Media Agency Group Ltd v Transport Media Ltd

This is my extemporary judgment on the trial of a claim by two companies, Media Agency Group Limited and Transport Media Limited (as claimants) against three defendants, Space Media Agency Limited, Mr Faraz Shafiq and Mr Mohammad Buksh, claim number D40MA020.

By a claim form issued in the Mercantile Court in Manchester on 13 March 2017 the claimants seek relief arising out of alleged misuse by the first and second defendants of confidential information having the character of trade secrets and belonging to the first claimant, Media Agency Group Limited, and also out of the passing off by all three defendants of the business of the first defendant, Space Media Agency Limited, as the business of the claimants.

The first claimant, Media Agency Group Limited, was incorporated on 17 September 2009 in the name of Transport Media Limited. The second claimant, Transport Media Limited, was incorporated on 7 February 2012 as Agency Media Group Limited. It was renamed on 12 March 2012 as Media Agency Group Limited. On 19 February 2013 the claimants swapped names and are now known under the names stated in the heading to the claim.

The first claimant, Media Agency Group Limited, is a provider of media planning and advertising services and trades under various names, including the name “Transport Media”. The first claimant is said to be a very successful business, with turnover for 2016 in the sum of some £9.8 million. The second claimant, Transport Media Limited, has remained dormant since incorporation.

The first defendant, Space Media Agency Limited, was incorporated on 10 October 2016. It is an advertising agency which appears to be involved primarily in transport advertising, or was at the time the proceedings were issued.

The second defendant, Mr Faraz Shafiq, who is 33 years of age, was, at the date the proceedings were issued, the sole director of Space Media Agency Limited. The second defendant owns or, at the time the proceedings were issued owned, 40% of the issued share capital of Space Media Agency Limited.

The third defendant, Mr Mohammed Buksh, who is 40 years of age, owns, or owned, 60% of the issued share capital of the first defendant.

On 11 March 2018, the second defendant, Mr Shafiq, sent an email to the claimants’ solicitor informing him that he no longer worked for the first defendant company and that steps had been taken to remove him as a director and shareholder. I was told during the course of the opening that Mr Buksh was to acquire the second defendant’s shareholding and was to replace him as the director of the first defendant company. Mr Shafiq indicated that he would, as a result, be representing himself in the proceedings.

During the course of the trial, counsel for the claimant, Mr Daniel Metcalfe, acknowledged that any goodwill in the names Transport Media and the product “Traccountable” was held by the first claimant and not by the second claimant. I find that to be the case on the evidence before me. It follows that no relief in this case will be granted in favour of the second claimant. No doubt I will hear submissions in due course as to the extent to which the second claimant should be held liable for any part of the defendants’ costs. Otherwise, the second claimant now passes out of the picture.

On 20 April 2017, the hearing of an application by the claimants for judgement in default of acknowledgement of service and of defence came on for hearing before me in Manchester. None of the defendants appeared or were represented before me. I granted judgment in default for injunctive relief and costs. My order, which was misdated 21 April and sealed on 25 April 2017, is at divider 8 of trial bundle 1.

A transcript of the extemporary judgment I delivered on that day has been obtained and is to be found at divider 15 of trial bundle 2. It sets out in detail the background to, and the nature of, this claim, and it should be read in conjunction with this extemporary judgment. In the interests of brevity, I do not propose to repeat what is set out in that judgment.

On 18 May 2017, the defendants applied to set aside my default judgment. They relied, in support, on a witness statement from their then solicitor, Moyen Ahmed of Integra Solicitors, dated 17 May 2017, and upon witness statements from each of the second and third defendants dated 23 March 2017, and upon a further witness statement of the second defendant dated 9 June 2017.

That application came on for hearing before His Honour Judge Bird on 11 July 2017. On that occasion, the claimants were represented by Mr Metcalfe (of counsel) and the defendants by Miss Cheryl Dainty (also of counsel). My order was set aside and it was replaced by undertakings given by the defendants to the court as follows: The defendants undertook to the court: (a) that they would not, until the earlier of 19 April 2018 or final determination of the claim or further order of the court, participate in any Google AdWord auctions for any of the combinations of keywords and keyword match types set out in the confidential schedule to the order, but such undertaking should not extend to any other keywords or keyword match types; (b) they would not, until the earlier of 19 April 2018 or final determination of the claim or further order of the court, use or disclose to any other person any of the combinations of keywords and keyword match types set out in the confidential schedule, but such undertaking should not extend to any other keywords or keyword match types; and (c) they would not, until the earlier of the final determination of the claim or further order of the court, use the trading style “Transport Media Agency” or the internet domain www.transportmediaagency.co.uk or any other trading style or internet domain which was confusingly similar to the claimants’ trading style “Transport Media” or domain www.transportmedia.co.uk . The confidential schedule identified 15 keywords and keyword match types and, against each, one of four match types: exact match, phrase match, broad match and modified broad match.

Paragraph 3 of Judge Bird’s order recorded that a key issue for determination in the claim was whether the alleged written agreement dated 1 February 2015 was signed by the second defendant, Mr Shafiq. The claimants had confirmed to the court that they had the original document and would make it available for inspection. The court had noted its preference for early resolution of that issue, ideally by way of joint expert evidence being obtained in advance of the costs and case management conference. At that conference, the parties would be required to explain what steps had been taken for the early resolution of that issue, including by way of obtaining expert evidence.

Procedural directions were given by Judge Bird; and the defendants were ordered to pay the plaintiffs’ costs of both the application for the default judgment and also the application to have it set aside.

A case management conference took place before Judge Bird on 20 October 2017. Both parties were represented by counsel, although their names are not identified in the relevant court order. A list of issues was approved by the court.

Paragraph 2 of the order addressed the issue of disclosure. It said that the disclosure to be given by the parties was limited to the following issues: (a) whether the defendants had used the claimants’ keywords; (b) if so, how the defendants came to use those keywords; (c) whether the terms of the consultancy agreement were binding on the second defendant and if he signed the same; and (d) whether the defendants had passed themselves off as the claimants.

There were procedural directions for disclosure, inspection, and witness statements and hearsay notices. Provision was made in the order for each party to adduce expert evidence on the forensic examination of signatures on the issue of whether the second defendant had signed the consulting agreement dated 1 February 2015, and purporting to bear his signature above the date 18 February 2015. A copy is at trial bundle 2, divider 17.

The consulting agreement was said to be made between Media Agency Group as the customer and Faraz Shafiq as the consultant. Under the heading, ‘Background’, it was recorded: (a) that the customer was of the opinion that the consultant had the necessary qualifications, experience and abilities to provide services to the customer, and (b) that the consultant was agreeable to providing such services to the customer on the terms and conditions set out in the agreement.

In consideration of those matters, and of the mutual benefits and obligations set forth in the agreement, the receipt and sufficiency of which consideration was thereby acknowledged, the customer and the consultant were said to agree as follows: Clause 1 identified the services provided. It reads:

By clause 2, the services were also to include any other tasks which the parties might agree on. The consultant thereby agreed to provide such services to the customer.

Clause 3 addressed the term of the agreement. The term was to begin on the date of the agreement and to remain in full force and effect indefinitely until terminated as provided in the agreement.

By clause 4, in the event that either party wished to terminate the agreement, that party would be required to provide 30 days’ notice to the other party.

Clause 5 provided that, except as otherwise provided in the agreement, the obligations of the consultant would end upon the termination of the agreement.

By clause 6, headed ‘Performance’, the parties agreed to do everything necessary to ensure that the terms of the agreement took effect.

Clauses 8 to 10 addressed the issue of compensation, and included provision for the customer to provide compensation to the consultant of £2,950 a month for the services rendered by the consultant, as required by the agreement.

By clause 9, the compensation was to be payable on a monthly basis whilst the agreement was in force.

Clauses 11 to 13 were headed, ‘Confidentiality’. Clause 11 provided that confidential information, described as such, referred to any data or information relating to the business of the customer which would reasonably be considered to be proprietary to the customer including, but not limited to, accounting records, business processes and client records, and that was not generally known in the industry of the customer, and where the release of that confidential information could reasonably be expected to cause harm to the customer.

By clause 12, the consultant agreed that he would not disclose, divulge, reveal, report or use for any purpose any confidential information which the consultant had obtained, except as authorised by the customer. That obligation would survive indefinitely upon termination of the agreement.

Clause 13 provided for all written and oral information and material disclosed or provided by the customer to the consultant under the agreement to be confidential information, regardless of whether it was provided before or after the date of the agreement or how it was provided to the consultant.

Clauses 14 and 15, dealt with the issue of ownership of materials and intellectual property, and provided that they should be not used by the consultant for any purpose other than that contracted for in the agreement, except with the customer’s written consent. The consultant was to be responsible for any and all damages resulting from the unauthorised use of the intellectual property.

Clause 16 provided for the return of property to the customer by the consultant upon the expiry or determination of the agreement.

It is, I think, unnecessary for me to refer to any of the other provisions of the agreement, which extended to some 5 pages.

At the end, it purported to be signed by Mr Faraz Shafiq as consultant above the date 18 February 2015.

On 15 February 2018 the claimant made an application for specific disclosure of documents by the defendants. Originally returnable at the pre-trial review before His Honour Judge Eyre QC on 16 February 2018, that application was adjourned to a further hearing before Judge Eyre on 22 February 2018. At both hearings the claimants were represented by Mr Metcalfe, and the defendants by Mr Iqbal, who was described as an employee of the first defendant in the court order.

An application to further adjourn the hearing of the claimants’ application for specific disclosure, made by the defendants, was dismissed by the judge. The defendants were ordered to give specific disclosure of documents on 7 named Google AdWord accounts belonging to the defendants.

A transcript of the whole hearing before Judge Eyre, and of his rulings, is to be found at pages 116 to 132 of the supplemental trial bundle. I was referred to various passages from this transcript during the course of the trial.

In the course of his submissions for the claimants (at pages 121 to 122), Mr Metcalfe submitted that within the defendants’ AdWord accounts there ought to be pages showing what words had been used, when they had been used, and the claimants could then match up, whether they matched the claimants’ keywords. Mr Metcalfe indicated that he was less concerned about how many clicks there had been, but the campaigns that the defendants were using with those keywords, and the use of other keywords, would show, and the dates of all that use would show, whether the week or the month after the first defendant - I think that should be a reference to the second defendant - left his employment, they were solely using the same keywords as the defendant - I think that should be a reference to the first claimant - or whether they were just using a very, very wide range of keywords.

It was submitted that the only way that the claimants could determine the use of the claimants’ keywords was if the claimants had access to the AdWords account so that they could see the extent of all of the keywords that the defendants had used from the start of their operations and whether they had just been limiting themselves to the claimants’ keywords because, if they had, then there was a strong inference to be drawn that the defendants had adopted the keywords of the claimants rather than making those, or pursuing those, keywords themselves. If the price matched, or was closely aligned, to the claimants’ pricing, then that again was said to demonstrate that the defendants had used the claimants’ confidential information, extending even to the pricing. In addition, it was said that there would be an irresistible inference that the claimants’ confidential information had been used.

In the course of his submissions for the defendants (at page 123) Mr Iqbal referred to an email, sent on the Monday, that had accepted that the 15 keywords, which were currently under the terms of the injunction had been used before the injunction. That is a reference to an email at divider 8 page 100, of the supplemental bundle. The email was dated Monday 19 February 2018, and was from Mr Shafiq, the second defendant, to the claimants’ solicitor, Mr Tom Ellis. It read:

Later on the same page (123) Judge Eyre asked Mr Iqbal whether he accepted that the keywords were used. Mr Iqbal replied: ‘Yes’. Judge Eyre said: ‘So why should there not be disclosure?’. Mr Iqbal replied: ‘We would say that that’s all the claimants need, that confirmed, the keywords have been used’.

Later, Mr Iqbal said (at page 124): ‘So that’s why we said we are happy to confirm that the 15 keywords specified in their claim had been used. We don’t accept that keywords are confidential, because all this information can be obtained direct from Google and is, in fact, common sense when a client says, “I want to advertise on a bus”’.

In reply, Mr Metcalfe (at pages 125 to 126 of the transcript) said that he thought that there had been a misunderstanding on the defendants’ part:

Judge Eyre proceeded to give his ruling. In the course of it, he referred to the fact that the defendants said, through Mr Iqbal, that they had indicated that they had used the 15 keywords, and said that confirmation of use was sufficient to remove any need for further disclosure.

Later, the key was said by Judge Eyre really to lie in relevance, and, in particular, Mr Metcalfe’s point that the order made by Judge Bird was said to have two limbs. One was how the defendants came to use the keywords; the mere acknowledgement that keywords had been used did not amount to providing information about how they had come to be used, nor did it amount to disclosure in that respect. It was said to follow, and Judge Eyre ruled, that there had been deficient disclosure.

In the event, the defendants did not comply with Judge Eyre’s order for disclosure and the claimants had to issue a further application on 12 March 2018. On 15 March 2018, representatives of the 1^st claimant and its solicitor, Mr Ellis, attended at the first defendant’s offices and inspected 15 of the defendant’s websites. The results are set out in a witness statement from one of the claimants’ witnesses, Mr Ricardo Seixas, dated 22 March 2018. Although described as his first witness statement, in evidence Mr Seixas explained that that witness statement, reporting on the results of the disclosure visit, had been prepared after a witness statement of the same date which is wrongly described as his second witness statement.

In fact, the claimants did not use the inspection for the purposes indicated by Mr Metcalfe, of seeing when, and in what circumstances, the claimants had first made use of the claimants’ allegedly most valuable keywords, or what other keywords the defendants had been using, or how much the defendants had been bidding for keywords, and how that correlated to the claimants’ pricing strategy. Rather, Mr Seixas explained that the inspection had focussed upon identifying whether prohibited keywords had been used in the period after the date of my order, 20 April 2017, in apparent breach of my default judgement or the defendants’ later undertakings.

The claimants say, in my view not entirely convincingly in the light of Mr Seixas’s oral evidence that it would have been a couple of days’ work to put the data into a form that he could analyse that the defendants, by their late disclosure, in persistent breach of court orders, had made it practically impossible for the claimants to undertake a proper and full search and analysis of the defendants’ computer data in the manner that had been indicated to Judge Eyre by Mr Metcalfe. I find Mr Seixas’s estimate - that it would have been a couple of days work to put the data into a form that he could analyse - to be more reliable then Mr Keogh’s non-expert opinion that it would have taken some 3 to 4 weeks to have analysed the defendants’ computer data from the date of its inception.

As I have indicated, by the time that inspection had taken place, the claimants had already issued an application, dated 12 March 2018, as a result of the defendants’ original failure to comply with Judge Eyre’s order for specific disclosure. That application came before His Honour Judge Davies on 16 March 2018. Paragraph 3 of Judge Davies’s order provided that there should be no order in relation to the claimants’ application regarding disclosure on the basis that the claimants were now satisfied as to the disclosure obtained. Paragraph 1 of Judge Davies’s order gave the claimants permission to file and serve, by 4pm on 23 March 2018, supplemental witness evidence in relation to (a) the defendants’ supplemental disclosure and (b) the matters addressed in the draft report of Mr Weatherhead, for which permission was not given. Paragraph 2 of that order provided that permission was given to the defendants to file and serve, by 4pm on 3 April, supplemental witness evidence in response.

Pursuant to paragraph 1 of that order, the claimants filed and served Mr Weatherhead’s witness statement of 21 March, and Mr Seixas’s two witness statements of 23 March 2018. Pursuant to paragraph 2 of that order, Mr Buksh filed and served a witness statement dated 3 April 2018. There was no further evidence from the second defendant, Mr Shafiq.

For the sake of completeness, I should record that on 2 March 2018 I dismissed an application by the defendants for specific disclosure of the claimants’ computer files. On that occasion, the defendants were represented by Mr Andrew Clark (of counsel), instructed on a direct public access basis.

The trial began at 10.30 on the morning of Monday 9 April 2018 before me. It had been listed for 3 days but, in fact, it continued for 5 days, until about 3.35 on the afternoon of Friday 13 April 2018, although it is fair to record that the court only sat between the hours of 10am and 1pm on day 3 of the trial, Wednesday 11 February 2018, for reasons entirely unconnected with the parties or this litigation.

The claimants were represented, as they had been since July 2017, by Daniel Metcalfe (of counsel) who had produced a written skeleton argument early on the afternoon of Friday 6 April 2018.

At the opening of the trial, Mr Iqbal, who had previously spoken on behalf of the defendants, applied, expressly pursuant to CPR 39.6, for permission to represent the first defendant company at the trial of the claim. He did so expressly on the basis that he was authorised by Mr Shafiq, the registered director, and by Mr Buksh, by then the de facto director; and also expressly on the basis that he was an employee of the first defendant and was authorised by the company to appear on its behalf. The company was said not to be in a financial position to afford legal representation at trial, as even a quote from direct access barristers had been in excess of £18,000. It was said that Mr Iqbal had represented the company at some of the previous hearings. Both Mr Shafiq and Mr Buksh were the defendants and would be giving evidence so Mr Iqbal could represent the company in court without preparing to give evidence.

CPR 39.6 addresses the representation at trial of companies or other corporations. It provides that, ‘A company ... may be represented at trial by an employee if – (a) the employee has been authorised by the company … to appear at trial on its behalf; and (b) the court gives permission’.

Mr Metcalfe expressly challenged Mr Iqbal’s standing to appear on the footing that he was not an employee of the first defendant company. However, in reliance on what was stated in the application, namely that Mr Iqbal was an employee of the first defendant, and with the support of Mr Shafiq and Mr Buksh, I gave permission to Mr Iqbal to represent the first defendant company.

When the second defendant, Mr Shafiq, came to be cross-examined by Mr Metcalfe, early on the morning of day 3 of the trial, Mr Shafiq said that Mr Iqbal did all the administration work at the first defendant company. He was said to have a consultancy agreement and was not an employee and was not registered for PAYE. Mr Buksh, when he came to give evidence, did not contradict any of that.

I am satisfied that the court was misled about Mr Iqbal’s status as an employee when giving permission for him to represent the company, under CPR 39.6. I am satisfied, not least from the terms of his own consulting agreement, made with the first claimant, which he had entered into following a period as an employee with the first claimant, that Mr Shafiq was fully alive to the distinction between an employee and a consultant.

Having said all that, I do have to acknowledge that Mr Iqbal has provided excellent representation for the first defendant company. All of his cross-examination of the claimants’ witnesses, his questioning of Mr Shafiq and Mr Buksh, and his closing speech would have been a credit to a junior member of the commercial bar.

After a brief opening, Mr Metcalfe proceeded to call 7 witnesses of fact for the claimant, starting with Mr Robert Weatherhead at about 11.35 on the morning of day 1, and concluding with Mr Kehoe at about 3.35 on the afternoon of day 2. None of the defendants had expressed a wish to address me in opening.

The court heard from the second defendant as a witness from about 3.50 on the afternoon of day 2 to about 10 past 12 on day 4; and then from Mr Buksh from about 12.35 to about 3.20pm on day 4.

The court did not hear any expert forensic disputed signature evidence.

The claimants’ expert, Mr Anthony Stockton, had produced one report and the defendants’ expert, Mr James McInally, had produced two expert reports on Mr Shafiq’s signature on the consulting agreement. However, in a joint expert report dated 16 March 2018, which can be found at trial bundle 2, divider 14, both experts had indicated that they were in agreement that there was “strong” evidence to show that the disputed signature on the consulting agreement between Media Agency Group and Mr Shafiq dated 1 February 2015, was a genuine signature written in ink by Mr Shafiq. As will appear, however, this was not the position that Mr Shafiq maintained when he came to give evidence.

Returning to the course of the trial, Mr Metcalfe’s closing speech lasted for about 3 hours, beginning at about 3.20 on day 4 and concluding at about 12.30 on day 5. After a short break, Mr Buksh addressed me for about 20 minutes, and then Mr Iqbal for about 50 minutes, on the afternoon of day 5. Mr Shafiq contented himself with relying on the submissions of Mr Buksh and Mr Iqbal.

Mr Metcalfe replied for about 25 minutes and Mr Iqbal then made a couple of points in response. At about 3.35 on the afternoon of day 5, I reserved judgement until 11.00 today, Wednesday 18 April 2018.

I begin my judgement with observations on the witnesses.

In closing, Mr Metcalfe submitted for the claimants that their witnesses had given credible evidence that was very straightforward, and was consistent with their witness statements. He submitted that attempts had been made to trip them up about minor points, but the main evidence that they were there to give was said to be very consistent. They were said to have a good overall knowledge of matters within their particular specialist expertise and sphere. Where their recollection and evidence had been hazy, that was said to be understandable in the context of the issues raised in cross-examination.

I accept that general analysis by Mr Metcalfe.

Mr Robert Weatherhead, who was an independent advertising consultant, had made 1 witness statement dated 21 March 2018. That was admitted pursuant to paragraph 1(b) of Judge Davies’s order of 16 March. Mr Weatherhead gave evidence for about 30 minutes. I find that he was a reliable and truthful witness whose evidence I can safely accept.

When the second defendant was cross-examined, there proved to be much in Mr Weatherhead’s witness statement with which Mr Shafiq agreed, or from which he did not expressly dissent, until paragraphs 19 to 21 of Mr Weatherhead’s witness statement were reached, with which Mr Shafiq did disagree. Insofar as there is disagreement between the evidence of Mr Weatherhead and that of Mr Shafiq, I unhesitatingly, prefer the evidence of Mr Weatherhead.

The claimants’ second witness was Mr Steven Cairney. He had made 3 witness statements dated 12 and 19 April 2017 and 8 February 2018. He is a consultant with the first claimant company. He gave evidence in total for about an hour and 45 minutes on the morning, and extending into the afternoon, of day 1.

Mr Iqbal’s cross-examination of Mr Kearney was principally directed to establishing, and exploring, the deficiencies and limitations of Mr Cairney’s evidence. I reject suggestions by Mr Buksh, in cross-examination, that Mr Cairney’s evidence was deliberately concocted to assist the claimants’ case, and that he was aware that the defendants’ disclosure had failed to support the claimants’ case that the defendants had limited themselves to using the claimants’ most profitable keywords, or had made used of the claimants’ pricing structures and information.

I accept Mr Cairney as a reliable and truthful witness.

The claimant called two short witnesses on the afternoon of day 1. Mr Steven Crawley, a Senior Accounts Director, and Mr Duncan Robertshaw, an Account Manager with the first claimant, who had made witness statements, on 16 and 15 March 2017 respectively. Each gave evidence for only about 5 minutes.

Despite Mr Iqbal’s challenges to their evidence, I accept the evidence of Mr Crawley and that of Mr Robertshaw. It provides evidence of clients confusing the first defendant and the first claimant companies.

In his cross-examination of Mr Robertshaw, Mr Iqbal had suggested that it was odd that Mr Gathani, the customer referred to, should have called Mr Sean Dunne of the first defendant when Mr Gathani already had the contact details for Mr Robertshaw. He also elicited the fact that Mr Robertshaw had never questioned Mr Gathani about his alleged contact with Mr Dunne.

I bear those challenges in mind. However, there was no evidence in response to Mr Robertshaw’s evidence from Mr Dunne, even though, according to Mr Shafiq, Mr Dunne had continued working for the first defendant until February 2018. One simply does not know whether Mr Gathani’s call to the first defendant had been prompted by any prior approach to him from Mr Dunne.

Mr Buksh, when he came to give evidence, described Mr Dunne’s words as ‘bravado’, suggesting that he might have been winding Mr Robertshaw up. However, Mr Buksh later accepted that Mr Dunne might have said what Mr Robertshaw alleges although, for whatever reason he (Mr Buksh) did not know.

I have no reason not to accept as true the evidence of Mr Crawley and Mr Robertshaw, and I do accept their evidence at face value.

In-between the evidence of Mr Crawley and Mr Robertshaw the claimants also called evidence from Janet Smith, the first claimant’s finance director. Her witness statement is dated 8 February 2018 and she gave evidence for about 25 minutes. There was a second witness statement of Ms Smith, dated 3 April 2018 (at divider 5 of the supplemental bundle) that was objected to in opening by the defendants, and, in the event, this was not relied upon by the claimants and I ignore and disregard it entirely.

Janet Smith was clearly, an honest and reliable witness who was seeking to do her best to assist the court. She was not, in fact, cross-examined about the evidence in her first witness statement, which related to Mr Shafiq’s signature of the consulting agreement and its preparation. Rather, she was cross-examined principally, about goodwill in the name Transport Media and who might be entitled to that goodwill.

The omission to challenge Mrs Smith’s evidence in relation to the consulting agreement is of particular importance in the light of Mr Shafiq’s later evidence.

As I have already indicated, Mr Ricardo Seixas gave two witness statements, both dated 23 March 2018, which were produced pursuant to paragraphs 1(a) and (b) of Judge Davies’s order of 16 March 2018. As I have indicated, it emerged that his second witness statement, which he described as his expert opinion, had been made before the witness statement described as his first, reporting upon the disclosure provided by the defendants at the offices of the first defendant on 15 March 2018.

Mr Seixas gave evidence over days 1 and 2 for a period of about 2 hours in total. I found him to be a reliable and honest witness, although at times he had some difficulty in fully understanding the questions being put to him because of apparent language difficulties.

There was, clearly, some confusion in Mr Seixas’s mind and evidence about the precise court order that he had had before when he had conducted the inspection exercise on 15 March. Since the keywords are only to be found in the orders of 20 April and 11 July 2017, I find that he had one or both of those orders before him. He also said that he had had the URL addresses of the various Google AdWord accounts of the defendants before him. It follows that he must also have had a copy of Judge Eyre’s order of 22 February 2018; and I so find.

In the course of his evidence, Mr Seixas identified the conversion rate into actual sales as the real trade secret. He described it in evidence as, ‘the most volatile variable’ which ‘could be different for every keyword’. In the course of his evidence, and in this respect varying from the evidence of Mr Kehoe, Mr Seixas did not think that someone could remember the conversion rate for all of the keywords, and he also noted that that could vary over time.

The claimants’ last witness was Mr John Kehoe, the Chief Executive Officer of the first claimant. He had made a witness statement dated 12 April 2017. He had been abroad and thus not present in court on the first day of the trial. He gave evidence for about 2 hours and 35 minutes, either side of the short adjournment on day 2, after the conclusion of the evidence of Mr Seixas.

On the morning of day 3, and after Mr Kehoe had left the witness box, and during the evidence of Mr Shafiq, the defendants sought to introduce evidence of ‘without prejudice’ discussions in order to show that Mr Kehoe had been lying in the witness box when he had denied a suggestion from Mr Buksh that the domain name “London Taxi Advertising” was anything to do with the claimant.

I refused to allow reliance to be placed on ‘without prejudice’ material for this purpose. Apart from being, in my view, inadmissible in evidence, it would have involved recalling Mr Kehoe to the witness box for further cross-examination, and this might only have served to reveal an honest mistake of recollection on the part of Mr Kehoe (although I acknowledge this as mere speculation).

I do find Mr Kehoe to have been prone to exaggeration in some aspects of his evidence. He was guilty of this when he said that it would have taken 3 to 4 weeks to analyse the defendants’ computer data from the inception of its accounts. I prefer the evidence of Mr Seixas, which I find irreconcilable with this.

I find that Mr Kehoe also exaggerated when he said that Pay Per Click costs had increased tenfold when the defendant had entered into the market although, to be fair to Mr Kehoe, he acknowledged his error and exaggeration in answers to questions put by me at the end of his evidence.

Having acknowledged those exaggerations, I do find that Mr Kehoe has not deliberately lied to support the claimants’ case and, exaggeration apart, I find his evidence to be reliable where supported by the evidence of the claimants’ other witnesses or the inferences properly to be drawn from other evidence in the case which I find to be reliable.

In the course of cross- examining Mr Kehoe, Mr Iqbal had made the point that the claimants had sought specific disclosure from Judge Eyre expressly on the basis of seeking to find out how the defendants had come to use the allegedly most valuable keywords of the claimants. It was suggested to Mr Kehoe that the claimants had in fact analysed the defendants’ computer data and had not found the “smoking gun” (as Mr Iqbal put it) that the claimants had hoped to find. Mr Kehoe’s response was that if it was not the smoking gun the claimants had hoped to find, then the defendants would have been showing the claimants and the court the information. I find force in this point made by Mr Kehoe. I reject the suggestion from the defendants that the claimants had analysed the defendants’ data and concluded that it did not support their case. I accept the claimants’ evidence and case that they did not analyse the defendants’ computer data in the manner that Mr Metcalfe had suggested to Judge Eyre that they would. I accept that they confined their inspection to ascertaining whether there had been any use of the prohibited keywords after 20 April 2017. I accept that they did this because of the defendants’ acknowledgement that they had used all 15 keywords.

I consider that it would have been helpful to the court for the claimants to have undertaken the analysis that Mr Metcalfe had indicated that they wanted to undertake. I acknowledge that the claimants may have thought that it would not be practicable to undertake that analysis in the timescale provided by Judge Davies’s order for further evidence, although there is no reason why the claimants should not have embarked upon the exercise and then sought to adduce the evidence at a later stage. However, I find there is nothing sinister in the fact that they did not undertake the analysis; still less do I accept the suggestion of the defendants that they had undertaken the analysis but it had not produced the hoped-for result from the claimants’ point of view.

So, in summary, I accept the claimants’ witnesses as reliable and truthful, albeit, in the case of Mr Kehoe as prone to slight exaggeration in certain minor respects.

I am afraid that the same cannot be said for the evidence of Mr Shafiq. He had made 3 witness statements, dated 23 March and 9 June 2017 and 8 January 2018. The latest, and most recent, of those witness statements was unsigned in the form in which it appeared in the trial bundle. However, Mr Shafiq confirmed its accuracy at the beginning of his evidence and indicated, during the course of cross-examination, that he stood by its contents.

In closing, Mr Metcalfe submitted that the second defendant’s evidence was presented in a very dishonest fashion. I am afraid, after having listened to Mr Shafiq in the course of cross-examination over some four and three-quarter hours, spread over the course of three court days, beginning at about 3.50 on the afternoon of day 2, and concluding at about 10 past 12 on day 4, that that analysis is, regrettably, correct.

As I have already indicated, Judge Bird’s order setting aside the default judgment on 11 July 2017 had identified as a key issue for determination in the claim the question whether the alleged written consulting agreement dated 1 February 2015 had been signed by Mr Shafiq. In an email dated as early as 22 November 2016 from Mr Shafiq to the claimants’ then solicitors, Aughton Ainsworth, and responding to that firm’s letter of 18 November 2016, Mr Shafiq had expressly disputed that he had ever had a contract with the first claimant. In order for him to respond to the points raised in the letter, he had asked the solicitor to forward the signed copy of the contract he had been referring to. In a further email to the claimants’ solicitor, Mr Tom Ellis, dated 16 April 2017, Mr Shafiq indicated that on and for the record he had 2 points he would like to make clear. The first was that Mr Shafiq believed that the contract that Mr Ellis had sent was a forgery. Furthermore, simply stating email sender and recipient was said to look like an intentional attempt by Mr Ellis to misrepresent the truth. Unless Mr Ellis was to forward proof that the contract had actually been emailed as stated, Mr Shafiq took the opinion that Mr Ellis was complicit in some sort of fraudulent activity. The second of the points made by Mr Shafiq concerned the Web domain name Transport Media Agency and said that that was no longer in use and would not be used in the future. It was said that the defendants had abandoned it due to poor performance and in preference of a higher performance domain. That element will become relevant later in this judgment.

Paragraph 10 of the defence, which was verified by statements of truth bearing Mr Shafiq’s signature in two places, first on behalf of the first defendant company, and then on behalf of himself, and was also verified by a statement of truth from Mr Buksh, reads as follows:

It is fair to say that at paragraph 8(ii) of the defence, it was admitted that it was an implied term of Mr Shafiq’s engagement as an independent contractor to the first claimant that he was prohibited from misusing the first claimant’s trade secrets.

In Mr Shafiq’s witness statement of 9 June 2017, at paragraphs 9 and 10, Mr Shafiq first and foremost brought to the court’s attention his firm belief that the document relied upon by the first claimant as his consultancy agreement did not bear his signature. He referred to the copy relied on and said that the signature was not his as he did not sign the agreement. He said that all of the defendants had instructed a handwriting expert to examine the signature on the consultancy agreement and to compare it with his signature “and that the expert had concluded that the signature was not mine”.

The handwriting expert’s report relied upon in that witness statement was the same as that referred to in the defence, and was a report from Margaret L Webb, a certified document examiner. That report is dated on its face 26 March 2017 and addressed to Mr Shafiq at the first claimant’s address on the 12th floor of Blue Tower Media City, although I do note that the instructions referred to in the report are said to be dated 5 May 2017.

At paragraph 10 of the same witness statement, Mr Shafiq also refers to the email to the claimants’ solicitor of 16 April 2017 (from which I have previously quoted) in which Mr Shafiq stated, soon after receipt of the copy contract, that it did not bear his signature, and his belief that it was a forgery. That witness statement materially assisted the defendants in having the default judgment set aside.

In Mr Shafiq’s unsigned witness statement of 8 January 2018, which Mr Shafiq confirmed at the beginning of his evidence as true, at paragraph 2 there was a denial that Mr Shafiq had drafted the alleged consultancy agreement. It was further denied that he had signed such a document, nor had he provided a signed copy of the contract to either Lee Daintith, who is the founder and person behind the claimant companies, or to Janet Smith. Paragraph 4 of that witness statement disputed the authenticity of the emails that Janet Smith had sent. It was noted that the claimants had failed to provide a forensic report concerning the authenticity of the signed contract.

I have already referred to the concurrent opinion of the joint experts dated 16 March 2018 to the effect that there is strong evidence to show that the disputed signature on the consulting agreement is a genuine signature written in ink by Mr Shafiq. No doubt in the light of that, on 28 March 2018 Mr Shafiq sent an email to the claimants’ solicitor, Mr Ellis, confirming that the defendants would no longer be pursuing the signature issue any more. When Mr Shafiq went into the witness box to give evidence, I gave him the opportunity to correct anything in any of his witness statements before confirming their truth. Mr Shafiq did not avail himself of that opportunity, and he also expressly confirmed the truth of the witness statement of 8 January 2018.

In answer to questions from Mr Iqbal, Mr Shafiq said, variously, that he had not signed the consulting agreement, that he did not recall signing it, and that he possibly did sign it but did not remember doing so. He agreed that it was his signature on the basis only of the expert evidence. In cross-examination by Mr Metcalfe, Mr Shafiq said that he did not recall drafting the consulting agreement or signing it. In answer to a question from the bench, Mr Shafiq said that he did not recognise the signature in the consulting agreement as his signature. He maintained that he still believed the facts in the defendants’ pleaded defence to be true, and he accepted that he knew the implications of signing a false statement of truth. At that point in his evidence I gave Mr Shafiq a warning, in accordance with the guidance provided by the Court of Appeal in the case of Khawaja v Popat [2016] EWCA Civ 362 at paragraph 28, that a person who might be accused of contempt of court, like the defendant in a criminal trial, had the right to remain silent, although Mr Shafiq should be aware not only of that right but also of the risk that adverse inferences might be drawn from his silence.

Notwithstanding that warning, Mr Shafiq indicated that he still stood by the contents of paragraph 10 of the pleaded defence. He indicated that he did not agree with Ms Smith’s witness statement, even though this had not been challenged at all in cross-examination. Various emails were put to Mr Shafiq supporting what Miss Smith had said in her witness statement. There was an email dated 18 February 2015 (at page 208A) from Mr Shafiq to Miss Smith, with a copy to Lee Daintith, expressly headed as ‘Subject Service Contract Agreement’. That read: ‘Hi Janet, Spoke to Lee very briefly, when you were getting out of the lift. Lee told me to give you the contract; I have made the changes we talked about yesterday’. Secondly, there was an exchange of emails between Mr Shafiq and Miss Smith on 22 May headed, ‘Re: contract’. Miss Smith asked Mr Shafiq if she could have a copy of his contract. She asked if he had it on a Word document and explained that she wanted to plagiarise it, if that was okay. Mr Shafiq’s response, on the same day, was: ‘Absolutely, it’s on my home computer, I will send it to you tonight or tomorrow if that’s okay’. Miss Smith replied, ‘Brill ta’. On 25 May Mr Shafiq sent an email to Miss Smith headed ‘Subject invoices and contract templates’. It said: ‘Hi Jan, Hope you are well, apologies for the delay, please see attached three invoices in different colours and my contract word file. Any questions please let me know’. One of the attachments is described as, ‘consultingagreement.docx’. The subsequent email was about the invoices. Mr Shafiq said that he did not recall those emails or signing the consultancy agreement.

In closing, Mr Iqbal accepted that the second defendant’s evidence on this issue was inconsistent. At the very best, from the point of the view of the defendants, I am bound to conclude that the second defendant’s recollection of events concerning the entry into the consulting agreement was wholly unreliable. I completely accept the evidence of Miss Smith, supported, as it is, by contemporaneous reliable and entirely clear and persuasive emails. However, I am satisfied that Mr Shafiq was in fact deliberately lying about the drafting and the signing of the contract and the subsequent email exchanges. Mr Metcalfe, in closing, described Mr Shafiq’s evidence on this issue as, ‘incredible’, and I agree.

I simply cannot accept that, in November 2016, Mr Shafiq could honestly have disputed that he had ever had a contract with the first claimant. The consulting agreement had been signed in February 2015, 21 months earlier. Mr Shafiq had, clearly, been involved in its drafting. He had provided a copy from his own computer to Miss Smith in May 2015, only some 18 months earlier.

Mr Iqbal sought to justify Mr Shafiq’s position and evidence on the basis that the letter from the claimants’ then solicitors, to which Mr Iqbal had originally responded by his email of 22 November, had included a reference to their clients’ non-compete policy. Mr Iqbal’s point was that that non-compete policy was not included within the consulting agreement.

I do not accept this explanation or justification for Mr Shafiq’s evidence. The letter from Aughton Ainsworth, for the claimants, of 18 November had set out in full the terms of clauses 11 to 13 of the consulting agreement, which had been identified as being dated 1 February 2015. It was only in addition to those provisions that Mr Shafiq also remained subject to the first claimant’s non-compete policy, which was then set out. I am satisfied that Mr Shafiq was deliberately lying when he disputed that he had ever had a contract with the first claimant and in denying that he had ever signed the consulting agreement, or had ever been involved in its drafting, or had ever produced a copy to Miss Smith.

Mr Iqbal also submitted that, if the second defendant had really believed that he had signed a consultancy agreement, he must have realised that he would be found out by expert forensic handwriting evidence. However, as Mr Iqbal also submitted in closing, Mr Shafiq’s belief had originally been supported by the opinion of not one but two forensic experts in handwriting analysis. In the light of that, I am satisfied that Mr Shafiq must have thought that he would get away with his lie.

Mr Shafiq said, in cross-examination, that he had obtained an expert report, presumably from Margaret Webb, in March 2017. It was that document that had been annexed to the pleaded defence. There were then two further reports obtained from Mr McInally in October 2017 and January 2018 which had supported Mr Shafiq’s position. I am satisfied that Mr Shafiq must have known that those reports were inaccurate. Mr Shafiq is clearly an intelligent man, as is apparent from his CV, which is in evidence as part of the third exhibit to his witness statement of 8 January 2018 (at trial bundle 2, divider 10, at pages 360 to 361).

Therefore, for those reasons, I am satisfied that Mr Shafiq was deliberately lying about the consulting agreement. I must, of course, ask myself whether he was lying to bolster a good case or because the defendants’ case is itself a lie. As Judge Bird had recognised as early as 11 July 2017, in his order of that date, the signature to the consulting agreement was a key issue in the case. Mr Shafiq maintained the lie even in the face of contemporaneous, conflicting documentary evidence, in the face of a joint opinion from forensic handwriting experts as to the genuineness of his signature, and in the face of the witness statement of Miss Smith and the documents which she exhibited. Moreover, the second defendant himself has acknowledged, in his email of 28 March (at supplemental bundle, divider 8, page 103) that he was no longer pursuing the signature issue.

In my judgement, Mr Shafiq’s unreasonable persistence in the lie, instead of simply throwing up his hands and accepting his error, leads me to conclude that he has no regard for the truth and no real confidence in the merits of the defendants’ case or defence.

Paragraph 14(b) of the witness statement of the defendants’ former solicitor, Mr Moyen Ahmed, (at supplemental bundle, divider 1, page 5) stated that the claim form had not been left at the correct place since Blue Tower was not a place where the first defendant carried on its activities with a real connection to the claim. The first defendant’s activities were said to be the conceiving and implementing of online market strategies. That work was said to take place at Mr Shafiq’s home, and the home of consultants, and Blue Tower was said to have no connection with the claim. In that regard, I have already mentioned, in passing, that Miss Webb’s handwriting report was addressed to Mr Shafiq at the Blue Tower address.

I am entirely satisfied that the evidence given by Mr Ahmed, on behalf of all three defendants, who had supplied the information for the witness statement to him, was misleading; and, from the point of view of the defendants, I am satisfied that it was deliberately so. The evidence about the Blue Tower address was contrary to the information on the first defendant’s website, it was contrary to the information produced by use of the Google search engine, and it was contrary to the information in the first defendant’s own emails. At paragraph 7 of his witness statement of 9 June 2017, Mr Shafiq expressly confirmed Mr Ahmed’s evidence dealing with the issues relating to service. I am satisfied that that misleading evidence assisted in obtaining the setting aside of the default judgment. Again, that demonstrates that Mr Shafiq is prepared to say anything, whatever its truth, in support of the defendants’ case.

Mr Shafiq agreed with Judge Eyre’s finding, on 22 February 2018, that the defendants’ disclosure had been defective. It is clear that the defendants had been fighting tooth and nail to avoid giving full and proper disclosure until very shortly before the trial. They also sought to muddy the waters by pursuing their own unsuccessful application for specific disclosure from the claimant. I have to ask myself why? The fact is that the defendants have never produced any evidence of the keywords they were using themselves. They produced no evidence of when they first used them, how they first identified them for use, how much they had bid for them, and how much they had actually paid to be able to use them as part of their advertising campaigns. The inference I draw from such non-disclosure is that such evidence would not have supported the defendants’ case.

During the course of his evidence, I formed the clear impression that the second defendant would say anything to advance or to support the defendants’ case. Insofar as there is any conflict between the evidence of the second defendant and the claimants’ witnesses, I, unhesitatingly, prefer the evidence of the latter because I find the second defendant to be an unreliable witness of fact, and also a deliberately dishonest witness.

I also bear in mind the terms of the consulting agreement, and, in particular, the scope of clause 1 and the provisions as to confidential information in clauses 11 to 13. Amongst the services to be provided by the second defendant were Pay Per Click Management Services, including, but not limited to, the Pay Per Click campaign set up and ongoing account optimisation. In the light of those provisions, and Mr Shafiq’s involvement in the claimants’ project. I cannot accept his evidence that he did not know where the claimants’ money was being spent, on what advertising categories and on what keywords and keyword match types.

I turn then to consider the evidence of Mr Buksh. He had made two witness statements, dated 22 March 2017 and 3 April 2018. He gave evidence for about one hour and 45 minutes, either side of the short adjournment, on day 4 of the trial.

I found him to be argumentative and questioning, in cross-examination. He frequently strayed, sometimes some distance, from the questions being put to him. At times, it seemed to me that he assumed the role of an advocate arguing the case for the defence, as, for example, when he said that he thought that a letter from BRIFFA Intellectual Property and Information Technology Lawyers to the directors of the first claimant company, dated 26 April 2017 (at pages 108 to 111 of divider 9 of the supplemental bundle) was: ‘Very convenient for the claimants’.

I counsel myself against falling into the error of assuming that because I cannot accept the evidence of Mr Shafiq, I should also reject the evidence of Mr Buksh. Nevertheless, I cannot regard him as a reliable witness, or as a witness of truth.

I find Mr Buksh to be a shrewd and intelligent businessman.

The domain names in evidence for transportmediaagency.com (which, together with the domain name for transportmediaagency.co.uk, was registered by Mr Buksh on 1 October 2016) indicates that Mr Buksh is associated with over 1,100 other domain names. In evidence, Mr Buksh claimed ownership of some 2,500 domain names in that account, and he said that he had multiple accounts as well. Mr Buksh told me that whenever he registered a domain name, he was mindful of issues over goodwill and passing off. He claimed that he had registered the Transport Media Agency domain names off his own bat. He said that he had undertaken a quick Google search on the name Transport Media before registering the domain name. He said he had seen that it was the name of a dormant company. He also said that he was aware that, according to the Transport Media website, its owner had 200 clients. Mr Buksh said that he undertook “cyber- squatting” domain names which might become valuable, and that he was not aware that that was illegal. He made the point that he had registered the domain name “Traccountable” on 6 October 2016, at a time when that product was under development and not in use. The “Traccountable” trademark had in fact been registered by the first claimant on 13 June 2014, with effect from 13 March 2014. Mr Buksh indicated that he registered descriptive domain names because a business in that area might want to buy that domain name in the future.

I am satisfied that Mr Buksh’s knowledge of the names Transport Media and Traccountable was clearly derived from Mr Shafiq. I am satisfied that Mr Buksh, just as much as Mr Shafiq, was responsible for advancing a false case of non- or defective service in support of a successful application to set aside my default judgment. Indeed, in cross-examination, Mr Buksh had accepted that he had received the claim form at the time at the Blue Tower address, but said that he had put it to one side because he was travelling abroad for the weekend.

I am satisfied that Mr Buksh has persistently resisted the disclosure of the defendants’ computer data. I am satisfied that he did so because he realised that it would not assist the defendants’ case for it to come into the claimants’ hands.

I find that Mr Buksh decided to set up a media advertising agency, using the claimants’ business model, with the assistance of knowledge that Mr Shafiq had derived while acting for the first claimant as a consultant because Mr Buksh saw it as a lucrative potential business opportunity.

In short, I accept the submissions of Mr Metcalfe, at paragraph 41 of his written skeleton, that the defendants’ credibility is nil.

First, Mr Shafiq was dishonest regarding his signature of the contract, when he had, in fact, drafted it, and accused Miss Smith of producing false emails. Secondly, and in support of their application to set aside the default judgment, the defendants falsely stated that the first defendant did not carry on business from, and had no sensible connection with, Blue Tower, in circumstances where the first defendant’s own website and other material confirmed that it did. Thirdly, as will become apparent, I am satisfied that, in certain respects, the defendants have breached either the court order of 20 April 2017, or the undertakings that they gave to the court, by making use of certain of the prohibited keywords and match types.

It is now almost one o’clock, I am about to turn to my conclusions so I think that is a convenient moment to break off this judgment, and I will resume at two o’clock.

I now proceed to set out my conclusions.

First, despite his denials and equivocations, I am satisfied that Mr Shafiq drafted and signed the consulting agreement which purports to bear his signature at divider 17 of trial bundle 2, and that he is bound by his terms. In the light of this, it is strictly unnecessary for me to consider the position in equity, or at common law, independently of contract.

As Megarry J observed, in the case of Coco v A N Clark (Engineers) Ltd [1968] FSR 415 at page 419: ‘In cases of contract the primary question is, no doubt, that of construing the contract and any terms implied in it’. Megarry J went on to consider the three elements that are normally required if, apart from contract, a case of breach of confidence is to succeed: ‘First the information itself must have the necessary quality of confidence about it. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly, there must be an unauthorised use of that information to the detriment of the party communicating it’. Megarry J went on to consider the first of these elements: that the information must be of a confidential nature. He observed that however confidential the circumstances of communication, there could be no breach of confidence in revealing to others something which was already common knowledge. However, he observed that that must not be taken too far. Something that had been constructed solely from materials in the public domain might possess the necessary quality of confidentiality, for something new and confidential might have been brought into being by the application of the skill and ingenuity of the human brain. Novelty was said to depend on the thing itself, and not upon the quality of its constituent parts. Indeed, often the more striking the novelty, the more commonplace its components. Counsel was said to have demurred to the concept that some degree of originality was requisite; but whether it was described as originality, or novelty, or ingenuity, or otherwise, Megarry J thought that there must be some product of the human brain which sufficed to confer a confidential nature upon the information.

I am satisfied that the first two of the elements identified by Megarry J in the Coco v Clark case is satisfied on the facts of the present case.

In his written skeleton argument, at paragraphs 29 to 31, Mr Metcalfe submitted that there were two aspects to the confidential information. The first claimant engaged the second defendant and conducted its analysis in order to ascertain: (a) the most profitable advertising categories, and (b) within those categories, the most profitable keywords and match types.

The most profitable advertising categories were identified as (a) bus advertising, (b) train and tram advertising, and (c) railway advertising. The most profitable keywords and match types within those categories were as set out in the schedule attached to the particulars of claim, albeit an expanded list of 74 keywords and match types was also provided at page 37 of trial bundle 1.

By way of summary, clause 11 of the consulting agreement was said to define confidential information as having three elements. First, it should be reasonably considered as the property of the first claimant. Secondly, it should not generally be known in the first claimant’s industry. Thirdly, it should reasonably be expected to cause harm to the first claimant if released. Three examples were given: accounting records, business processes and client records. Clause 12 of the consulting agreement was said to preclude use of confidential information after the termination of the contract.

Mr Metcalfe went on to cite, in relation to the equitable duty of confidentiality, the observations of Megarry J in the Coco & Clark case which I have already cited.

Mr Metcalfe submitted that the confidential information plainly fell within the definition of confidential information under the consulting agreement and also at common law. He identified various factors which he set out in 11 subparagraphs in paragraph 33 of his skeleton.

At paragraph 35, he submitted that whilst the various keywords were said to be prima facie obvious, in reality, and as a result of a huge number of combinations, the best performing keywords and match types were not obvious at all. That was said to be particularly the case when considering the keywords and match types that generated the most profit by way of converted leads. Mr Metcalfe indicated, at paragraph 36, that different types of users might input different types of search terms, and he provided an example as to why that might be the case.

He pointed out that a phrase such as ‘advertising on a bus’ was not a combination of words that would very obviously attract a high position, but in fact it was third on the first claimant’s list of most profitable keywords and match types in respect of bus advertising.

It seems to me, in addition and in relation to the same category, that “bus advertising” would seem to be a more profitable keyword type than “bus advertisement”, but in fact “bus advertisement” is ranked first in the hierarchy of most successful and profitable keywords identified by the first claimant.

Mr Metcalfe submits that the information has a quality of confidence that reaches even the high threshold of a “trade secret”, and so must fall within clause 12 of the consulting agreement, and also within the equitable duty.

Mr Metcalfe referred me to another decision of Vice-Chancellor Megarry, as he had by then become, in the case of Thomas Marshall (Exports) Limited v Guinle [1979] Ch 227. At page 248, beginning at letter B, Vice-Chancellor Megarry said: ‘That it was far from easy to state in general terms what is confidential information or a trade secret’; and he cited his earlier observations in the case of Coco v Clark. He then gave the specific instance of costs and prices, which were not generally known, as potentially constituting trade secrets or confidential information.

Looking at the matter as a question of principle, Vice-Chancellor Megarry very tentatively indicated that four elements might be discerned as being of some assistance in identifying confidential information or trade secrets which the court would protect:

Vice-Chancellor Megarry recognised that information which did not satisfy all of those requirements might be entitled to protection as confidential information or trade secrets, but he thought that any information which did satisfy them must be of a type which was entitled to protection.

Mr Metcalfe also cited from the work Geary on Breach of Confidence at paragraph 6.14, under the heading, ‘Business Secrets’:

I am satisfied that the first claimant has, on the evidence that has been put before me, made out its allegations at paragraphs 39 and 40 of the amended particulars of claim. These alleged that the information derived from the project, and the resulting analysis, informed the group’s marketing strategy, including its auction strategy, and formed the basis of all the sales lead generation for the Media Agency Group. That information was confidential information, having the character of trade secrets belonging to Media Agency Group.

I am satisfied, on the evidence, that the first claimant has made out its case that the 15 keywords specifically identified in Part 1 of the schedule to the amended particulars of claim were the best performing keywords in terms of conversion rates to sales and profitability.

In his closing address, Mr Buksh sought to challenge this by reference to the document at page 26 of trial bundle 1, forming part of Part 2 of the confidential schedule to the amended particulars of claim.

I am not satisfied that this document bears the significance that Mr Buksh sought to ascribe to it. In any event, as Mr Buksh expressly accepted, that point was never put to any of the claimants’ witnesses. The reason for that was that, as Mr Buksh accepted, the point had only occurred to him overnight between days 4 and 5 of the trial.

I do accept the defendants’ case that the use of multiple websites and domain names is not a trade secret. Mr Cairney accepted as much. Mr Weatherhead accepted that the first claimant’s business methods and processes were not unique. Mr Kehoe accepted that the first claimant’s business structures could not be a trade secret.

I acknowledge that the claimant cannot legitimately prevent any of the defendants, including the second defendant as a former employee and consultant of and to the first claimant, from setting up a media advertising agency in direct competition with the first claimant. However, what the first claimant can legitimately complain about is the exploitation by the second defendant, as its former employee and consultant, through the first defendant, of the confidential information he had compiled and analysed with a view to getting the first claimant’s business into a place of prominence at the top of the listings on Google AdWords so as to achieve a competitive edge by attracting the most business at the lowest advertising cost. Mr Seixas likened the particular keyword match types to a fishing net which one casts upon the waters of the Web.

I am satisfied, on the evidence of Mr Weatherhead, Mr Cairney and Mr Seixas, that the project in which the second defendant was engaged as a consultant involved identifying the particular keywords and match types which produced the greatest return on investment for the first claimant by converting search clicks into completed sales. It involved minimising advertising expenditure by optimising the use of keywords and match types so as to generate the most conversions to sales from search clicks at the lowest possible cost per click. I am satisfied that the knowledge so derived constituted confidential information, both for the purposes of the consulting agreement, and in equity and at law, independently of contract, in accordance with the principles established in the authorities such as Coco & Clark.

I adhere to what I said, at paragraph 25 of my judgment on the application for judgment in default:

I reject the submission advanced by Mr Iqbal in closing that there is no evidence that the second defendant had that knowledge. In my judgement, it is clearly established on the evidence. It was, indeed, in order to acquire just such knowledge that Mr Shafiq was retained as a consultant, expressly charged with providing the services identified in clause 1 of the consulting agreement.

Whilst the first claimant cannot properly complain about legitimate competition, it can properly complain about the misuse by the defendants of its confidential information in order to obtain a head start, or springboard, for the first defendant’s new competing business.

In closing, Mr Iqbal relied upon the fact that the second defendant’s reports of the results of his labours were not in evidence. There was said to be no evidence that he knew which keywords and match types were the most profitable. As to that, I would observe, first, that the terms of clause 1 of the consulting agreement make it clear that that was the whole purpose of engaging him as a consultant to the first claimant, and that the acquisition of such knowledge and confidential information was part of the services which Mr Shafiq was required to perform. Secondly, I note that the provision of such business reports was not included in the list of disclosure issues identified in paragraph 2 of the order made by Judge Bird at the case management conference. That order was, of course, made at a time when the defendants were represented by counsel.

I am also satisfied that the first claimant has made out its case that the defendants have misused the claimants’ confidential information so as to give the defendants a head start in its new competing business. Paragraph 49 of the amended particulars of claim alleges, amongst other things, that Mr Shafiq and Space Media Agency have replicated what is described as the “unique business model” adopted by Media Agency Group to win and build its business as an advertising specialist across every available form of media and, in addition, that they have made unlawful use of the confidential information set out in Schedule 1 to the amended particulars of claim in promoting and marketing the business as Space Media Agency.

In the light of the evidence, I would not accept the adjective ‘unique’ as applied to the claimants’ business model, and I am not sure that it was engaged in every available form of media advertising. However, apart from that, I am satisfied that those allegations have been made out.

I acknowledge Mr Iqbal’s submission, advanced both in cross-examination of the claimants’ witnesses and in closing, that the first claimant has produced no evidence of any downloading by the second defendant, or any printing out by him, of any data from the claimants’ sales force platform or any other confidential data source. I acknowledge Mr Seixas’s point that it would not be possible for someone to keep all the particular conversion rates for particular keywords and match types in his or her own head. However, I am satisfied that it would have been possible for someone like the second defendant, and with his particular expertise and experience, to recall at least some of the most profitable keywords and match types in his own head. I am also satisfied, on the balance of probabilities on the evidence before me, that the second defendant made some record, whether in writing on paper, or on some other medium, of the most profitable keywords and keyword match types, in particular advertising categories. In addition, that he used that confidential information in starting up the first defendant’s new competing business.

Mr Iqbal pointed out that no computer data evidences the defendants’ use or misuse of the first claimant’s confidential computer data. On the other hand, I accept the point made by Mr Kehoe that, if it would have assisted the defendants’ case, the defendants could have produced evidence of how they had identified and bid for particular keywords and keyword match types which the first claimants were alleging that the defendants had misused.

The defendants say that they placed reliance on third party tools on Google Keyword Planner and on information provided by Google. I do not accept this evidence or that submission. In answer to questions from the bench, Mr Shafiq confirmed that the third party software had to be paid for on a subscription basis. He told the court that such software had been purchased in about December 2016 or January 2017, although he then backtracked a little and said that it was in the early days of incorporating the business, and maybe a month afterwards. However, the fact is that the defendants have produced no evidence of any expenditure on third party software in the early days of the first defendant’s business to justify their assertion that it was employed in identifying the keywords and match types and advertising categories on which to bid.

The defendants relied upon an exchange of emails with Google on 31 May 2017 (at divider 6, pages 318-9 of trial bundle 2). By an email to the second defendant a representative of Google called Tom Pepper attached a selection of keywords for the three accounts going live the following week, and said that he was looking forward to speaking to Mr Shafiq on the Friday. It is worthy of note that that email and material were sent after the application was made to set aside the default judgment, and formed part of Mr Shafiq’s evidence in support of that application. It is noteworthy that there is nothing earlier to show any reliance being placed by the defendants upon similar communications in order to formulate the defendants’ advertising strategy. In any event, I find that the third party tools and Google Keyword Planner are wholly inadequate to enable the defendants to have worked out which keyword and match types were the best performing in particular advertising categories, and on which the defendants should focus their bids, their advertising and their expenditure. Google Keyword Planner provides some basic tips for building the best keyword list and helps the reader to lay the groundwork for a successful advertising campaign, as the relevant literature states. However, it does not even begin to supply the level of detail which I am satisfied was provided by the claimants’ project, in which the second defendant was engaged as a consultant. Google Keyword Planner gives ideas but not specifics. In particular, it does not look at or analyse customer behaviour in relation to particular keywords and keyword match types in terms of the rate of conversion into sales.

In their defence, at paragraph 32(i), the defendants assert that the first defendant has never bid on (I think) 6 (although only 5 are enumerated) of the keywords appearing in part 1 of the claimants’ confidential schedule. It is an implicit acceptance that they bid on the 9 others.

I have already referred to the defendant’s open acceptance, shortly before and also at, the hearing before Judge Eyre on 22 February 2018 that the defendants had used all 15 of the claimants’ asserted most valuable keywords. At trial, that was said to be a pragmatic decision on the part of the defendants to move the case on. When giving his evidence and responding to cross-examination on this issue, I found the second defendant nonchalant in his attitude towards that acknowledgement. The second defendant’s attitude in evidence was that it did not matter whether he had used 5 or 12 of the 15 prohibited keywords since the defendants had clearly used some of them. Ultimately, and in answer to questions in, effectively, re-examination by Mr Iqbal, the second defendant stated that he knew for a fact that he had used 12 of the prohibited most valuable keywords.

My analysis of the keyword checklist produced by Mr Seixas (at pages 228 to 233 of trial bundle 2) indicates that 10 of the 15 most valuable keywords were present on the Space Media Agency website, and that a further keyword was present on two other websites examined by Mr Seixas, so that that analysis provides evidence that a total of 11 keywords were used. However, and for reasons that I find surprising, and which were not explained in evidence, Mr Seixas’s analysis did not extend to the Transport Media Agency website. Of the four keywords which did not appear on any of the websites that were examined, only two of these, numbers 13 and 50 in Judge Bird’s order, appear to have been identified at paragraph 32(i) of the defence.

The fact is that at least 12 of the 15 keywords and match types are acknowledged as having been used by the second defendant; and I am satisfied that at least this number had been used by the defendants. I am satisfied also that they were used on the basis of knowledge derived by the second defendant from his engagement as a consultant by the first claimant, and not by the use of the defendant’s own independent work and efforts.

During the course of the hearing, I was invited by the claimants to find that the defendants had used the prohibited words in breach either of the injunction granted by me on 20 April 2017 or the later undertakings given by the defendants on 17 July to Judge Bird. I am satisfied that it is appropriate that I should accede to this invitation. Such a finding is clearly relevant, not only to both the credibility and the credit of the defendants, but also to the perceived importance to the defendants of the continuing use of the keywords and keyword match types in question. However, on the first day of the trial, 9 April, the claimants issued an application to commit the defendants for breach of the undertakings. I was conscious that different standards of proof would apply to a finding of breach for the purposes of this trial and for the purposes of a committal application. I was also conscious that (1) the defendants might want to supplement their existing evidence for the purposes of a committal application as opposed to trial, and (2) that the defendants might want, for the purposes of a committal application, to obtain legal representation and advice. I, therefore, make it clear that if any committal application were to be pursued, it should not be listed before me. That was acknowledged and accepted by Mr Metcalfe for the claimants.

I emphasise: (1) that I am determining this issue of breach on the civil standard of the balance of probabilities, and not to the criminal standard of proof beyond all reasonable doubt, and (2) on the basis of the evidence that is presently before me, which may be capable of being supplemented by the defendants at some future committal hearing.

On that basis, I am satisfied, to the civil standard of the balance of probabilities, that the claimants have established either a breach of the court order of 20 April 2017 (and issued on Tuesday 25 April) and/or a breach of the undertakings given to the court on 11 July 2017.

Mr Shafiq had accepted, in cross-examination, that he had read my order by the end of April 2017. The evidence of Mr Seixas’s screenshots relates to the period from 20 April 2017 and therefore includes a space of some 10 days before the defendants may have been alerted to the terms of my default judgment. The defendants had received Mr Seixas’s evidence on or about 23 March; they had, as a result of Judge Davies’s order, an opportunity to put in evidence in response by 3 April. No evidence in response was put in by Mr Shafiq. Mr Buksh, however, did take the opportunity to put in a further witness statement of 3 April, although that did not address this aspect of Mr Seixas’s evidence.

There were 11 screenshots in total, although screenshot 2 does not appear to have been intended to establish any breach of the order or undertakings. Screenshots 5 and 9 (at pages 243 and 251) did not relate to prohibited keywords and they fall to be disregarded. Screenshots 8 and 11 (at pages 249 and 255), showing 2 clicks and 6 clicks respectively, may. from the timeline, indicate that screen clicks were made before the court order was received by the defendants. I am, therefore, not satisfied that breaches have been proved in relation to screenshots 8 or 11.

Screenshots 1 and 3 (at pages 235 and 239) show no timeline. Screenshot 1 refers to only 8 clicks. In the light of that, I am not satisfied that a breach has been established in relation to that keyword and keyword match type. Screenshot 3 (at page 239) contains no timeline but does refer to 47 clicks and 1,271 impressions. That suggests that the relevant keyword was still being used after the end of April 2017; but the matter was not put sufficiently clearly in that regard to the second or third defendants and therefore I make no finding of breach in relation to those keywords. Screenshots 4 (at page 241), 6 (at page 245), 7 (at page 247), and 10 (at page 253) do, however, seem to me to establish a breach of the court order and/or the undertakings. From the timelines on those screenshots, and also from the number of clicks and impressions, I am satisfied that breach has been established, on the balance of probabilities and in the absence of any contrary evidence (which it would have been open to the defendants to produce), consistently with the terms of Judge Davies’s order, and on the basis that the information in question is within their own means of knowledge.

Screenshots 7 and 10 relate to the same keyword, at number 8 in Judge Bird’s order, albeit on different websites. Screenshots 4 and 6 relate to numbers 1 and 3 in Judge Bird’s order. There are, therefore, breaches established in relation to 3 different keywords from the website. In addition, there is a series of emails at pages 104 to 108 of the supplemental bundle. On 13 July, Mr Keogh sent an email to Google asking it to confirm whether an exact match type was being used on the keyword ‘bus advertising’, on 3 websites, Space Media Agency, UK Transport Advertising Agency and London Transport Advertising, that were acknowledged by the defendants to be three of their websites. The response was that at least one of the companies was using an exact match. The keyword in question is at number 2 in Judge Bird’s order. There are thus breaches established, on the balance of probabilities, in relation to 4 of the keywords, at numbers 1, 2, 3 and 8.

The undertakings given to Judge Bird, and my earlier order, prohibited two things: first, by paragraph (a) participation in Google AdWord auctions. The evidence does not seem to me to establish breach of that limb of the order or undertaking. However, paragraph (b) prohibited use of the keywords and keyword match types. I am satisfied that that limb of the order or undertaking has been shown, to the civil standard, to have been breached in relation to keywords 1, 2, 3 and 8. Therefore, I do find, for those reasons, breaches of the use element although, as Mr Metcalfe himself acknowledged, the screenshots do not show when campaigns were being run, and thus when bidding was taking place. They are only evidence of use and not participation in campaigns.

I am satisfied that the use of the prohibited keywords and match types has caused some damage to the claimant. In cross-examination of Mr Kehoe, Mr Iqbal made the points: (1) that there was no documentary evidence that the defendants had been pitching their Pay Per Click advertising bids only slightly higher than those of the claimant, and (2) that there was no documentary evidence to support the proposition that Pay Per Click costs had dropped to their former level since the defendants had stopped running their own advertising campaign in competition with the claimants. However, Mr Shafiq accepted, in cross-examination, that there would be an increase in costs of bidding because there was another competitor in the market. In answer to questions from the bench at the end of his evidence, Mr Kehoe made the obvious point that even a minimal overbid would be likely to provoke a bidding war. Both of those propositions, it seems to me, are common sense, and I accept them.

In closing, Mr Iqbal placed reliance on a document (at page 127) to show that the claimants’ Google advertising spend had been increasing anyway. In reply, Mr Metcalfe rightly pointed out that that point had not been put to any of the claimants’ witnesses, and they had had no opportunity to comment on that point. I accept the claimants’ evidence at pages 36 to 37. I am satisfied, that at least some damage has been caused to the 1^st claimant by the defendants’ misuse of the confidential information.

I am satisfied that, as at the issue of the claim form, and in both April and June of 2017, when the matter was before the court on the application for the default judgment, and when the undertakings were given as the price of having it set aside, the first claimant was entitled to injunctive relief in the terms of my order and in the terms of the undertakings given to Judge Bird, on a springboard basis, until 18 April 2018.

The principles for the grant of springboard relief are well-established and were not in dispute before me. I adopt the summary in the judgment of Haddon-Cave J at paragraphs 239 to 247 of his judgment in the case of QBE Management Services (UK) Ltd v Dymoke and Ors [2012] EWHC 80 (QB).

During the course of the hearing, I raised the question whether, if I found that there had been a breach of the order or undertakings, injunctive relief should be extended beyond the original date of 18 April 2018 because of established breaches. Mr Metcalfe could not find any authority on this point. He submitted in closing that it could only be answered by reference to general principles. He took me to the observations of Haddon-Cave J on the length of springboard relief at paragraphs 284 to 285 of his judgment in the QBE Management Services case. Mr Metcalfe submitted that the court must take all the circumstances into account, including any established breach of a court order or undertakings. He invited the court to extend the springboard relief for a further year., that is to say until 18 April 2019.

In this context, it seems to me that the third of the principles to be applied by the court in assessing the length of a springboard identified by Haddon-Cave J is relevant: ‘... it is relevant to look at the period of time over which the unlawful activities have, in fact, taken place. The relationship of this period, with the length of any springboard relief, is, however, kinetic not linear’. I also bear in mind the fifth of Haddon-Cave J principles that: ‘... the nature and length of the ‘springboard’ relief should be fair and just in all the circumstances’.

Having regard to the length and the timing and period of the claimants’ project, the date when the second defendant left his consultancy role with the claimant, the time and extent of the proved breaches, and he requirements of fairness and justice, in all the circumstances of the case I do not consider that it would be appropriate to extend any springboard relief beyond the original date of 18 April 2018. It seems to me that any advantage to the defendants, even from the established but relatively minimal post injunction/undertakings use does not justify the extension of springboard relief beyond a date some 2 years after the end of Mr Shafiq’s term as a consultant. Since it is now 16 April 2018, it does not seem to me that it would be appropriate to grant any further injunctive relief to the claimants; but I make it clear that they were entitled to injunctive relief at the time the claim was issued, at the time the default judgment was entered, and at the time it was set aside.

In relation to the claim for breach of confidential information, the claimants seek, in addition to injunctive relief, an inquiry as to damages and/or equitable compensation and/or an account of profits for the unlawful use of that confidential information.

Mr Metcalfe submitted that, at present, the first claimant is unable to elect between remedies, and has no knowledge as to the defendants’ profit or its own loss. Therefore, the monetary claim requires further evidence and a further hearing for assessment. In closing, Mr Iqbal advanced detailed criticisms of the claimants’ estimate of increased Pay Per Click advertising costs by reference to documents in the trial bundles. He submitted that those documents revealed inconsistencies and anomalies. Those matters were not fully explored with the claimants’ witnesses and, in any event, they are properly a matter for accounts and inquiries, which I will order.

I turn then to the claim in passing off.

I do not accept the defendants’ evidence that it was Mr Buksh who first suggested setting up a digital media advertising agency, only after Mr Shafiq had already been engaged by Mr Buksh through his recruitment company. In evidence, the second defendant said that he had been in discussions about this business opportunity maybe three weeks in advance of the incorporation of the first defendant on 10 October 2016, although, earlier in his evidence, Mr Shafiq had said that the suggestion to set up a media advertising agency came a couple of months after his first association with Mr Buksh. What we do know is that the tradeandmediaagency domain names co.uk and .com were both acquired by Mr Buksh on 1 October 2016, and he acquired the ‘Traccountable’ domain name on 6 October 2016. No disclosure was given by the defendants about precisely how, when, in what circumstances, and on what basis, Mr Buksh and Mr Shafiq first met and began associating and working together.

I am satisfied that Mr Shafiq’s unilateral and unforeshadowed decision not to return to work as a consultant for the first claimant after 26 April 2016 - which, I note, would appear to be in apparent breach of clause 4 of his consultancy agreement, requiring a written notice period to be given of 30 days - was taken with a view to setting himself up in business as a digital - which Mr Shafiq described as a posh word for PPC - advertising agency in competition with the claimant, either with Mr Buksh or, if and when a suitable opportunity presented itself to him.

I do not accept that it was Mr Buksh who first suggesting setting up such a digital media advertising agency. I am satisfied that the suggestion of this must have come from the second defendant. I am satisfied that they used the claimants’ confidential information to set up the first defendant’s Google AdWords account and advertising campaigns.

Although not forming part of the relief claimed by the first claimant, because there was no express, contractual provision preventing solicitation or enticement of existing employees of the first claimant, paragraph 49 (i) of the amended particulars of claim alleges that Mr Shafiq and Space Media Agency had solicited/enticed the following three employees of Media Agency Group to join Space Media Agency: Mr Sean Dunne, an account manager, Mr Craig Smith, a senior designer, and Mr Adam Galton, a web designer. Paragraph 30 of the defence admits that all three of the individuals then worked for the first defendant, although any suggestion of unlawful or improper solicitation or enticement was denied. Mr Dunne was said to work in the capacity of a self-employed contractor, and Mr Galton and Mr Smith as employees. Mr Galton was said to have been employed by the first claimant and then by a health group, an entity in respect of which Mr Lee Daintith had an interest, followed by a third party company, and that it was only after Mr Galton had left that third party company that he had commenced working for the first defendant. The inference from that is that the other two individuals joined directly from the first claimant.

Mr Cairney’s second witness statement, at paragraphs 6 and 7, asserted that, aside from the employees of the first defendant who had been solicited from the first claimant, the first defendant only had two other employees listed as working for it. They were Mr Des Fletcher and a Natalie Dean. Mr Cairney backed that up by providing copies of the first defendant’s website and LinkedIn profiles for two other persons identified as working for the first defendant. Mr Cairney’s evidence was that those two other individuals were, in fact, taken from publicly available media sources and were represented as working for the first defendant, when in fact they were not. There was no challenge to that part of the claimants’ evidence. Mr Shafiq said in evidence that Mr Des Fletcher had been recruited as a consultant during the first week that Space Media Agency was in business. Thus, the bulk of the first defendant’s staff had been formerly working, or acting as consultants, for or to the first claimant company.

Mr Metcalfe addressed the claim for passing off at paragraphs 42 to 45 of his written skeleton. To maintain an action for passing off, in the first instance the first claimant had to evidence goodwill in the mark “Transport Media”. Thereafter, the court would consider whether there had been deception, and whether the first claimant had been caused damage. He referred me to observations of Jacob LJ in the case of Phone4U Ltd and Another v Phone4U.co.uk [2006] EWCA Civ 244, reported at [2007] RPC beginning at page 83.

Jacob LJ, at paragraph 10, summarised the law on passing off by reference to an earlier judgment of Lord Oliver in the Jiff Lemon case:

Jacob LJ summarised the three questions in terms of: (a) reputation, i.e. goodwill, (b) misrepresentation, and (c) damages or its likelihood.

Mr Metcalfe also took me to further passages in Jacob LJ’s judgment. Those passages were at paragraphs 21, 16-17, 27 and 80. Mr Metcalfe submitted, in reliance on paragraph 21, that if there was evidence of actual confusion, a very descriptive Mark might cause such confusion. Paragraphs 16 and 17 were said to show that it was all a question of degree, and the fact that a name was descriptive was only one element to be taken into account. Paragraph 27 addressed the law on passing off in relation to domain names, and was said to establish that the registration of a domain name of a well-known company was an actionable passing off. Paragraph 80 was said to demonstrate that:

In the present case, there is no allegation of trademark infringement and therefore I need to consider that aspect of the case no further. However, I am satisfied, by reference to the Phone4U Ltd case, and the authority cited in it of British Telecommunications plc v One in a Million Ltd and Others [1999] 1 WLR 903, a copy of which was also put before me, that registration of a domain name is capable of amounting to an actionable passing off.

Mr Metcalfe submitted that the first claimant had provided clear evidence of goodwill in the name “Transport Media”. The first claimant had originally been incorporated with that name, and it attracted, and continued to attract, significant business through a website with that name. Mr Metcalfe acknowledged that the claim should have been one brought by the first claimant alone, and that the second claimant had been included only on a belt and braces basis. Mr Metcalfe submitted that, considering all of the facts set out in relation to breach of confidence (and which I have accepted in the course of this judgment), it was plain that Mr Buksh had registered, and Space Media Agency Limited had used, the website Transport Media Agency in order to take advantage of the first claimant’s goodwill in the name Transport Media. Moreover, the first claimant had produced evidence of actual confusion in the manner I have already accepted. Mr Metcalfe submitted that that actual confusion had caused damage to goodwill because consumers were not sure as to which entity they were dealing with. The damage to goodwill was further evidenced by reference to the first defendant’s actual prospective customers acquired through the website, which business ought to have been directed to the website of the first claimant. Mr Metcalfe placed reliance, not only on the evidence of Mr Robertshaw and Mr Dunne, but also the letter (at page 108 of the supplemental bundle) dated 26 April 2017 to the directors of the first claimant company from BRIFFA Intellectual Property and Information Technology Lawyers, written on behalf of their client, Exterion Media UK Limited. That letter was said to evidence a particularly dangerous potential consequence of the defendants’ passing off. It included allegations that an advertisement and an offer by the first defendant, which had appeared to the writer’s client to emanate from the first claimant, were misleading and unlawful and, potentially, the subject of legal proceedings in relation to unlawful acts, both past and future.

I accept these submissions.

Mr Metcalfe refers, at paragraph 46, to the defendants’ pleaded response to the passing off claim. The first is a denial of the existence of goodwill. At paragraph 40, it is denied that Transport Media could have acquired a reputation or goodwill in the provision of advertising in modes of transport, or been associated with a website in any meaningful way, since it was a dormant company. It is further denied that the first claimant had any goodwill in the name or trading style of “Transport Media”. Secondly, whilst, at paragraph 41 of the defence it was admitted that the first defendant had acquired, and also used, the transportmediaagency.co.uk website, it was asserted that the first defendant had ceased using that domain name on or around 10 April 2017, allegedly due to ‘poor performance’. Paragraph 42 denied false representation and, in any event, denied that there had been any deception of, or confusion on the part of, the clients or the public. In particular, it was said that the Transport Media Agency website in no way resembled the Transport Media website. Mr Metcalfe submitted that the defendants were, plainly, wrong about the existence of goodwill. He submitted that the discontinuation of use did not absolve historic passing off, and he said that the explanation for discontinuation - that the website was performing poorly or, as Mr Metcalfe put it, ‘not attracting much business’ - was incredible. Mr Metcalfe submitted that the more likely explanation for the discontinuance of use of the website was that the claimants’ claim had put the defendants on notice, not only as to their unlawful conduct, but as to the fact that it was being pursued. Mr Metcalfe submitted that the level of resemblance between the two websites was immaterial because it was the use of the first claimant’s trading name, Transport Media, that particularly gave rise to the claim for passing off and which created confusion.

I accept all of those submissions, which follow on from my previous findings.

Mr Metcalfe also drew particular attention to paragraph 65 of the amended particulars of claim and the defendants’ pleaded response thereto. At paragraph 65, it was said that ‘Relevant to the motive and/or intention of the defendants was their acquisition of domains containing the name ‘Traccountable’, which was an invented word applied by the first claimant to a product which it was currently developing, and in respect of which it had registered a trademark’. The response to that, in paragraph 44 of the defence, was simply to require the claimants to prove paragraph 65. As Mr Metcalfe pointed out, that was not a proper response by way of the pleading of a defence in the light of CPR 16.5(1) (b), which requires a defendant, in his defence, to state which allegations he is unable to admit or deny but which he requires the claimant to prove. Mr Metcalfe, rightly, pointed out that this was something which the defendants were able to admit or deny, and which they therefore were not entitled to require the claimants to prove.

In paragraphs (vi), (vii) and (viii) of the prayer for relief in the amended particulars of claim, the first and/or second claimants claim injunctive relief in relation to the trading style of “Transport Media Agency”, the Internet domain name “Transport Media Agency” and the style and domain name ‘Traccountable’, or any similarly confusing or deceptive style or title, and damages for passing off. In his skeleton argument, at paragraph 49 Mr Metcalfe points out that, whilst the first and third defendants are no longer presently operating the website Transport Media Agency, they have not provided any undertaking in the future not to do so. In those circumstances, it is submitted that injunctive relief is appropriate.

Again, I accept those submissions. I find the claim in passing off proved, and the first claimant is entitled to relief in relation thereto.

Therefore, for those reasons, expressed at perhaps inordinate length and somewhat inelegantly in the context of an oral judgment, I uphold the claim of the first claimants, in relation both to confidential information and passing off, and I will direct that judgment is entered accordingly in terms of an order to be prepared by Mr Metcalfe and which I will amend and approve.

Therefore, that concludes this judgment.