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    ESTATE AGENTS : GOODWILL : INFRINGEMENT : PASSING OFF : REVOCATION : TRADE MARKS : PASSING OFF HIGH END ESTATE AGENCY BUSINESS : GOODWILL ACCRUING TO LICENCEES


    The adoption by the defendant estate agents of the name and logo “FINE” had caused substantial confusion amongst members of the public with the Fine & Country brand of estate agents and the triple requirements of goodwill, deception and damage in order to prove passing off had been established. The claimants’ trade marks had been infringed and they were entitled to injunctive relief.


    The claimants (C) sought an injunction preventing the defendants (D) from using the name and sign “FINE” on the basis that D were passing off D’s businesses as that of C, and that they were in breach of C’s registered trademarks (the “F&C marks”) and also sought damages or an account of profits. D brought a Part 20 claim for revocation of C’s trademarks.


    C were in the business of providing services to estate agents, and licensing to independent local estate agencies the use of the name “Fine and Country”. D were companies in a group which operated a number of national estate agencies, some under the name “Fine”, others under the name “Haart”. D’s logo for Fine, which like C’s business was aimed at the premium end of the house buying market, was similar, or reminiscent of the Fine & Country logo and brand.


    C submitted that the result of D’s adoption of the name and logo “FINE” by D had resulted in substantial confusion amongst members of the public and those involved in the property business and that D were passing off or attempting to pass off their services as services of, or connected with, C. C argued additionally that D was infringing its United Kingdom trade mark and community trade mark. D submitted that the claims constituted an inappropriate attempt to monopolise a descriptive word (“fine”) which was common in ordinary language and extensively deployed in the estate agency market and sought orders invalidating and revoking the F&C marks. D further submitted that any goodwill had accrued to C’s licensees and not to C directly.


    HELD: On the evidence, C had established the triple requirements of a successful claim in passing off, namely goodwill, deception and damage and were entitled to protect the goodwill generated by them in the course of their business. The fact that the goodwill generated by their licensees was held on trust for C so they were not the legal owners did not prevent them maintaining a claim for a permanent injunction; they succeeded in their primary claim. D had not established that the F&C marks were not being used by or with C’s consent, nor had they established that the use made of the F&C marks had rendered them deceptive as to trade origin: they had failed to show any grounds for a declaration of invalidity, or for revocation, of the F&C marks and their Part 20 claim was dismissed. C had established infringement of their trade marks and were entitled to injunctive relief and an inquiry into damages or an account of profits accordingly, as well as delivery up and/or destruction of offending material (see paras 61-69, 177, 199-204 and 223-284).


    Judgment for claimants


    [2012] EWHC 2230 (Ch)

    (1) FINE & COUNTRY LTD (2) GPEA LTD (3) FCEA LTD v (1) OKOTOKS LTD (FORMERLY SPICERHAART LTD) (2) SPICERHAART GROUP LTD (2012)
    Ch D (Hildyard J) 31/07/2012


    “Lawtel update” 13.08.12