The National Guild of Removers and Storers Ltd v Milner (t/a Intransit Removals and Storage) & Ors
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Intellectual Property Law
- Contract Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
NGRS sued Mr. Milner for trademark infringement, copyright infringement, and passing off, alleging unauthorized use of their logo in advertisements and on a website. Mr. Milner denied responsibility, claiming third-party actions. The court found no infringement or passing off by Mr. Milner, nor any agency relationship with the third parties. Mr. Milner's counterclaim for revocation succeeded in part, with certain trademarks being revoked due to non-use. The court concluded that there was no bad faith in the trademark applications and that the use of trademarks by licensees was genuine.
Judgment
Judge Hacon :
The Claim
The Claimant (“NGRS”) is a trade body which represents and provides services to its members, firms and individuals in the removal and storage business. The Defendant (“Mr Milner”) runs a removal and storage business in Trowbridge, Wiltshire.
Between September 2008 and November 2010 Mr Milner was a member of NGRS. He entered into a contract with NGRS which took the form of rules of membership. One of the benefits of membership of NGRS is a licence to use the NGRS name and logo in association with the member’s business, in particular in advertisements for that business. The logo has taken a number of forms over the years. The most recent, used since 2006, has been registered by NGRS as UK Trade Mark No. 2425258 (“TM 258”).
During his time as member Mr Milner used the NGRS name and its logo in the form of TM 258 to promote his business. Following a dispute with NGRS Mr Milner’s membership came to an end on 30 November 2010.
After November 2010 advertisements for Mr Milner’s business featuring the NGRS name and logo continued to appear in the 2010/11 editions of Bath Yellow Pages and the Bath Thomson local directory. NGRS threatened proceedings but these were settled by a payment of £6,000 from Mr Milner to NGRS.
Since then two further matters have emerged, leading to these proceedings. First an advertisement promoting Mr Milner’s business appeared in the 2012-13 edition of the Salisbury Thomson Local Directory. I will refer to this as “the Salisbury Advert”. It featured the NGRS logo in the form of TM 258. NGRS allege:
Infringement of TM 238
Infringement of NGRS’s copyright in the logo registered as TM 238
Passing off by Mr Milner in the form of a misrepresentation that he was still a member of NGRS.
The second bone of contention is the website www.wiltshireremovals4less.co.uk (“the Website”). This website was for Mr Milner’s business and it stated among other things “We have a range of memberships with various schemes and associations, such as … National Guild of Removals”. It also indicated that the business was “Ombudsman accredited and inspected”. NGRS allege that although its name was not correctly stated on the website, what was there was close enough to represent continuing membership of NGRS. Further, the reference to the ombudsman would be wrongly taken to mean that Mr Milner’s business continued to benefit from the ombudsman scheme associated with NGRS. Consequently Mr Milner had been passing himself off a