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You are here: BAILII >> Databases >> England and Wales Patents County Court >> Redwood Tree Services Ltd. v Apsey (t/a Redwood Tree Surgeons) [2011] EWPCC 14 (13 May 2011) URL: https://www.bailii.org/ew/cases/EWPCC/2011/14.html Cite as: [2011] EWPCC 14 |
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Court 3
133-137 Fetter Lane London EC4 1HD |
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B e f o r e :
____________________
REDWOOD TREE SERVICES LIMITED |
Claimant |
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| AND |
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WARREN APSEY T/A REDWOOD TREE SURGEONS |
Defendant |
____________________
Temple Chambers, 3-7 Temple Avenue, London EC4Y 0HP
Tel: 020 7404 7464 Fax: 020 7404 7443
www.johnlarking.co.uk
MS VICTORIA JONES (instructed by Colemans Solicitors LLP, 21 Marlow Road, Maidenhead, Berks SL6 7AA) appeared on behalf of the Defendant.
DAY THREE
____________________
Crown Copyright ©
JUDGE BIRSS:
tree
surgery and forestry business based in Bisley in Surrey. It trades as
Redwood
Tree
Services. The
Redwood
Tree
Services business has, the Claimant contends, been in existence in this area since 1986. The business was begun by Mr Jonathan Hobbs in 1986. In the year 2000 Mr Nick Rose bought the business from Mr Hobbs. Mr Hobbs went to Australia. In 2003 Mr Rose thought he would move to Canada and so in 2004 Mr Rose transferred the business to Miss Tina James and her daughter Miss Keleigh James.
tree
surgery and forestry work; Mrs James does the administration. Mr Rose went through personal bankruptcy proceedings in 2005. Keleigh left the business three years ago and from then on Mrs James has owned 100% of the business and is the sole director and company secretary. Turnover figures have been given for the business over the years. In the 1990s it grew from about £30,000 a year to £90,000 a year. In 2003 the turnover was £66,000 and in 2006 the turnover was about £89,000.
tree
surgery. He is an individual trading as
Redwood
Tree
Surgeons and is based in Eversley in Hampshire, 10 miles from Bisley. He started his business in 2004 and has run it ever since.
The proceedings.
Witnesses.
Redwood
Tree
Services. Miss Jones submitted his evidence was not credible. This related in particular to the bankruptcy and the period of 2004. I will return to the detail about that later. He also seemed to have forgotten that he had been a director of the Claimant for some months in 2004/2005. I am sure that Mr Rose was honestly trying to help the court in relation to the general position but his evidence about the directorship and the bankruptcy did not make sense as compared to the documents. I am not satisfied that I can rely on Mr Rose's testimony entirely as to the events of 2004/2005. I should make it clear that that does not mean that I am rejecting everything that he said about that period. The other criticisms made of Mr Rose are of lesser weight. One was that his witness statement said that Mr Hobbs' old van 'would have' had a particular appearance when in fact he knew what it looked like. In my judgment it indicates that Mr Rose was not a particularly careful witness but I do not regard it as a significant criticism.
Redwood
Tree
Services Ltd 'which is soon to become incorporated.' Like Mr Rose, I am sure Mrs James was honestly doing her best but again her evidence about what happened in 2004 does not fit with the documents. Like Mr Rose, I am not satisfied that I can entirely rely on her testimony as to the events in 2004.
Redwood
Tree
Services when he set up his own business, was not credible. I will deal with that point in its proper context. Apart from that, I found Mr Apsey to be a perfectly good witness.
tree
surgeon, his company is called Turning Leaf and he lives about two miles from the Claimant. I did not find his attempt to minimise his knowledge of the Claimant at all credible and I will not rely on Mr Broughton's evidence.
The law.
(1) that the Claimant's goods or services have acquired a goodwill in the market and are known by some distinguishing name, mark or other indicium;
(2) that there is a misrepresentation by the Defendant whether or not intentional leading or likely to lead the public to believe that goods or services offered by the Defendant are goods and services of the Claimant, and
(3) that the Claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the Defendant's misrepresentation.
The facts.
Redwood
Tree
Services and it was based near Guildford with a turnover of something like £30,000-£80,000 a year. It was a business as a
tree
surgery. There were clearly entries in the Yellow Pages (although there were some errors) which demonstrated without any doubt that this business existed and was acting in that fashion.
tree
surgery. However, what is not clear is the extent of the turnover that was attributable to
tree
surgery and it is also not clear what extent the turnover was attributable to trading under the name
Redwood
Tree
Services.
tree
surgery, for a start, the Yellow Pages adverts demonstrate that. It is also clear, in my judgment, that the business was using the name Forestry Advisory Services as well, at least to some extent. In so far as Mr Rose denied that, I do not accept his denial. First, the accounts for the year to March 2001 clearly state that the business was using both names, viz., Forestry Advisory Services and
Redwood
Tree
Services. Second, a quotation dated 15th September 2003 (X10) although headed "
Redwood
Tree
Services" underneath states 'Forestry Advisory Services, suppliers of
tree
surgery and forestry equipment to
Redwood
Tree
Services.' Third, Mr Rose's bankruptcy petition, which was signed in 2005, provides that he was carrying on business lately as
Redwood
Logs and
Redwood
Tree
Services/Forestry Advisory Services and then refers to firewood and forestry.
Redwood
Tree
Services as a name was being used as at least one of the names for Mr Rose's business. That can be seen from the succession of Yellow Pages adverts and from the same 2003 document to which I have referred. The Claimant registered a domain on the internet in 2003. This was
redwoodtreeservices.co.uk.
The registrant was named as Forestry Advisory Services. The evidence was from Mr Rose that the site was put up sometime after January 2004. Although it was not corroborated I have no reason not to accept that date as approximately right.
Redwood
Tree
Services Ltd but Mrs James' evidence was that she did not think of incorporating the business until later. That did not make sense given the reference to the company in this document. There was no evidence in it of the price or value of the goodwill or the business (implying it had no value) but, as Mr St Quintin says, the value of the business does not mean the same thing as the value of the goodwill. Just because the business may not have had a value overall does not mean the goodwill did not have a value; it could be simply the negative effect of the business' liabilities such as hire purchase arrangements.
Redwood
Tree
Services company acquired the business. However there is no contemporaneous assignment to the company. For the purposes of these proceedings a confirmatory assignment was executed many years after the event but while that might ensure the Claimant is the proper Claimant in this case it does not tell me anything useful about what actually took place in the year 2004.
Redwood
Tree
Services took over the business in 2004 until the present. Mr Rose remained involved in the business. I should note that it is clear that his personal position is an important part of the business. Many of the letters are addressed 'Dear Nick.' Although Keleigh was going to work in the business and I do not doubt that she did, she left it about three years ago. In terms of turnover, I have accounts up to the year 2006 but not later. The turnover in the year to 2006 was £89,000. The business included
tree
surgery, forestry, firewood and bio fuels. The bio fuels side of the business involves providing material to the bio fuel power station in Slough. Today and since 2004 the business is based in Bisley. It is predominantly in Surrey and around the Guildford area. I should say that I find that it does indeed use
Redwood
Tree
Services as its name.
tree
is a
redwood.
He planted one in his parents' garden for the Millennium and in evidence there was a picture of it with a Millennium plaque in the year 2000. He attended a
tree
surgery course at Merrist Wood College in Worplesdon and worked for some other
tree
surgery businesses. He set up on his own in 2004. He registered his business with Yell at yell.com in August 2004. He did searches at Companies House on the internet and the Business Register and he found that "
Redwood
Tree
Surgeons" was not being used as a name so he thought he would use that name as his business.
Redwood
Tree
Services. Mr St Quintin pointed to the fact that the
redwood
was his favourite
tree
and therefore he might notice a business called
Redwood
Tree
Services and he also pointed to Mr Apsey's proximity to the Claimant's business given his time at Merrist College in Worplesdon. However, Mr Apsey maintained that he had not heard of it at the time. Moreover I bear in mind that whatever the precise extent of
Redwood
Tree
Services' business in the crucial period in 2004, it was not on any view substantial. I also bear in mind the uncertainty as to the extent to which the Forestry Advisory Services name was also in use by Mr Rose as well. In the end there is no evidence that Mr Apsey had heard of the Claimant and in my judgment his denial was credible. I find that he had not heard of them. It also means that I make no criticism of Mr Apsey as a witness.
Redwood
Tree
Surgeons but also keeps the name Warren Apsey and the phone number prominent as well. Today and since 2004 the business has been based in Hampshire primarily in the RG postcode area. I was provided with a map with flags on it from the year 2004. The striking thing about the map is that it shows just how close the two businesses are. I understand that Eversley and Bisley are approximately 10 miles apart. But it also shows that the M3 motorway represents a fairly clear divide between the two businesses.
Other businesses.
Redwood.
These include
Redwood
Tree
Services, a
tree
surgery in West Sussex and a
Redwood
UK in Borden, Hampshire, selling arboricultural and forestry equipment. They,
Redwood
UK, are 15 miles from the Claimant.
Applying the law to the facts.
redwood
was descriptive in relation to
tree
surgeons because it refers to a kind of
tree.
If that is a point that has been taken, I will reject it. In my judgment,
redwood
is not inherently descriptive of a
tree
surgery business and certainly not one in the United Kingdom whatever the position may be in Northern California.
Redwood
Tree
Services actually is in any event. The evidence shows many, many other businesses using the name "
redwood"
for all sorts of things. I have referred already to the business in West Sussex called
Redwood
Tree
Services which is a
tree
surgery business. Apparently it limits itself to Sussex but it is striking to hear that there is another business with exactly the same name as the Claimant's doing the same job with what is obviously an overlapping catchment area at least to some extent. I also note, as I have mentioned just a moment ago,
Redwood
UK 15 miles from the Claimant selling forestry equipment. Having heard the evidence, I find that these
tree
surgery businesses, both the Claimant's and the Defendant's, are highly localised. Personal recommendations are an important way in which new customers are acquired, as is picking up business simply by working in a particular area and being seen. There is also a local directory of services called the Little Green Directory. There is one for Reading, a Wokingham one and one for Guildford. Mr Apsey thought that Yellow Pages was not a significant source of business for his business. I accept that evidence.
What was the position in 2004?
Redwood
Tree
Services business beforehand. Mr Hobbs' business was clearly successful and it is also clear in my judgment that it continued under Mr Rose's stewardship from the year 2000. Thus the business going into 2004 had an existing goodwill and reputation associated with the name. The invoices show that work was still being done in 2004 and I conclude as a fact that the business continued throughout that period. Any other conclusion does not make sense in relation to the overall picture. There was no evidence that the
Redwood
Tree
Services business started in 2005 when the company was formed. Although it is right at the lower limit of the difference between trivial and small, in my judgment it had a small goodwill, highly localised around the Guildford area. I find there is some goodwill associated with
Redwood
Tree
Services, the business of which the Claimant is the successor.
What about the transfer to
Redwood
Tree
Services Ltd?
Redwood
Tree
Services when used in relation to a
tree
surgery business. That goodwill was small in extent and highly localised in the Guildford area. This includes an area up into Sunningdale on the border with Berkshire and south towards Haslemere. I find that there was and remains a body of the public in that area for whom
Redwood
Tree
Services meant and only meant the Claimant's business.
Misrepresentation.
Redwood
Tree
Services" and "
Redwood
Tree
Surgeons" as names for the same sorts of
tree
surgery businesses. The problem arises from the word "
redwood"
in the context of a name consisting of "
Redwood",
"
Tree"
and then a word starting with "S".
"(iv) Inference of no deception from co-existence without instances?
41 Finally there is the co-existence point. The judge was impressed with it. He said:
"[137] this case is unusual in that it only came to trial some five and a half years after the first alleged passing off. The claimants have thus had the opportunity through the usual trial processes (including disclosure, the calling of witnesses and cross examination of Mr Heykali) to adduce evidence of actual or likely deception."
And:
"[157] It is striking that no such evidence has been adduced in view of the facts that (1) The claimants have had the opportunity of adducing such evidence in the period of some 5 and a half years before the matter has come on for trial."
42 I quite agree that evidence of substantial side-by-side trade without significant confusion or deception gives rise to a powerful inference that there is no such confusion or deception. It was the determining matter for the judge, see [157]–[158]. And it was the primary point in Miss Lane's skeleton argument which began:
"This was an unusual case and, on superficial analysis, a surprising result. However, the explanation is simple: it turned on the evidence. More particularly, the claimants' lack thereof."
She developed the point further, saying later: "this then, was the case of the dog which did not bark."
43 But if one has no idea of the extent of side by side user, then the inference of no deception cannot be drawn. You have to show there is a dog who could have barked.
44 Here Mr Heykali's evidence simply does not establish enough material to draw the inference of no deception. Mr Heykali's evidence in chief gave no details of the extent of his trade. Nor was there disclosure of accounts, VAT returns, or amounts of sales. Mr Hicks, for Caudwell, sensibly asked no questions about extent of trade. During the course of argument we asked about this. In response, to show sales, Miss Lane produced a bundle of documents which had been disclosed prior to trial. Mr Miller analysed these: they amounted to only 28 mobile phones over a period of about 8 months—and one of these was to Mr Heykali himself. This was all during the period of about a year when he had a shop called Mobile Communication Centre in Balham—a shop which failed.
45 Once the shop failed, there is simply no real evidence at all as to the nature and extent of Mr Heykali's business. There were no retail premises. He did not advertise. What happened is simply unknown. I see no justification for the inference of non-deception drawn by the judge. He said:
"[137] My own 'common sense' reaction to the issue was initially, and before I heard the evidence, that Mr Heykali's domain name and trading style which adopted that domain name was so similar to Phones 4u that it was likely to cause deception."
He only displaced his "common sense" view by reason of the absence of instances of deception in the five and-a-half year period of "side-by-side" user. But if Mr Heykali's trade was exiguous—and such evidence as there was suggested it was—there was but limited opportunity for instances where someone actually bought from Mr Heykali thinking he or she was dealing with Caudwell. It should also be remembered here that it is seldom the case that all instances of deception come to light—the more perfect the deception the less likely that will be so.
46 Quite apart from that, however, the mass of emails to which I have referred do show instances of damaging misrepresentation—albeit not showing cases of actual direct diversion of trade. The judge was wrong on the co-existence point.
47 I conclude that passing off was established."
redwoodtrees@btinternet.com
and copied to
redwoodtrees@hotmail.com.
The BT Internet address is the Defendant; the Hotmail address is the Defendant. The email is addressed:
'Dear Nick, just a note to confirm you are coming to do your stuff on Monday 8th Aug finishing on the Wednesday. We are actually going to be away Monday and Tues, back in the evening. However, don't let this stop you doing your stuff. Our gardeners will be there in the morning as will our housekeeper. To gain access to the drive, you simply push the round gate button, and the gates will swing open.'
'Dear Nick, I'm writing to tell you of an unfortunate confusion over your company's trading which I encountered. Having met you last year and discussed my requirements I decided to contact you via your website. I found what I assumed to be your website, namely www.redwoodtrees.co.uk
and sent you an email via this gateway. It was only later that I discovered that indeed there were two very similar named companies in close proximity with the strong likelihood of creating customer confusion. As a result I lost out in terms of timing.
Redwood
![]()
Tree
Surgeons sounds far too similar to
Redwood
![]()
Tree
Services. Yours, Richard Royds.'
Redwood
and
Tree
written on it. He saw "Surgeons" but assumed that that was a small change in the Claimant's branding since they do do
tree
surgery. It turned out to be one of the Defendant's trucks. Mr Cross came to court and gave evidence. In cross-examination Miss Jones put a letter Mr Cross had written about the incident to him and it is the letter of 23rd June. The letter begins as follows:
'Dear Nick and Tina, Confusion with identification. We were travelling through Chobham from Sunningdale and thought we saw you. That was until we got a bit closer and noticed that the vehicles parked on the roadside were NOT you.'
Redwood
on it, parked by the side of the road. He assumed it was the Claimant and went over to talk, expecting to talk to Nick Rose, and in fact it was the Defendant. I find this is a clear example of someone confused by the Defendant's name into thinking it was the Claimant. He acted on it in a modest way, by going over to talk. He was not a customer buying services.
tree
surgeons and the like so that they can control the traffic while they are working at a roadside. Both the Claimant and Defendant have accounts with them. On at least three occasions there is evidence of mix-ups. For example, there is an invoice addressed to the Defendant's address but marked 'Nick Rosi' which is obviously a reference to the Claimant. It seems to me that this is of little relevance to the behaviour of customers in the Surrey and Hampshire area since, for example, we know that there are other
tree
surgery businesses also called
Redwood
Tree
Services which, from the point of view of Somerset, are in the same locale. I am referring, of course, to West Sussex.
tree
surgery. He lives in Eversley where the Defendant is based and wrote to the Claimant saying he saw 'you' working in the surrounding area. The Claimant submits this is someone who has confused the two businesses. In my judgment, there is not really enough evidence to conclude one way or the other. If he had seen
Redwood
Tree
Surgeons around Eversley itself then that means he has seen the Defendant, but is writing to the Claimant.
Redwood
Tree
Services business in West Sussex. This is not an instance of confusion at all.
tree
business. Mr Rose said this was a customer who was confused but the individual was not a customer. The point is that this person thought he had seen the Claimant's vehicles in the Fleet area when it is likely they were the Defendant's. Unlike Gail Thurley, it seems to me to be right that the vehicles this person saw were probably the Defendant's and I so find. So here is a person who has confused the businesses. Although Mr Rose said the individual had been a customer before, that was seven years ago. The manner in which he approached Mr Rose on this occasion seems to me to indicate that he was not someone for whom
Redwood
Tree
Services was a known business. He simply thought he was seeing in Stoke Park the same business that he had seen before in Fleet, assuming the two businesses were the same. There is no evidence when he saw the Defendant that he made any connection with the Claimant.
Redwood
to the customer (their neighbour) at No 29. This is pure speculation and I reject it. It illustrates the point to some extent that the Claimant did not press for this information at an earlier stage. If it had pressed in order to make such points good it may have had the opportunity to do so, but the Claimant did not do that despite having a long time in this litigation to take such a course if they had wished to.
Redwood
Tree
Services in West Sussex.
Redwood
or
Redwood
Tree
Services is not distinctive of the Claimant when considering the public in Central London. However, to say it is not distinctive of anyone at all, in my judgment, is not correct. The Claimant does have a goodwill in its local area around Guildford which broadly corresponds to the GU and SL postcodes. It seems to me that judged by a local yardstick, when people in that area, particularly close to Guildford, see
Redwood
Tree
Services they do indeed think of the Claimant and assume when they see that name that it is the Claimant's. If the Defendant trades in the Defendant's home area then in my judgment the Defendant makes a misrepresentation. The use of the name
Redwood
Tree
Surgeons in the relevant area whether intentional or not leads or is likely to lead the public to believe that goods or services offered by the Defendant are the goods or services of the Claimant.
'In terms of marketing my business I have advertised with a free listing in the Thames Valley Business Pages and have done so since 2005. There was no entry in this book for the Claimant although they did have an entry in the 2006 edition. Up till 2009/10 I only had a free listing in the Basingstoke & Fleet Yellow Pages but last year I upgraded this to a corporate advert under the banner of the Trading Standards Buy With Confidence scheme. I have had free listings in the normal Basingstoke and District Phone Books and in the 2005/6 also in the Bracknell Berks and Reading Berks Phone Books. I advertise yearly in the Eversley Parish Magazine, in the window advertising board in my local centre stores in Eversley, and annually in the Little Green Directory, in the Reading book and in the Wokingham book. The Little Green Directory is also available online. I did advertise in the Little Green Directory in the Guildford area in 2005/6 as I thought that people may relate to me having trained in the Merrist Wood College near Worplesdon.'
'I have also tried to do my bit in the community by advertising in the Eversley Cricket Club programme, the Eversley Football Club programme, and the Hampshire Hunt Pony Club Day magazine. I advertise in the Basingstoke area Yellow Pages that covers the Eversley district where my business is based and I can confirm that I have never advertised in the Guildford area Yellow Pages.'
'However this did not prove a worthwhile piece of advertising as I quickly realised that it would not be commercially viable for me in terms of fuel costs and time to travel to the area to give quotes and do work.'
Redwood
Tree
Surgeons as a reputable
tree
surgery business.
Redwood
Tree
Surgeons in a Guildford area Little Green Directory was an act of passing off.
Damage.
tree
surgeon than the Claimant, but that is not the issue. Within the area of the Claimant's goodwill, if the Defendant trades in a confusingly similar way the Claimant loses that control.
Conclusion.
Redwood
Tree
Surgeons in Eversley or anywhere else within the RG postcode area. That is a more or less westward-looking area. The Claimant's rights are local and are confined to an area around Guildford which corresponds essentially to the GU and SL postcodes and towards the east of that area including Kingston. The only injunction which would be appropriate in my judgment is one specifically limited to the GU, SL and possibly KT postcodes areas.
Redwood
Trees
than the Defendant. I note again the existence of
Redwood
Tree
Services in West Sussex. As regards the website, it seems to me that in a case like this, provided the Defendant's website makes it clear that it is not based and does not trade in GU or SL postcode areas, then in the exercise of my equitable jurisdiction with regard to injunctions no injunction should be granted which prohibits a website of that kind.
Following argument in relation to the form of order the Court gave the following judgment:
JUDGE BIRSS:
that the Defendant must not whether acting by himself, through others acting on his behalf or on his instructions or with his encouragement or in any other way:
a. in any area with a postcode being GU, SL or KT
(i) provide, advertise or otherwise promotetree
surgery or other arboricultural services under or by reference to the word
Redwood,
the words
Redwood
![]()
Tree,
![]()
Redwood
![]()
Tree
Surgeons or the words
Redwood
![]()
Tree
Services;
(ii) provide, advertise or otherwise promotetree
surgery or other arboricultural services under or by reference to any other word or combination of words, colourably similar to the word
Redwood,
the words
Redwood
![]()
Tree,
![]()
Redwood
![]()
Tree
Surgeons or the words
Redwood
![]()
Tree
Services
b. otherwise pass off or attempt to pass off or threaten or intend to pass off any services not being services of or authorised by the Claimant as and for the same contrary to the fact.
Redwood
Tree
Surgeons.
Redwood
Tree Surgeons altogether. In that, the Claimant has singularly failed. In my judgment, it is an extremely important element in this case and needs to be taken into account on the question of costs. Nevertheless I also take into account that neither party has made an offer which they might have done.
Following argument in relation to the outstanding matters the Court gave the following judgment:
JUDGE BIRSS: