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England and Wales Patents County Court
You are here: BAILII >> Databases >> England and Wales Patents County Court >> Redwood Tree Services Ltd. v Apsey (t/a Redwood Tree Surgeons)  EWPCC 14 (13 May 2011)
Cite as:  EWPCC 14
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133-137 Fetter Lane
London EC4 1HD
B e f o r e :
| REDWOOD TREE SERVICES LIMITED
|WARREN APSEY T/A REDWOOD TREE SURGEONS
Temple Chambers, 3-7 Temple Avenue, London EC4Y 0HP
Tel: 020 7404 7464 Fax: 020 7404 7443
MS VICTORIA JONES (instructed by Colemans Solicitors LLP, 21 Marlow Road, Maidenhead, Berks SL6 7AA) appeared on behalf of the Defendant.
Crown Copyright ©
(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.
Applying the law to the facts.
What was the position in 2004?
What about the transfer to Redwood Tree Services Ltd?
"(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:
" 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."
" 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 –. 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:
" 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."
'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.'
'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.'
'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.'
Following argument in relation to the form of order the Court gave the following judgment:
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 promote tree 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 promote tree 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.
Following argument in relation to the outstanding matters the Court gave the following judgment: