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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> GFS Flex Ltd v Brymec Ltd [2020] EWHC 1907 (Ch) (17 July 2020) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2020/1907.html Cite as: [2020] EWHC 1907 (Ch) |
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2020] EWHC 1907 ( Ch) | ||
2020-000047 |
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (
ChD)
2020-000047Rolls Building, Royal Courts of JusticeFetter Lane, London, EC4A 1NL |
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2020 |
B e f o r e :
____________________
| GFS FLEX LTD |
Claimant |
|
| - and - |
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| BRYMEC LTD |
Defendant |
____________________
Martin Howe QC (instructed by Haddletons LLP) for the Defendant
Hearing date: 30 June
2020
____________________
Crown Copyright ©
2020.
Mr Justice Nugee:
Introduction
2020
alleging passing off and claiming an injunction and damages or an account of profits, and applied for an interim injunction. On 23 April
2020
Birss J made an order by consent adjourning the application to a return date, with directions for further evidence, on the basis of certain undertakings given by Brymec pending the return date.
Facts
changed
since it was first introduced into the UK market in 2015; and that until Brymec's recent actions, GFS was the only supplier of CSST products incorporating a yellow clip, or a plastic clip at all, to the UK market. GFS's direct customers are distributors and some merchants but its end customers are gas engineers.
2020.
It is branded as a Brymec product – the evidence is that about half Brymec's products (about 4,000 out of about 8,000) are sold under Brymec's own brand.
choice
to ape the colour, design and presence of the yellow clip on the GFS product". That led to Brymec adducing evidence from Ms Sena Kahraman of Paktermo to the effect that all of this was untrue; that it was Paktermo that had come up with the idea of the pushfit fitting; that the fitting had always incorporated a yellow removable clip to prevent it being overtightened before installation; that Paktermo launched its product in June 2014; and that it was Bes Yapi, which first marketed a similar product in February 2015, which had copied Paktermo's design, not the other way round. Mr Senyer responded in his reply evidence that it was extraordinary for Ms Kahraman to suggest that Bes Yapi had copied Paktermo; that Bes Yapi had promoted its product to the public in September 2013; and that it had started manufacturing it in November 2013. That led to a yet further round of evidence on behalf of Brymec casting doubt on this account. Mr Andrew Norris QC, who appeared for GFS, initially objected to this latest round of evidence, for which no directions had been given. But having read it on a provisional basis I made it clear that I proposed to pay little attention to these matters, which I cannot possibly resolve on this application, and the objection was not persisted in.
(1) Mr David Brown, a SupplyChain
Director for Smith Brothers Stores Ltd (an independent merchant). He noted a post on Brymec's LinkedIn site on 4 February and sent an e-mail to Mr Senyer saying the fitting "looks a lot like your product" and asking:
"…are you doing a private label product for Brymec?"
He says that he has bought GFS's CSST products since October 2018; that they are distinctive because of "the ease of jointing method" and "yellow visual indicator on fittings"; and that he thought the Brymec product was a GFS one because of the yellow indicator and generally similar appearance to the GFS product.
(2) Mr James Kibblewhite, a Key Account Manager for Tec Supplies (a wholesaler). He says that he has bought GFS products since early 2019 and they are distinctive because of the yellow clip. He visited a customer in late December 2019, who told him he was getting GFS products from Brymec at acheaper
price and showed him a brochure; they noted the fittings with yellow clips and assumed they were GFS products. He spoke to his contact at GFS, and at her request sent her an e-mail. This asked:
"I have seen your pipe on [Brymec's] website? Are you supplying Brymec now?"
(3) Mr Richard Birch, a National Sales Manager for Barco Sales Ltd (a distributor). He has bought GFS products since 2018. He noticed when he first saw them that they had a very distinctive look with the yellow clip. He saw them at various times subsequently and the yellow clip stuck in his mind as indicating GFS's CSST products. He came across the Brymec products on his website on 19 February2020.
He says that he was pretty angry because he thought that GFS must have been dishonest with him: they had given him a list of other companies they were planning to supply, which did not include Brymec, and he thought that GFS were supplying product for Brymec to re-brand as its own. He too sent an e-mail to GFS saying that they had come across the website showing a fitting that was very similar to GFS and asking:
"…is this something you are supplying…?"
Is there a serious issue to be tried?
EWHC
2545 (
Ch)
("Glaxo") at [156]-[173] for a recent summary of the law, in particular in the context of an action for alleged passing off by get-up (in that case the purple colour of an inhaler). From this judgment I derive the following. Although it is clearly possible in law for a passing off action to succeed on the basis of get-up alone (as in the Jif case), such cases are rare: [164]-[167]. It is not enough for the claimant to prove that the public recognise the shape or colour of the claimant's product and associate it with the claimant's product, particularly where it is the only product of its kind: [170]. This is because there is a distinction, described by Kitchin LJ in Société des Produits Nestlé SA v Cadbury UK Ltd [2017] EWCA Civ 358 at [77] as rather elusive but important, between such recognition and association on the one hand and the perception that the get-up can be relied on as a badge of origin such that the public would rely upon it alone to identify the product as coming from a particular source: [172]. That, and the earlier case of Unilever plc's Trade Mark Applications [2003]
EWHC
2709 (
Ch)
(where Jacob J drew a similar distinction between a substantial proportion of the public recognising a particular shape of ice-cream as a Viennetta, and the public using the shape as a badge of trade origin) were trade mark cases, but in Glaxo Arnold LJ accepted a submission that the distinction was equally applicable to passing off claims based on get-up: [173].
EWHC
1237 (
Ch)
where Floyd J reiterated similar points at [38]-[39], and at [51] referred to Numatic having deliberately, and successfully, educated the public into recognising the anthropomorphic
character
of their Henry vacuum cleaner. By contrast here, Mr Howe submitted, there was no evidence that GFS had done anything in the way of seeking to educate the public into the significance of the yellow clip as a trade mark or badge of origin. As far as the public were concerned, the clip was a functional feature of the pushfit fittings (and marketed as such – see the reference in GFS's 2018 brochure referred to at paragraph 14 above), and the yellow colour would be unlikely to be associated with a particular origin as it was the standard colour for gas pipes.
Damage to claimant
Damage to defendant
change
the look of the product now; if they won at trial they would then have to
change
it back again, causing further confusion.
Balance of convenience
"(a) any written quotes [Brymec] has provided as at 21 April2020
in relation to CSST assemblies, which become orders from Brymec, shall be displayed with a prominently displayed sticker in legible font applied to the product box stating "This Brymec product is not manufactured by and has no connection with GFS Flex";
…
(c) [Brymec] will add a notice on its website on or before 30 April2020 stating that the CSST assemblies are not manufactured by and have no connection with GFS Flex, such notice to be displayed next to the images of the CSST assemblies…."
Brymec is willing to continue pending trial to put similar wording out with any products that it sells, and to keep the wording on its website (and add similar wording to any other form of marketing). Mr Howe said that was sufficient to hold the ring, and would either eliminate or reduce the risk of any misrepresentations occurring.
Conclusion