 on 8 September 2011, he said that he had made a start on the form TM16, and asked Withers & Rogers to complete their client's side of the form.

In my view, it is fanciful to suppose that Mr Dugdill was anything other than clear in his mind that he had reached a binding agreement with Shard to settle the two oppositions. It seems to me equally clear that there was a meeting of minds between the parties in that regard, and also a meeting of minds that Blue Moon's application should be assigned to Shard. That meeting of minds led to a binding oral agreement reflected in the email sent at 16:09 p.m.

I turn to the third argument, namely that even if there was an agreement as claimed by Shard, that agreement did not contain the implied term on which Shard relies. I have accepted that there was a binding oral agreement that Blue Moon's application should be assigned to Shard. It seems to me that necessarily, in order to implement that agreement, Blue Moon was required to take all steps to effect such an assignment, in particular to effect a legal assignment in compliance with section 24(3) of the Trade Marks Act 1994. Ms Mcfarland argued that this made no sense because it conflicted with the position between the parties regarding goodwill which subsisted in relation to the name Credit Today. I was

The fourth point raised by Ms Mcfarland was that even if there was a binding contract and there was an implied term, this did not create the trust upon which Shard now relies. I should briefly restate Shard's case on the trust. Shard says that because of the oral agreement of 8 September 2011, it became the equitable owner of the trade mark. Thus, Blue Moon held the trade mark on trust for Shard from 8 September 2011. Therefore, Shard was entitled to call for the assignment of the legal interest in the trade mark and has been entitled so to do at any time since 8 September 2011 and remains so entitled. It seems to me that since I am satisfied that there was an oral agreement as alleged, it follows that Shard is the equitable owner of the trade mark and is entitled to call for a legal assignment.

That does not finally deal with the matter, however, because Ms Mcfarland had a further argument. She said that if a trust otherwise would exist, it could not be relied upon by Shard in the event that Shard did not have clean hands. There were no clean hands in the present case because, as was common ground, Shard had failed to provide a draft legal assignment of the trade mark from Blue Moon to Shard when it should have provided such an assignment or such a draft following the oral agreement. It is certainly common ground that that should have happened and appears to have been an oversight by Shard's solicitors. This argument is not pleaded, and clearly should have been if Blue Moon is to rely on it. But perhaps more substantively I do not accept that a failure to enter into a legal assignment constitutes a lack of clean hands. All it constitutes is a mistake on the part of Shard's solicitors.

It therefore seems to me that there is no real prospect of the defendants succeeding in relation to any of the four or possibly five points they now raise, and therefore I will grant summary judgment.