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Judgment Approved
Mr Recorder Douglas Campbell QC:
Introduction
This is an action in respect of alleged passing off. The Claimant is a trade association which was incorporated on 25 July 1991 and which represents members of the removals and storage industry. The First Defendant is a company which was incorporated on 2 May 2001 and carries on business in the provision of removal and storage services. From 20 April 2006 until 25 June 2010 it was a member of the Claimant. The Second and Third Defendants (“Mr Burns” and “Mr Sampson” respectively) are both directors and 50% shareholders of the First Defendant.
The action was commenced by claim form dated 29 th July 2014. The Particulars of Claim, which ran to 13 pages and contained 14 Annexes, made a number of points. For instance it alleged that the Claimant was the owner of a very substantial and valuable goodwill in the names The national guild of removers and storers , the guild , and NGRS (“the Names”) when used in relation to removal and storage services. It also alleged that various advertisements relating to the Defendants’ removal and storage services which the Claimant discovered in March and April 2013 amounted to passing off: see ibid at [23].
The Defence was served on 5 October 2014. It made a number of admissions, including the following (see [14] thereof):
“ … it is admitted that the Claimant has built up a substantial goodwill in the name ‘National Guild of Removers and Storers’ when used in connection with a trade body operating in the removals and storage industry and it is admitted that such goodwill is owned by the Claimant. It is admitted that members of the public, when seeing that name used in connection with removals and storage services would believe that the person supplying those services to be subject to some arrangement involving the Claimant.”.
However the Defence denied that any of the advertisements complained of amounted to passing off: see ibid at [23].
The case management conference was heard by HHJ Hacon on 6 May 2015. By that time, as recorded in the case management conference order, the Defendants had expressly accepted that the Claimant was the owner of goodwill and/or reputation in all of the Names. The issues identified for trial were as follows:
“1) Do any of the following acts amount to passing off by the Defendants and each of them?
The use of the Names, and each or either of them, in the advertisements on the following websites: