13 Jul 2017We acted for the Claimant, Coreix Ltd, in a recent claim for trade mark infringement and passing off. The claim was brought against a group of companies (9 Defendants in all) which operated in the same market as our client (IT and telecommunications services) and which traded under the mark Coretx. The trial took place in the Intellectual Property Enterprise Court (IPEC) and judgment was handed down on 11 July 2017. A copy of the judgment is available here: http://www.bailii.org/ew/cases/EWHC/IPEC/2017/1695.html
Coreix is a provider of IT and telecommunication services. It has traded under the Coreix mark since its inception in 2003 and has developed its business to the stage where it has an excellent and growing reputation for the provision of IT services (see www.coreix.net).
For many years, Coreix had dealings with a company called Connexions4London Ltd, colloquially known as C4L. The two companies operated in the same marketplace and each provided services to the other. In 2014, C4L began using the name coreTX (in that form) as a reference to its new Multiprotocol Label Switching (MPLS) network but at all times the C4L mark continued as the main trading brand of that company.
Coreix became aware of the introduction of this new coreTX mark and was concerned about its similarity to the Coreix mark but decided, for commercial reasons, not to challenge the use of that mark by C4L. C4L also registered the mark CORETX (in that form) for MPLS services and again Coreix was aware of that registration but chose not to object.
In early 2016, C4L was acquired and became part of a much larger group of companies. In April 2016, that group rebranded the entire business to CORETX. The group, which also provided IT and telecommunication services launched their new brand at an exhibition on 12 April 2016. In response, Coreix objected immediately, not least because of the immediate confusion resulting from the headline use of such a similar mark. Complaints were ignored by the Defendants and Coreix was therefore forced to issue a claim against the Cortex group based on trade mark infringement and passing off.
The IPEC judgment, given by Recorder Mr Douglas Campbell QC, determined that the use of the Coretx mark for IT and telecommunication services was an infringement of Coreix’s registered trade mark rights in the Coreix mark and that the use by the Defendants also amounted to passing off. The judge also dismissed the defences raised by the Defendants, which included claims that Coreix had consented to or acquiesced in Coretx’s use by virtue of their failure not to raise a complaint against the use of the coreTX mark by C4L since 2014.
Coreix took sensible and pragmatic business decisions not to raise objections to the use of the coreTX mark by C4L. That usage was in relation to a discrete MPLS product and was in the context of C4L remaining the main and dominant trading brand. Additionally, Coreix did a reasonable amount of business with C4L and did not wish to taint the business relationship by raising threats of trade mark infringement or trade mark opposition. At the time those decisions were justifiable in the context of the business.
However, the conditions changed completely in April 2016 when the enlarged group chose to rebrand the entire group under the Cortex mark. That is not something Coreix could possibly have anticipated in 2014. Nevertheless, hindsight offers us the benefit of taking the following lessons from the series of events which led to the current claim:–
- Register your trade marks;
- Keep the registrations up to date and ensure they include protection for all of your trade marks, in the form in which you use them, and for all of the services you provide under those marks;
- Police your marks carefully and put in place a trade mark watching service (details of which we can provide);
- Keep a close eye on the use of any similar marks within your industry, particularly by anyone who may be a potential competitor;
- Address any potential conflicts straightaway;
- Take advice and, if necessary, act quickly;
- Don’t delay and don’t get drawn into potential arguments that you may somehow have consented or acquiesced in a competing use;
- Don’t assume current usage limitations or conditions will apply in future. Businesses change and current minor use of a mark can later become a major problem;
- Kill off the potentially infringing use as quickly as possible and avoid potentially expensive legal claims procedures.
If you need any further support concerning any of the above issues, or have any questions, call 0203 151 2711.