BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!
 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
England and Wales High Court (Chancery Division) Decisions |
||
|
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Fine & Country Ltd & Ors v Okotoks Ltd & Anor [2012] EWHC 2230 (Ch) (31 July 2012) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2012/2230.html Cite as: [2012] EWHC 2230 (Ch) |
||
[New search] [Printable PDF version] [Help]
CHANCERY DIVISION
Rolls Building, Fetter Lane, London, EC4A 1NL |
||
B e f o r e :
____________________
| (1) FINE & COUNTRY LIMITED (2) GPEA LIMITED (3) FCEA LIMITED |
Claimants |
|
| - and - |
||
(1) OKOTOKS LIMITED (formerly SPICERHAART LIMITED) (2) SPICERHAART GROUP LIMITED |
Defendants |
____________________
Mr Mark Platts-Mills QC and Ms Jessie Bowhill (instructed by Manches LLP) for the Defendants
Hearing dates: 1,2,5,6,7,8,9,12,13,14 March 2012
____________________
Crown Copyright ©
Mr. Justice Hildyard:
Introduction
The F&C Marks and the FINE sign
.png)
.png)
The name depicted in this way is often accompanied by the strap line:
"selling fine homes throughout the country"
The Claimants
The Defendants
Summary of the parties' respective cases
"Fine and Country" brand
(1) both the UK Mark and the CTM have acquired a reputation in the UK and elsewhere in the European Union such that the provisions of section 10(3) of the Trade Marks Act 1994 (the "Act") and articles 9(1)(c) of the Council Regulations 40/94 and 207/2009 on the Community Trade Marks (the "CTM Regulations") apply to the Registered Trade Marks; and
(2) a valuable goodwill and reputation attaches to the Fine & Country name and logo, and such goodwill and reputation belongs to the Claimants (or one or more of them).
The FINE brand
Summary of main issues
(1) Have the Claimants established the necessary elements for their claim in passing off (which Mr Hicks put forward as their primary case on the basis that it is in a sense legally the simplest and highlights the issues most clearly)? In particular have the Claimants established:
(a) the necessary goodwill or reputation;
(b) a misrepresentation (whether or not intentional); and
(c) damage or its likelihood?
(2) Are Fine & Country's two trade mark registrations liable to revocation? In particular:-
(a) Is the UK Mark liable to revocation under section 46(1)(b) of the Act on the ground of non-use?
(b) Has the use made of both marks by or with the consent of the First Claimant been such that the trade marks have become liable to mislead the public as to the quality or origin of the goods or services supplied under the marks, thereby rendering them liable to revocation under section 46(1)(d) of the Act and Article 7(1)(g) of the CTM Regulation?
(3) Are the marks invalid on the ground that they were, when registered, devoid of any distinctive character or consisted exclusively of signs or indications which serve to designate the kind and quality of the goods or services? See sections 3(1)(b) and (c) of the Act and Articles 7(1)(b) and (c) of the CTM Regulation.
(4) If, at the time of registration, the marks were registered in breach of those provisions, have the marks subsequently acquired a distinctive character?
(5) Has there been infringement under section 10(2) of the Act or Article 9(1)(b) of the CTM Regulation?
(6) Has there been infringement under section 10(3) of the Act or Article 9(2) of the CTM Regulation?
(7) Is Spicerhaart Group liable as joint tortfeasor with its subsidiary Okotoks Limited?
Passing off: the requirements
"invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person's goods as the goods of another."
"there are accommodated and adjusted inter se three sets of interests. There is the plaintiff's interest in protecting his skill, effort and investment, the interest of the defendant in freedom to attract purchasers for his goods and services, and the interests of consumers in having available a range of competitive goods and services for selection by consumers without the practice upon them of misrepresentations."
Proof of distinctiveness and goodwill
"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the Plaintiff's goods or services."
Passing off: misrepresentation/ deception
"No one is entitled to be protected against confusion as such. Confusion may result from the collision of two independent rights or liberties, and where that is the case neither party can complain; they must put up with the results of the confusion as one of the misfortunes which occur in life. The protection to which a man is entitled is protection against passing off, which is quite [a] different thing from mere confusion"
(1) (per Lord Oliver in Reckitt & Colman v. Borden [1990] RPC 340 (HL) ("the Jif Lemon case")
"a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff";
or
(2) (per Goff LJ in Bulmer (HP) Ltd v. Bollinger SA [1978] RPC 79) that what is done
"represents the defendant's goods [or services, see Kerly at paragraph 18-117] to be connected with the plaintiff in such a way as would lead people to accept them on the faith of the plaintiff's reputation."
"Once the position strays into misleading a substantial number of people (going from "I wonder if there is a connection" to "I assume there is a connection") there will be passing off, whether the use is as a business name or a trade mark on goods."
[17] This of course is a question of degree -- there will be some mere wonderers and some assumers -- there will normally (see below) be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.
...
[21] In this discussion of "deception/confusion" it should be remembered that there are cases where what at first sight may look like deception and indeed will involve deception, is nonetheless justified in law. I have in mind cases of honest concurrent use and very descriptive marks. Sometimes such cases are described as "mere confusion" but they are not really -- they are cases of tolerated deception or a tolerated level of deception.
[22] An example of the former is the old case of Dent v Turpin (1861) 2 J&H 139. Father Dent had two clock shops, one in the City, the other in the West End. He bequeathed one to each son -- which resulted in two clock businesses each called Dent. Neither could stop the other; each could stop a third party (a villain rather appropriately named Turpin) from using "Dent" for such a business. A member of the public who only knew of one of the two businesses would assume that the other was part of it -- he would be deceived. Yet passing off would not lie for one son against the other because of the positive right of the other business. However it would lie against the third party usurper.
[23] An example of the latter is Office Cleaning Services v Westminster Window and General Cleaners (1946) 63 RPC 39. The differences between "Office Cleaning Services Ltd" and "Office Cleaning Association," even though the former was well-known, were held to be enough to avoid passing off. Lord Simmonds said:
"Where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered" (p.43).
In short, therefore, where the "badge" of the plaintiff is descriptive, cases of "mere confusion" caused by the use of a very similar description will not count. A certain amount of deception is to be tolerated for policy reasons -- one calls it "mere confusion."
"There is no "property" in the accepted sense of the word in a get-up. Confusion resulting from the lawful right of another trader to employ as indicative of the nature of his goods terms which are common to the trade gives rise to no cause of action. The application by a trader to his goods of an accepted trade description or of ordinary English terms may give rise to confusion…But there can be no action in passing off simply because there will have been no misrepresentation. So the application to the defendants' goods of ordinary English terms such as "cellular clothing" (Cellular Clothing Co. v. Maxton and Murray (1899) 16 R.P.C. 397) or "Office Cleaning" (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 R.P.C. 39) or the use of descriptive expressions or slogans in general use such as "Chicago pizza" (My Kinda Town Ltd. v. Soll [1983] R.P.C. 407) cannot entitle a plaintiff to relief simply because he has used the same or similar terms as descriptive of his own goods and has been the only person previously to employ that description…
Every case depends upon its own peculiar facts. For instance, even a purely descriptive term consisting of perfectly ordinary English words may, by a course of dealing over many years, become so associated with a particular trader that it acquires a secondary meaning such that it may properly be said to be descriptive of that trader's goods and of his goods alone, as in Reddaway v Banham [1896] AC 199."
"The proper approach of the court to the question was not in dispute. The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall "jury" assessment involving a combination of all these factors … Ultimately the question is one for the court not for the witnesses. It follows that if the judge's own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one's own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case … is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more "it depends on the evidence".
"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."
"First, Mr Purvis relied on a complete absence of complaints about confusion from Asda customers despite the 6 months that the logo had been present in the stores to the date of the trial. There was unchallenged evidence as to complaints procedures and handling, and none were recorded. I give this little weight. For this route to have yielded any relevant complaints there would have to have been customers who were confused, who then had their confusion removed, and who then felt sufficiently strongly about it to complain to Asda formally about it. This does not seem to me to be a likely scenario. I have difficulty in imagining how this can arise in practice."
"Evidence of actual confusion is always relevant and may be decisive. Absence of such evidence may often be readily explained and is rarely decisive. Its weight is a matter for the judge."
Kerr LJ (dissenting, but not on the approach to evidence of confusion) put the point this way:
"Even if there is no evidence of confusion whatever, the court must decide for itself, and may conclude that passing-off has been established: see e.g. per Sir Raymond Evershed M.R. in Electrolux Ltd v. Electrix Ltd (1953) 71 R.P.C. 23 (CA) at p. 31. Thus, it has often been said that the availability of such evidence is important, but not its absence, because it is notoriously difficult to obtain such evidence."
Passing off: damage
"(a) by diverting trade from the plaintiffs to the defendants;
(b) by injuring the trade reputation of the plaintiffs whose men's clothing is admittedly superior in quality to that of the defendants; and
(c) by the injury which is inherently likely to be suffered by any business when on frequent occasions it is confused by customers or potential customers with a business owned by another proprietor or is wrongly connected with that business."
Evidence of confusion and deception
(1) 3 (in addition to Mr Lindley) are directors of the Claimants (namely, Mr Richard Combellack, Mr Jonathan Cooke ("Mr Cooke") and Mr Matthew Pryke ("Mr Pryke"), of whom Mr Cooke and Mr Pryke were cross-examined. I should also explain that Mr Pryke is a solicitor. He was a partner (for some 5 years) in the intellectual property department of Wallace LLP (the Claimants' solicitors) before moving to GPEA in October 2011. He had conduct of the case when there (and a considerable involvement as group legal adviser thereafter).
(2) 11 are (or were) licensees, or employees of licensees, of the Claimants (together "the Licensees' witnesses", none of whom was cross-examined):
(a) Mr Simon Bradbury ("Mr Bradbury");
(b) Ms Clare Earthroll ("Ms Earthroll");
(c) Mr Colin Shairp ("Mr Shairp");
(d) Mr John Parry ("Mr Parry");
(e) Mr John Howard ("Mr Howard");
(f) Mr Andrew Kneale ("Mr Kneale");
(g) Mr Jonathan O'Shea ("Mr O'Shea", who is now employed by the Defendants);
(h) Mr Alan Collinge ("Mr Collinge");
(i) Mr Trevor Michel ("Mr Michel");
(j) Ms Heather Chidgey ("Ms Chidgey", who was slated to attend but in the end did not);
(k) Ms Hannah Pawley ("Ms Pawley", though strictly she works for a telephone answering service retained by the Fine & Country office in Chelmsford and West Sussex).
(3) 7 (none of whom was cross-examined) are members of the public, but who had or have some connection to the Claimants, namely:
(a) Mr Timothy Mullock (the Claimants' bank manager, "Mr Mullock");
(b) Ms Samantha Andrews ("Ms Andrews");
(c) Ms Christine Combellack ("Ms Combellack");
(d) Mr Mark Burton ("Mr Burton");
(e) Mr Nicholas Chaplin ("Mr Chaplin");
(f) Mr Roger Wilkinson ("Mr Wilkinson"), who is the owner and director of an estate agency member of the Guild of Professional Estate Agents which is a business run by Mr Lindley through GPEA;
(g) Mr Donald William Cooke ("Mr D Cooke", Mr J Cooke's father).
(4) 5 are members of the public who, it was common ground, have no connection to any of the parties (each of whom was cross-examined); they are (in the order in which they gave their oral evidence):
(a) Mrs Frances Wilshere ("Mrs Wilshere");
(b) Mrs Patricia Riley ("Mrs Riley");
(c) Dr Pauline Desmond ("Dr Desmond", who, though treated as independent, was a good friend of the owners of the Fine & Country branch in question);
(d) Mr Najib Hasnain ("Mr Hasnain"); and
(e) Ms Claire Appleby ("Ms Appleby").
(5) For comprehensiveness I should record that witness statements on behalf of the Claimants from a further 8 individuals were provided, namely (a) Ms Samantha Mercer, (b) Mr Howard Harris, (c) Ms Lucy Tinkler, (d) Ms Pamela Skeffington, (e) Mr Alan Brough, (f) Mr Michael Luff, (g) Mr Ralph Cross, and (h) Mr Jack Lane-Matthews. However, none of these was called. Except for the fact that in the Defendants' closing submissions the witness statements of each but the last two were used to illustrate the Defendant's submission that the statements had plainly been prepared using cut and paste since key phrases in them were substantially identical, it was agreed that I should not take their evidence into account.
(1) Mr Edward Mead ("Mr Mead"), a director of an independently owned firm of estate agents in Chelsea, who gave evidence of his experience in the field;
(2) Mr Dean Heaviside ("Mr Heaviside"), whom I have already mentioned);
(3) Mr Jeremy Sice ("Mr Sice");
(4) Mr Matthew Bowden ("Mr Bowden");
(5) Mr Darren Neave ("Mr Neave"); and
(6) Mrs Anne-Marie Green ("Mrs Green").
(1) Mr Paul Smith ("Mr Smith") , Chief Executive Officer of the Second Defendant, who was closely involved, and had the final say, in the adoption of the name Fine, and (especially) the style in which it would be and is now written (and who, so I understand, was in Court on at 2 days of the hearing);
(2) Mr Palmer, from the TMC, the branding agency instructed by the Defendants to re-think its branding;
(3) Mr Lucian Pollington ("Mr Pollington"), an executive director of each of the Defendants and General Counsel to the Spicerhaart group as well as Corporate Development Director, who provided 2 witness statements but was not cross-examined.
(1) what they described as "woeful" disclosure had been given of such matters as the totality of the persons interviewed and the number of complaints received in comparison to enquiries made for purchase or sales in F&C offices;
(2) the e-mail and questionnaire evidence from allegedly confused members of the public (a) could not be the subject of cross-examination, (b) was for the most part third hand, since the e-mails comprised reports from the licensees summarising complaints made to them and the questionnaires had not been completed by an allegedly confused member of the public, but by third parties who had not given evidence;
(3) the Claimants had failed to provide the exact complaints and answers provided by the relevant witnesses, and instead put forward highly edited versions in which the witnesses' own evidence was submerged;
(4) the inference from the actual wording of the introductory paragraphs of all the witness statements that interviewees (whether or not ultimately they became witnesses) had been asked questions, described by Mr Platts-Mills QC as "completely leading", on the assumption that they had indeed been deceived, and asked to find and put forward evidence to support an a priori conclusion of confusion;
(5) the witness statements were formulaic and/or expressed in conclusory or "boiler-plate" form, reinforcing the impression that witnesses signed up to notions or speculations put in their heads by others; and
(6) overall, what was put forward as evidence was tainted to an unacceptable degree by the mechanisms or processes under which it was collected and the formulaic way in which it was presented.
"We are currently taking advice as to potential action against Fine and an important element of this consideration is any confusion of the brand in customers' minds.
Would you please, as a matter of urgency, reply to this e-mail with details of any such confusion you are aware of that has occurred with customers of your office. Please let me know if you have evidence of such confusion, i.e. correspondence."
"As you are aware, we are deep into the litigation against Spicer Haart, the owners of Fine, and our lawyers have stressed the importance of gathering as much evidence of cases of confusion in the marketplace as possible.
Many of you have already supplied us with good examples of this but, the stronger and more expansive the level of evidence we can supply, the stronger our case becomes.
As a reminder, we need details of confusion that has arisen between your agency and the Fine brand such as – applicants contacting you to view properties on the market with Fine, vendors calling you to discuss a property they may have on with Fine, anecdotal examples of customers speaking to you having mistakenly contacted Fine, etc. [characterised by Mr Platts-Mills QC as "any old tittle-tattle"].
The more substantial the evidence the better; for example, the provision of names and contact details of customers who have been confused is very good – and it would be ideal to have correspondence from them to this effect. If you know anyone who would be willing to act as a witness, then would you please forward me their contact details.
Also very useful would be any evidence you have of the Fine brand copying your marketing activities and material, either now or when they were trading as FineHaart…"
"The Fine litigation continues to progress towards the High Court hearing in February.
As you know, this is a case of Trade mark infringement and Passing Off and these issues are generally tested by the confusion such encroachment causes.
I know this is causing considerable confusion and I write again to ask you to notify us of any confusion you may encounter.
Please do not underestimate how important this is to the brand – please do not leave it to others – please do not think anything is too small or too trivial – and please do not think your clients are going to have to go to court or be encumbered by officialdom…none of the above are the case.
Please report each and every case of confusion"
"…For the case to succeed, the test is 'does the imitation cause customer confusion?' Clearly it does and we do have a significant weight of evidence to prove this as being the case. However, it appears the confusion is deeper, more widespread and more rooted than just this, in day to day mistakes and it is that volume of mistakes I would like to try to measure between now and the hearing.
To this end I would ask that you copy and use Form 3 in your Fine & Country outlets on each occasion that you experience an instance of confusion…
This is a very serious and difficult litigation which we are bound to pursue in fulfilling our contractual obligations to yourselves and success will terminate their trade mark infringement and passing off of the Fine & Country brand. We do now need every Fine & Country licence holder to fulfil their contractual obligations under their licence – "To take such reasonable action as the Company shall direct in relation to any infringement of the Proprietary Marks.""
(1) As to disclosure, I accept that I have not been provided with detailed analysis to allow me to assess what proportion of total licensees the responses represent, and still less with details of what proportion of licensees' potential customers expressed confusion or appeared to be under a misapprehension. But it seems to me that the Defendants have exaggerated their concerns in this regard. The universe of licensees is not large; and it does seem that a substantial proportion have provided material suggesting some level of confusion (though its seriousness I accept is hard to assess).
(2) I would add that I do not accept that the criteria derived from the Imperial Group case can simply be transcribed or adopted by analogy into the present case. In the Imperial Group case Whitford J was assessing market research survey evidence. The difficulties inherent in such evidence are obvious. The nature of the exercise places a special significance on the way questions are phrased; the answers given may be inexactly stated; those participating seldom have any chance to modify their answers, and seldom are called upon to justify them; and the weight being usually on numbers giving the "right" answer, rather than the quality of the reply, not only the exact way but also the fullest disclosure of the number of persons involved in aggregate, and a record of all answers, is vital. However, I accept that there is a resemblance in the fact that it cannot be directly tested or cross-examined upon.
(3) Overall, the body of hearsay evidence complied and adumbrated in the Schedule attached to this Judgment (there having been no dispute as to the accuracy of the summaries) is suggestive, to my mind, of fairly widespread confusion of what I might call "a low level": that is to say, some of it is more in the nature of somewhat casual surprise, and only a smaller part suggests confusion based on or demonstrative of a false assumption fixed in the mind by the FINE sign or other Fine marketing. In short, I consider the e-mail material to be indicative of noise which may amount to confusion; but it is for the most part untested and, of course, it would not suffice of itself to establish deception. With those caveats, I consider it appropriate to take it into account as background material in my assessment of the more specific and tested evidence of confusion to which I refer later and in forming my own conclusions based on the evidence as a whole and my own initial impressions.
(4) Although some of the same concerns apply by way of weak analogy, I do not think they apply with much force or relevance to evidence given by witness statement where the witness not only formally signs his or her evidence but agrees to be cross-examined upon it having formally sworn or affirmed its truth.
(5) There are nevertheless factors militating against giving great weight to that evidence. Plainly licensees were put under increasing pressure to demonstrate incidents of confusion, documented if possible: and the emphasis was on quantity rather than quality. That increases the danger, which I take into account, that in certain cases 'confusion' was implanted or promoted, and then exaggerated by the process of repetition and recording. Licensees were not really pressed to ascertain how serious the confusion was: they were told to come up with evidence of the fact of it. The focus on quantity, and the pressure to reply, has elicited responses that in some cases barely rise above the anecdotal.
(6) The witness statements were for the most part in formulaic terms, which reinforced the feeling that the evidence was prompted. Their introductions followed a template: although Mr Pryke cavilled at the expression "cut and paste", which was Mr Platts-Mills QC' depiction of various very similar (often identical) paragraphs appearing in several of the Claimants' witness statements. Mr Platts-Mills QC provided a detailed analysis that showed clearly the repeated use of extremely similar phraseology. Mr Pryke was constrained to accept that he and those assisting him "used an approach that was similar." I think that underestimates the degree of repetition. Presentationally at least this was not helpful to the Claimants. The sense I had was of witnesses who were signing up to conclusions presented to them: they lacked any spontaneity or freshness, and certainly conveyed no sense of the witnesses' actual way of speaking.
(7) However, more substantively, I do not accept that the witness statement evidence as a whole is thereby rendered of no weight. The fact is that the present processes do tend to increase the input of legal advisers; and the words of witness statements are seldom their own. The fact that a witness relies on a solicitor to express in more legalistic or formulaic language the witnesses' own views does not of itself signify that the witness does not understand what he is saying, or not believe it to be true. On the contrary, the fact that all the named witnesses put forward by the Claimants were prepared to attend, swear or affirm their evidence and be cross-examined (as I understand to be the position) suggests to me that they were prepared to stand by what was said as being the truth as they perceived it, albeit expressed in a somewhat formulaic way.
Claimants' witnesses
(1) Mr Swaddle, who in seeking to tender for a contract for the supply to Fine & Country of luxury furniture hire services, appears to have researched the company, had confused the offices of Fine in Esher and Dorking for Fine & Country office (in fact they have none there);
(2) Ms Acons, a buying agent who apparently had worked with Fine & Country, and especially its Park Lane office for a number of years, had assumed that the Fine signs she had seen were re-branded versions of Fine & Country, and was said by Mr Pryke to have been shocked that she had confused the brands;
(3) Mrs Buckworth, his sister-in-law, similarly had mistaken a Fine sign for a Fine & Country sign.
"I or representatives of my business have on several occasions encountered circumstances in which members of the general public have experienced confusion in connection with the FINE and Fine & Country brands."
Such evidence barely rises, if it rises at all, above the anecdotal. Of course the exhibited material to some extent speaks for itself: but it is untested, and suffers from its reduced status as hearsay evidence. Even when the evidence given by the witness at least relates to a specific conversation (such as Ms Earthroll's description of her conversations with a Ms J McLeer and a Mr Tilley) the evidence soon reduces to the witnesses' perception of the thoughts and feelings of the other party to the conversation: which, again, cannot be tested. Counsel for the Defendants' decision not to cross-examine such witnesses is understandable, and the savings of time thereby achieved are much to be welcomed.
(1) None was a purchaser or vendor, nor had changed their economic behaviour by reason of their alleged confusion in any way: they were at best supportive by-standers;
(2) Ms Andrews is the sister and Ms Combellack the mother of Mr Richard Combellack, a director of GPEA; and Mr D Cooke is the father of Mr J Cooke, a director of F&CL: their evidence is that of supportive friendly relations, all stated in a formulaic way, and evidencing at best a rather casual, possibly even contrived, confusion falling well short of being reliable evidence of deception;
(3) The evidence of Mr Chaplin and Mr Burton, 2 experienced surveyors/estate agents, that some 2 years after Fine had been advertised in the national press they had almost simultaneously each spotted a FINE board and both made the same assumption that this was a re-branding of Fine & Country is a coincidence so curious it is hard to credit;
(4) Mr Mullock's evidence is of a false assumption he made, whilst driving along, that a FINE for sale sign was a Fine & Country sign: it is irrelevant.
"The reason why I thought it might be connected was that I saw the FINE. I've seen them on the way down on the A12 advertising. I saw the squiggle, and the only reason that I thought it might have been connected was because, if you look at Fine & Country, underneath the picture of the property they've got a dark brown line with the writing of the address, and then, if you look at Fine, theirs is dark brown, not quite the same colour brown, but with Fine and the little squiggle under Fine. Because [both] were in Church Street, I just assumed they were part of…"
In re-examination Mrs Riley clarified that by "squiggle" she really meant "little line".
"Well, the reason I remembered it so distinctly was I was actually very embarrassed because, you know, I had corrected them, so as soon as he explained and we had that conversation then I just – I left. Initially I felt my head between my toes. I was very embarrassed because I felt how could I make that mistake? So I just – Yes, I laughed to myself obviously but, yes, I just left."
"Q Presumably you were asked whether you had any written notes of a meeting with Clare Appleby, or any notes over and above this?
A That's correct.
Q And the answer is, presumably, you do not?
A I don't.
Q So you have been asked to remember a meeting you had with Clare Appleby in August, or July rather, of 2010, and in that time between now and July 2010 you have had dealings with numerous properties from both the buying and selling things, have you not?
A That's correct.
Q As well as running a busy Norwich office?
A That's correct.
Q I want to suggest to you it must have been impossible to remember the details of the meeting you had with Miss Appleby in July 2010, clearly, at this distance of time?
A Some people and some properties stay in your mind quite firmly and this is one and both the person that stayed in my mind.
Q Is that the truth?
A I wouldn't lie."
"Q Could you just have a look at the next page of Miss Appleby's documents, p.4? You see this is a diary entry. You see she has you down as being "Darren from Fine & Country"?
A I do.
Q So if this entry is accurate it would appear that she was under the impression that you were from Fine & Country?
A She may well have been."
"You could tell her until you were blue in the face that we are Fine, she may go home and think you are Fine & Country, even if you have done absolutely everything you possibly can, we do not know. She was a pretty strange witness, if I can put it that way."
Defendants' evidence
168. I would summarise Mr Heaviside's evidence in this regard as follows:
(1) it was his analysis of the failure of the Finehaart brand to develop as had been hoped that caused him to identify the need to detach altogether the "fine" brand from the haart brand;
(2) he told me under cross-examination that with (unidentified) others he felt that the "Fine" name was "a good name to re-use. It had…been around for two years. We thought it was a stronger element and we began to adopt that for the new brand…"
(3) he (and unidentified others) targeted, not Fine & Country, but "specialist high end market operations, such as Savills, Knight Frank, Jackson-Stops, and so on";
(4) "…and the way we do that", he told me, "is to look at the Savills model and how they developed their business over the years, and it's that type of model that we followed, rather than any Fine & Country brand";
(5) Asked why he had in an e-mail expressed concern to change bits of a Fine & Country brochure "to avoid the F&C plagiarism" , he accepted that he wanted to use, and worked from, a handbag style brochure that he had used at Fine & Country; but (he told me) he "wanted to be seen to develop and move on, and that's why I made the specific statement that I wanted to avoid any criticism of plagiarism";
(6) As to lifestyle marketing, in his witness statement he suggested that Fine & Country aped Fine at least partly because of "the successful use of Lifestyle marketing by the Defendant's 'Fine' brand"; but under cross-examination he seemed to accept that Fine & Country had itself used the technique although not with the enthusiasm that he thought appropriate;
(7) He eventually accepted under cross-examination that "in particular" the font adopted for FINE, but also to a lesser degree (he felt) the underlining were similar to the Fine & Country sign, and might ring alarm bells: but as to that he said under cross-examination, when asked to compare two designs for the Fine sign put forward by TMC:
Q If you were worried about p.518 being too close to Fine & Country am I not right in saying that p.533 ought to have been ringing alarm bells loud and clear? This was much too close to Fine & Country.
A I would say all along I preferred a different option. I preferred something that looked more akin to what we developed on the Fine magazine just in terms of preferred style and the colours that we were working with.
Q Oh, I see, so somebody overruled you on the branding on p.533. Was that Mr. Smith who did it?
A I think that the final decisions on the board were taken out of my hands, but again I can understand that for a company that has at the highest level developed every single one of its for sale boards throughout its history.
Q So it was head office who overruled you and went for a design that was closer to Fine & Country than you would like?
A I would have preferred a different design altogether.
Q So the answer is "Yes"?
A The answer is I preferred a different style altogether.
Q And a controlling influence in head office is Mr. Smith, is it not?
A Yes, I would think so."
(8) Thus, he attributed to Mr Smith the decision to adopt the font, serif and underlining in the Fine sign, instead of the flowing cursive "fine" motif that had featured in the magazine which he had explained was the template for the single name "Fine".
(1) Mr Heaviside had as his template the brochures and other material he was familiar with when working for Fine & Country. Thus, for example, it seems to me to be quite clear from the e-mail traffic passing between Mr Heaviside and Mr Ian Palmer of TMC that both had before them a Fine & Country brochure when designing a new style of Fine brochure, and that the references to plagiarism are made in that context and reflect the fact that the one is indeed being derived or fashioned from the other.
(2) Mr Heaviside's suggestion that his template was the Savills model was not supported by any documentary or other evidence, and I do not accept it; I consider it clear that what he wanted was to translate more lifestyle marketing into what was basically the Fine & Country model with which he was so familiar and which he knew had proved so successful.
(3) That this was the plan and the objective was obvious to industry observers at the time. Thus, Mr Heaviside was shown an article in Estate Agent Today for 3rd August 2009, which read in relevant part (under the heading 'Haart ups its game on fine and country properties') as follows:
"National estate agency chain haart has rebranded its prestige offering and is set to take on the Guild's hugely successful Fine & Country brand at its own game.
The former 'fine haart' brand is now to be known simply as 'fine'. It will be rolled out nationally.
It will employ 'lifestyle' marketing methods, as Fine and Country currently does – advertising properties by suggesting how owners might identify with making them their homes.
Heaviside was noted as an "expert in selling a lifestyle" by The Times last year, in an article on premium agency brands…"
(4) In that sense, Fine & Country was his target, even if more generally the objective was to break into the upmarket group of which such firms as Savills and Knight Frank etc., were leading members.
(5) Mr Heaviside knew that the new design of Fine's sign was perilously similar to Fine & Country's brand: so much so that he would not have adopted it, and the decision was passed to and made by Mr Smith.
(1) The decision to rebrand and excise any reference to haart or the spicerhaart name was made because (a) the earlier rebranding (to finehaart) which had been based primarily on the success of 'Foxton Rare' simply had not worked in attracting up-market properties to the haart group and (b) Mr Heaviside was convinced, and he convinced Mr Smith, that any overt association with the haart name was counter-productive in terms of attracting such properties because of haart's down-market image;
(2) Mr Heaviside's model was Fine & Country, whom he had worked with successfully at Tops, and which as a brand had been extremely successful in attracting up-market properties to local agencies which otherwise were at an almost insuperable disadvantage compared to the traditional firms with a national presence and London offices;
(3) Mr Smith had long admired and coveted Fine & Country's success in bringing up-market properties into local agencies: when rebuffed finally in his efforts to buy a share of the enterprise he determined to emulate their success, if necessary by copying their approach: and the fact that Mr Heaviside had Fine & Country as his model suited this purpose well;
(4) Mr Smith was involved closely throughout in the development of Fine and its new signage, and encouraged TMC to move away from Mr Heaviside's preference for an italicised flowing 'fine' sign to a font and a design strongly reminiscent of Fine & Country's existing sign;
(5) As they worked on various designs, TMC (and, I suspect, Mr Heaviside) had real concerns, which they expressed (including to Mr Smith) that the design was becoming "too much like Fine & Country";
(6) but Mr Smith rejected these concerns, and the FINE sign eventually selected, with its similar font, capitalisation of the word, underlining of the word, use of gold for the underline and use of 'country' in the strap line was (to my eye at least) probably the closest to the Fine & Country logo of any of the designs put forward;
(7) I infer that Mr Smith was well aware of the resemblance, and the possibility that customers would mistake one for the other; if that was not his intention, he certainly was aware of the risk, and consciously decided to live dangerously;
(8) I accept, and find, that the newly branded FINE business was intended by its Chief Executive and majority owner, Mr Smith, to compete directly with Fine & Country, and obtain for haart's local agencies the same kind of up-market business that the Fine & Country brand had secured for its licensees, using a logo so designed as to carry a real risk or "reasonably foreseeable result" (per Lord Diplock in Warnink v Townend & Sons (Hull) Ltd [1979] AC 731 at 742D-E), of which Mr Smith was aware, that customers might assume it to be connected with, or a new version of, the Claimants' brand and logo;
(9) The FINE brand was thus calculated (in the sense used by Lord Diplock) to put customers in mind of the Fine & Country brand and assume a connection between the two; and the subjective intention of at least the First Defendant (through Mr Smith) was to sever any apparent connection with Haarts (which had been identified as a drag) and, taking the risk of confusion but not subjectively intending to deceive, to compete with Fine & Country licensees by marketing up-market properties through a web of predominantly rural estate agency offices.
(10) I do not consider that either the evidence or the inferences that I may properly draw from it having regard to the conscious decision of the Defendants not to call either Mr Smith or Mr Palmer, justify a finding of intentional deception (and that is not indeed pleaded or pursued). Put another way, the presumption must be that they (subjectively) considered that the differences were sufficient to avoid deception but (to borrow words from Robert Walker J in United Biscuits (UK) Ltd v Asda Stores Ltd [1997] RPC 513 at 538) they "had that risk in mind, and….miscalculated the degree of "challenge" or "matching" or "parody" that was tolerable without the product being actually deceptive (in the material sense)."
"it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader's goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant's goodwill for himself the court will not "be astute to say that he cannot succeed in doing that which he is straining every nerve to do": see Slazenger & Sons v Feltham & Co. (1889) 6 RPC 130 per Lindley LJ. A trader who has taken the decision to live dangerously is in a different position, however. He has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away. Further, it must be kept firmly in mind that the ultimate question whether or not the similarity between the trade marks and the sign is such that there exists the likelihood of confusion is one for the court to determine in the light of its assessment of all material factors, of which the intention of the defendant, as a person who knows the market in which he is offering his goods and services, is only one."
"I cannot escape the conclusion that, while aiming to avoid what the law would characterise as deception, they were taking a conscious decision to live dangerously. That is not in my judgment something that the court is bound to disregard."
"…As you are no doubt aware, the general enquirer seems to be confused and it takes quite a bit of explanation before they grasp the difference between the two brands.
These enquiries take a degree of time for our employees to investigate and respond to. Being professionally committed and helpful they will naturally take the time to help the caller."
Q Do you remember getting an email that looks like the email at the bottom of p.9, asking for evidence or instances of confusion from Angela [a Fine & Country employee)?
A I do indeed, yes.
Q At the top of the page, there is a letter you have written back to her. You say:
"I can report we had a number of calls/enquiries regarding a property which is currently on the market with Fine in Petersfield".
Then you say:
"As you are no doubt aware, the general enquirer seems to be confused".
Stopping at that point, why do you say "As you are no doubt aware"?
A Just a figure of speech, I suppose. It doesn't indicate anything in particular. It's backing up what I'm saying in my email, that there is obviously confusion with that particular enquirer.
Q You say:
"The general enquirer seems to be confused, and it takes quite a bit of explanation before they grasp the difference between the two brands".
Why do you say "It takes quite a bit of explanation before they grasp the difference between the two brands"?
A I just felt that, with the enquiries that had been made on this particular property, there was. Fine was a very new brand at that point. We're going back to February 2010. It was new in the area, and there was, with people that I spoke to on this particular property, obviously confusion, to some degree.
Q Confusion in the sense that people needed quite a bit of an explanation before they could understand that Fine was not the same as Fine & Country?
A I wouldn't say, my Lord, that they required quite a bit of explanation. They required an explanation. That's obviously, because they might have assumed that they were calling Fine & Country about that particular property. But, once explained, people did grasp the fact that that was the explanation and it was clear that there were two different brands here, and they had contacted the wrong office.
Q When you say you would not say it took quite a bit of explanation, that is exactly what you did say in the email. You said: "It takes quite a bit of explanation".
A Reading my email, it's just my words maybe. I don't remember it going on in any degree of explanation to any particular person, but it took an explanation, is what I was trying to say.
Q Yes.
A It required an explanation.
Q It was more than simply saying: "No, we are Fine & Country and they are Savills". The two names are completely different. That would be very easy to explain. What I wanted to suggest to you is that what you re saying in this email is it takes quite a bit of explanation because the enquirers were having trouble in understanding that Fine and Fine & Country were not the same.
A Reading my email, my Lord, I don't see that it says that people didn't grasp it. I am simply saying that it took an explanation. I am not saying that after that explanation there was still a confusion. A number of people have asked -- in my experience a number of people have asked me personally because I have been involved in those businesses: "Are the businesses the same?" Once explained it is quite clear that they are two different entities.
Evidence of damage to goodwill
"Q … You have lost some big agencies and gained some small agencies?
A Yes, that would be logical conclusion to draw from that. It is on the main part of it. It is considering -- to put it in context of the market place that we have been through the brand has remained amazingly stable actually. The brand and so our rise was quite meteoric and I think that we went through a bumpy patch say in 2008 as did the whole of the estate agency industry and since then I would say actually that the brand has continued to grow but quite stable on ----
Q Grow in a steady way?
A Yes.
Q Steady and satisfactory manner?
A Not very exciting but steady and satisfactory, yes.
Q Without any big marketing or effort on your part?
A It's a doddle. No, I'm being facetious. It's actually we work tremendously hard. As a company our whole culture is of small business determination and hard work.
Q And despite the arrival of my clients in 2009?
A Yes, my Lord.
Q So despite the arrival of my clients and whatever it is they have been doing, your company has sailed merrily on on its way?
A Yes, my Lord.
Q It certainly has not had any major effect on your activities?
A No, my Lord.
Q Now, would you go to tab 9 in bundle B and go to paragraph 43 and there are some figures there and so he is talking about the start of Fine, and he says that they rebranded approximately 40-50 Finehaart properties, so they changed those from Finehaart to Fine by the end of 2009:
"We had listed 149 in total by the end of 2009. 2010 we listed 468. In 2011 that figure had risen to 778."
Q Now, does that sound like a reasonable rate of growth and getting a business going? Do you have any view on that?
A I do have a view on it. My Lord, my view is that for the amount of money that has been apparently, from what I can see, thrown at this project I think it is a surprisingly small penetration into the market place I am afraid."
Defendants' supplemental argument: Claimants are not legal owners of goodwill and cannot sue
"To hold any goodwill relating to the Brand generated by the Member as bare trustee for the Company and shall at the request of the Company immediately and unconditionally assign (with full title guarantee) any interest or goodwill or other interest in the Brand to the Company."
(1) The Claimants have no goodwill of their own because they have no business and certainly no business as an estate agent.
(2) The only goodwill that has been generated belongs to the Claimants' Licensees, and they hold this on trust for FCEA.
(3) As equitable owners only of any goodwill the Claimants cannot obtain final relief whether by way of damages or injunction (see Performing Right Society Ltd. v. London Theatre of Varieties [1924] AC 1 at pages 14-15).
(4) In order to bring a claim for passing off FCEA must perfect its legal title by taking an assignment of the goodwill. This it cannot do because it has no business to which that goodwill relates (see The Law of Passing Off, Wadlow 4th ed., ¶3-192). Any assignment of goodwill from the Licensees to the Claimants would amount to an assignment in gross and would sever the goodwill from the ownership of the business to which it relates (see Pinto v Badman (1891) 8 RPC 181 at 194).
(5) Accordingly, the claim for passing off fails.
(1) The fact that provision is made in the licence agreement for any goodwill generated by them in relation to the F&C brands to be held on trust does not signify that only the licensees generate such goodwill. On the contrary, the Claimants generate goodwill in their own right, created in consequence of their licensing activities, their Park Lane Office, their publicity material and the awards they have won, all of which enable them to charge licensees. They sue to protect that goodwill not as equitable, but as legal, owners.
(2) In any case, the rule requiring joinder of equitable owners is a rule of practice and not of law: as stated in Copinger and Skone James on Copyright, 16th ed. at 21-24:
"A person entitled to the copyright in equity may start an action and seek interim relief relying on his equitable title. In general, however, he will not be entitled to final relief unless he has either joined the legal owner as a party (co-claimant or defendant) or obtained an assignment of the legal title. The purpose of the rule is to protect the defendant from the possibility of being sued again by the legal owner, in particular a bona fide assignee of the copyright for value without notice of the equitable owner's rights. It follows that there may be cases where the Court can be satisified that there is no real possibility of a claim by a legal owner or for some other reason the rule, which is a rule of practice, not law, can be relaxed. It is thought such cases will rarely arise." (Reference is made to, amongst other cases, the Performing Right Society case, at page 18.)
Conclusion: passing off
(1) the e-mail material is indicative of confusion, but is not compelling evidence of it, and it is not easy to distinguish between muddle and really substantial and operative confusion;
(2) the witness statements of the directors and licensees (which exhibit much of that material) goes little further;
(3) the witness statements of persons with a connection with the Claimants is devalued for that reason;
(4) though, for the reasons I have set out in paragraph 147 above I do not consider I should attach weight to the evidence of Mr Hasnain, I do consider that the evidence of 4 of the 5 apparently independent witnesses for the Claimants who were cross-examined does provide support for a finding of confusion and deception (which in the case of Ms Appleby was acted upon);
(5) so too, to my mind, does the evidence that the Defendants decided to "live dangerously": the risk of confusion was clearly there, and they appreciated it even if they thought they had done enough to avoid deception;
(6) taken together with Mrs Green's evidence, the evidence as a whole is consistent with potential customers going beyond wondering and into making false assumptions: and that is such as to cross over to deception, even if it was not so deep-rooted that it could not be dispelled or corrected;
(7) I am entitled to come back to my own initial and abiding assessment: that the similarities between the F&C Marks and the Fine sign, and (perhaps ironically) the very unusual use by the First Defendant of the single descriptive word 'Fine' to denote its business, which to my mind calls to mind and easily leads to confusion with 'Fine & Country', are confusing and deceptive and/or are likely to confuse and deceive; and that erosion and damage to the Claimants' business is likely in consequence. Even if the support in the evidence is not strong, in my view it is, in the round, strong enough, and it is consistent with, and indeed supportive of, that assessment;
(8) accordingly, on the balance of probabilities, if the Defendants are not restrained a substantial number of potential customers of licensees of the Claimants will be misled into dealing with the First Defendant in the belief (even if later dispelled) that they are dealing with the Claimants.
Trade Mark infringement claims
Article 9
Rights conferred by a Community trade mark
1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
(1) The imitation of the first part of the name of the Claimants, including the font, capitalisation and underlining, alone and in conjunction with the use of the word "country" in the strapline and elsewhere, leads to an unjustified association with the Claimants' business;
(2) This unfairly dilutes the Claimants' trade marks, causes tarnishment to those marks because of the Defendants' association with more down market properties and generally lowers their reputation.
(3) Furthermore it constitutes an unfair free-riding on the goodwill and reputation developed by the Claimants over a period of 10 years.
The Defendants' Part 20 claims for revocation
Article 7
Absolute grounds for refusal
1. The following shall not be registered:
...
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
...
3. Paragraph 1(b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it.
Article 52
Absolute grounds for invalidity
1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:
(a) where the Community trade mark has been registered contrary to the provisions of Article 7;
...
2. Where the Community trade mark has been registered in breach of the provisions of Article 7(1)(b), (c) or (d), it may nevertheless not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
"55 That public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods. Therefore, marks consisting exclusively of such signs or indications are not eligible for registration unless article 3(3) of the Directive applies."
[61] ... First, for a trade mark to possess distinctive character, it must serve to identify the goods or services in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish the goods or services from those of other undertakings: ...
[62] Secondly, the distinctive character of a mark must be assessed by reference to: (i) the goods or services in respect of which registration is applied for; and (ii) the perception of the average consumer of those goods or services, who is deemed to be reasonably well informed and reasonably observant and circumspect: ...
[63] Thirdly, the criteria for assessment of distinctive character are the same for all categories of trade marks, but nevertheless the perception of the relevant public is not the same for all categories of trade marks and it may therefore be more difficult to establish distinctive character in relation to some categories (such as shapes, colours, personal names, advertising slogans and surface treatments) than others: ...
[64] Fourthly, in assessing whether a trade mark has acquired a distinctive character the competent authority must make an overall assessment of the relevant evidence, which in addition to the nature of the mark may include: (i) the market share held by goods bearing the mark; (ii) how intensive, geographically widespread and long-standing the use of the mark has been; (iii) the amount invested by the proprietor in promoting the mark; (iv) the proportion of the relevant class of persons who, because of the mark, identify the goods or services as emanating from the proprietor; (v) evidence from trade and professional associations; and (vi) (where the competent authority has particular difficulty in assessing the distinctive character) an opinion poll. If the relevant class of persons, or at least a significant proportion of them, identifies goods or services as originating from a particular undertaking because of the trade mark, it has acquired a distinctive character: ...
[65] Fifthly, with regard to the acquisition of distinctive character through use, the identification by the relevant class of persons of the product or service as originating from a given undertaking must be as a result of the use of the mark as a trade mark. The expression "use of the mark as a trade mark" refers solely to use of the mark for the purposes of the identification, by the relevant class of person, of the product as originating from a given undertaking: ...
(1) Whether a sign possesses distinctive character, inherent or acquired, is a question of fact;
(2) The assessment of inherent character depends upon the mark itself. This does not mean that the sign or mark is assessed in a vacuum: the trade of the goods or services in question provides the context;
(3) The assessment of distinctive character acquired through use requires an overall assessment of the way in which the mark has been used to ascertain whether the mark has become distinctive.
(1) What is under consideration is trade marks in relation to the business of an estate agency, not trade marks in relation to the properties themselves.
(2) It is correct that estate agents' sales particulars may describe a property as being "fine" or in the "country". However even in relation to the description of a property, the combination of the words Fine & Country is striking and unusual. This is all the more so when used as the name of an estate agency business. Indeed, as noted above, Mr Heaviside himself states that when considering the move from fine haart to Fine, he had in mind the choice of a "distinctive" name.
(1) The disclosure contains numerous examples of references to the Fine & Country business by others. In every case the words are used to denote and identify the Claimants' business.
(2) The evidence of the witnesses of confusion confirms that they regard the name Fine & Country as denoting the Claimants.
(3) Numerous industry awards recognise the Fine & Country brand.
(1) First, the Claimants themselves trust the marks to identify themselves. This is not a case where the claimants have a primary trade mark used in conjunction with a secondary perhaps more descriptive trade mark. The only means relied upon by the Claimants to identify their business to the trade and the public are the trade marks themselves.
(2) It would be surprising if licensees were willing to pay substantial sums year after year for the right to use trade marks which are not distinctive.
(3) No witness was called who was under the impression that the Fine & Country name and logo was anything other than distinctive. Moreover none of the 5 witnesses of confusion was cross-examined on the question of whether they thought the name was descriptive.
(1) The essence of the F&C Marks is the description 'Fine & Country', both visually and most certainly aurally. In the context of a market where combinations of words such as 'fine' or 'finest' and 'country' are common place descriptions (as I accept is the case) there is nothing to detract from the descriptive nature of the F&C Marks;
(2) The degree of descriptiveness is such that they are incapable of distinguishing properly, and render the F&C Marks devoid of distinctive character: Mr Platts-Mills QC cited in this regard Jacob J's judgment at first instance in Philips Electronics BV v Remington Consumer Products [1998] RPC 283 at 301-302 and the judgment of Aldous LJ in the Court of Appeal [1999] RPC 809 at 818.
(3) The test should be whether the words or mark are by reason of their collocation or some other factor incapable of application to the goods or services of anyone else or (if distinctiveness is claimed to have been acquired) have become so "by nurture, not nature" so as to connote the goods of a particular trader: Mr Platts-Mills QC again cited the Philips Electronics case;
(4) Alternatively, as to acquired distinctiveness, another way of approaching the matter is to ask whether the descriptive words have lost their descriptive meaning: Mr Platts-Mills QC quoted Viscount Maugham in The Shredded Wheat Co. Ltd v. Kellogg Co. of Great Britain Ltd (1940) 57 RPC 137 at 147-148:
"[I]t may be useful to cite the statement by Mr Justice Parker in re Gramophone Company's Application [1910] 2 Ch 423 at page 437 since he was a master in this branch of law: "For the purpose of putting a mark on the register, distinctiveness is the all-important point, and in my opinion, if a word which has once been the name of the article ought ever to be registered as a trade mark for that article, it can only be when the word has lost, or practically lost, its original meaning. As long as the word can appropriately be used in a description of the articles or class of articles in respect of which a trade mark is proposed to be registered, so long, in my opinion, ought the registration of that word for those articles or that class of article to be refused."
(5) and quoted Jacob J in the Treat case (British Sugar PLC v. James Robertson & Sons Ltd [1996] RPC 281 at 302 and 306:
"it is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader..."
….In the case of common or apt descriptive or laudatory words compelling evidence is needed to establish this...it must be shown in a case of this sort that the mark has really become accepted by a substantial majority of persons as a trade mark is or is almost a household word."
"if in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services".
(1) the Claimants expressly disavow that they operate any form of franchise operation: they leave their licensees to operate as independent companies under the F&C banner (either exclusively or as an adjunct or part of their business);
(2) the objective of these independent licensees in using the F&C Marks is (quoting from Mr Platts-Mills QC's Closing Submissions) "calculated to educate members of the public to believe that the business and associated names and descriptions are in fact the business of that licensee, used to identify a class of properties offered by the Licensee, and not the brand of the Claimants or any of them";
(3) the independence afforded to licensees is such that the Claimants neither would nor could exercise proper control over the use of their Marks; the product is in truth that of the licensees and not the Claimants;
(4) the effect is to render the F&C Marks deceptive as to quality and origin: it may mean as many different things as there are different licensees using the Marks, and there is no control of quality; such as in each case to mislead the public.
(1) Although the arrangements differ from or do not amount to a franchising operation, and licensees are permitted greater latitude, nevertheless I am satisfied that in principle and in practice (on the evidence) the Claimants retain and exercise a considerable degree of control (including quality control) over licensees, ensuring on the whole (on the evidence made available) reasonable and appropriate consistency of use and quality of service;
(2) The Defendants' arguments as to misleading origin, if accepted, would apply to many, if not most, licensee or franchise operations: and yet section 28 of the TMA makes special provisions for licensees: there may be difficult questions in a given case as to the attribution and ownership of goodwill arising from license or franchise operations: but on the facts here, they do not arise, since all goodwill arising either directly enures to or is held on trust for one or other of the Claimants under the contractual terms;
(3) Ultimately this ground of revocation raises a question of fact and I am not satisfied that the factual basis for it is established: a reasonably well informed and reasonably observant and circumspect consumer (be it a prospective licensee or a vendor or purchaser) is, in my judgment, unlikely to be misled as to origin or confounded as to quality;
(4) As a background observation the application of the relevant provision is relatively rare (and see Kerly at 10-137): and I am satisfied that this is not such a rare case.
(1) It is asserted that the First Claimant, which files accounts as a dormant company, does not trade; neither does the Second Claimant, which also files accounts as a dormant company; and none of the Claimants has made any use of the UK Marks;
(2) The purported licence from the First Claimant to FCEA can have no effect, both being inactive or dormant;
(3) Even if such licence has effect, under its terms it is an exclusive licence and
(a) the First Claimant is contractually prevented from granting any licence to any person other than FCEA;
(b) FCEA may grant sub-licences but sub-licensees may not grant sub-sub- licenses; so that
(c) The Claimants have by contract prevented themselves from granting any licence to GPEA.
(4) It is pleaded that in the premises the UK Trade Mark has not been put to genuine use, either by the First Claimant or with its consent, throughout the period 8 February 2007 to 8 February 2012.
"46. - (1) The registration of a trade mark may be revoked on any of the following grounds-
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;"
"(2) For the purposes of subsection (1) use of a trade mark includes use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered …"
(1) Prior to 2008, licences to use the F&C marks were purportedly granted by the First Claimant. However, on 31 May 2006 the First Claimant formally ceased to trade and since May 2006 it has filed accounts which state that it has not traded. The Defendants contend it cannot now claim to have been trading, and cannot therefore be the source of consent to use.
(2) The Second Claimant, which is the parent company in the group, is now and since about 2005/2006 has been engaged in the business of purportedly licensing the use of the F&C Marks and granting other rights to licensees. It has done this in the name of the First Claimant until about 2008, and thereafter in the name of the Third Claimant.
(3) However, the Third Claimant has never traded, and since its incorporation in 2008 its accounts have stated it to be dormant.
(4) On 18 November 2010, by an agreement in writing ("the Master Licence Agreement") the First Claimant purportedly granted the Third Claimant an exclusive licence in the UK in respect of the F&C Marks.
(5) If that agreement is valid (and the Defendants contend it was not since neither party was trading or otherwise undertaking business) the exclusive licence granted by it (a) prevents the First Claimant granting anyone else any licence and (b) by an express term within it permits the Third Claimant to grant sub-licences but bans the grant of sub-sub-licences.
(6) Thus, the Defendants contend (a) that provides another reason why the source of any licence other than to the Third Claimant cannot have been the First Claimant; (b) any licence given by the Third Claimant might have sub-licensed the Second Claimant, but then the Second Claimant was barred from itself granting a licence (since that would be a prohibited sub-sub-licence); so that
(7) No valid consent to the use of the F&C Marks by the licensees during the period in question can be shown.
(1) To succeed in the argument the Defendants must show, amongst other things, that the First Claimant could not and/or did not give its permission for use.
(2) The Master Licence Agreement expressly formalised the position for the future and ratified what had happened previously (the grant by the Third Claimant of UK licences).
(3) There no longer being a dispute as to the First Claimant being properly registered as the owner of the F&C Marks the formalisation of matters for the future, at the least, comprised and made clear the registered owner's permission to use the F&C Marks.
(4) That neither the First nor the Third Claimants were or are trading was and is no impediment: that presentation may be right or it may be wrong but it does not operate as any bar to the First and Third Claimants in fact trading: if the presentation in the accounts is false, that may give rise to complaint, but does not remove the power to do business.
(5) Even if the presentation in the accounts is to be treated as improper or unlawful (and that has not been argued) that would not preclude the First Claimant relying on the Master Licence Agreement: it would not thereby be relying on its own wrong or forced to plead its own impropriety.
Are the F&C Marks being infringed?
Article 9(1)(b) and section 10(2)
(1) The provision requires (a) identification of the sign used by the defendant and a determination of the goods and services (if any) in relation to which he is using it and (b) a comparison to a notional and fair use of the registered mark in relation to all of the goods and services covered by the registration.
(2) The goods or services the subject of the registered mark must be identical or similar to those the subject of the alleged infringing use.
(3) Similarity connotes the existence, in particular, of elements of visual, aural or conceptual similarity.
(4) It is the overall impression of the registered mark, bearing in mind its distinctive and dominant components, which counts: it is the totality of the mark which gives it its distinctiveness. Thus, it is not legitimate to dissect the mark and compare parts of it with the sign alleged to infringe.
(5) There can only be infringement where there exists a likelihood of confusion; but confusion includes a likelihood of association, and proof of likelihood suffices: it is not necessary to prove actual confusion at all.
It was accepted by the Defendants that "the respective services are identical." So the case depends upon the degree of similarity and the likelihood of confusion or association.
"[51] The general approach to be adopted in assessing the requirement of a likelihood of confusion under the Regulation and Directive has been considered in a number of important decisions of the Court of Justice including Case C-251/95 Sabel BV v Puma AG [1997] ECR I-6191, Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn- Meyer Inc [1998] ECR I-5507, Case C-342/97 Lloyd SchuhfabrikMeyer & Co GmbH v Klijsen Handel BV [1999] ECR I-3819, Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861, Case C-3/03 Matratzen Concord GmbH v GmbG v Office for Harmonisation in the Internal Market [2004] ECR I-3657, Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551 and Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529.
[52] On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the determination of many of the disputes coming before it:
(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;
(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion."
"[275] There is an important difference between the comparison of marks in the registration context and the comparison of mark and sign in the infringement context, namely that the former requires consideration of notional fair use of the mark applied for, while the latter requires consideration of the use that has actually been made of the sign in context. This was established by the judgment of the Court of Justice in Case C-533/06 O2 Holdings Ltd v Hutchison 3G UK Ltd [2008] ECR I-4231. In Och-Ziff Management Europe Ltd v OCH Capital Ltd [2010] EWHC 2599 (Ch), [2011] ETMR 1 at [77]-[78] I held that this involved consideration of the circumstances of the use of the sign complained of, and not consideration of circumstances prior to, simultaneous with or subsequent to the use of the sign.
[276] I also held in Och-Ziff at [79]-[101] that Article 9(1)(b) of the Regulation extends to "initial interest confusion", that is to say, confusion on the part of the public as to the trade origin of the goods or services in relation to which the impugned sign has been used arising from use of the sign prior to purchase of those goods or services, and in particular confusion arising from use of the sign in advertising or promotional materials. This conclusion applies equally to Article 5(1)(b) of the Directive."
"[85] These paragraphs were considered by Arnold J in Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11. The case concerned a claim by Och-Ziff Management that Och Capital had infringed its Community trade mark registrations for the marks OCH-ZIFF and OCH by the use of the sign OCH Capital. After referring to the paragraphs of the decision of the Court of Justice in O2 Holdings set out above, he continued at [77]-[78]:
"77. The question which arises is this: how far do the "context" referred to by the Court at [64] and the "circumstances characterising that use" referred to by the Court at [67] extend? Counsel for Och-Ziff submitted that the context and circumstances were limited to the actual context and circumstances of the use of the sign itself. Thus, in the O2 case itself, where the sign was used in a comparative advertisement, the context was the whole of the comparative advertisement, but no more. By contrast, counsel for the defendants submitted that the context and circumstances included all circumstances relevant to the effect of the use of the sign, including circumstances prior to, simultaneous with and subsequent to the use of the sign.
78. In my judgment the context and circumstances are limited to the actual context and circumstances of the use of the sign itself. The Court of Justice explicitly said at [64] that the referring court was right to "limit its analysis" to the context in which the sign was used. Furthermore, it referred at [67] to the circumstances "characterising the use", not to the circumstances more generally. Thus circumstances prior to, simultaneous with and subsequent to the use of the sign may be relevant to a claim for passing off (or, under other legal systems, unfair competition), but they are not generally relevant to a claim for trademark infringement under art.9(1)(b) . In saying this, I do not intend to express any view on the question of post-sale confusion referred to below."
[86] It is not entirely clear to me what Arnold J and the parties had in mind by the phrase "circumstances prior to, simultaneous with and subsequent to the use of the sign" but it must, I think, be seen in light of the particular and rather specific issue in that case, namely whether Article 9(1)(b) extended to confusion arising from use of the sign in advertising and promotional materials, so called 'initial interest confusion', whether or not any sale resulted and whether or not the consumer remained confused at the time of any such sale. The judge held that initial interest confusion was actionable. At least in the circumstances of that case, it mattered not that it was dispelled at a later time.
[87] In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context.
[88] It necessarily follows that I would reject Mr Mellor's first submission. The judge approached the issue of the likelihood of confusion arising from the use of the straplines entirely correctly. The average consumer would see the signs "spec saver" and "Spec savings" in the context of the straplines and, indeed, the posters and other materials on which they were used as a whole, and the judge was right to consider them on that basis."
(1) as a matter of overall impression the mark and the sign are sufficiently similar to be likely to lead, and in my assessment have led, to confusion on the part of the average consumer;
(2) in particular, the same font, the gold underlining, the capitalisation, and the overall impression created by the two make it all too easy to mistake the one as the other, at least when the two are not laid out together for simultaneous comparison: and the strapline reference to "Country" in the strapline increases the similarities; that was my original instinctive and then more considered assessment; it abided with me, and was reinforced by the evidence (even acknowledging and taking into accounts its flaws).
Article 9(1)(c) and Section 10(3)
"37. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, of itself, sufficient to establish the existence of one of the types of injury against which Article 5(2) of Directive 89/104 ensures protection for the benefit of trade marks with a reputation (see, to that effect, Intel Corporation, paragraphs 31 and 32).
38. Those types of injury are, first, detriment to the distinctive character of the mark, secondly, detriment to the repute of that mark and, thirdly, unfair advantage taken of the distinctive character or the repute of that mark (see, to that effect, Intel Corporation, paragraph 27).
39. As regards detriment to the distinctive character of the mark, also referred to as 'dilution', 'whittling away' or 'blurring', such detriment is caused when that mark's ability to identify the goods or services for which it is registered is weakened, since use of an identical or similar sign by a third party leads to dispersion of the identity and hold upon the public mind of the earlier mark. That is particularly the case when the mark, which at one time aroused immediate association with the goods or services for which it is registered, is no longer capable of doing so (see, to that effect, Intel Corporation, paragraph 29).
40. As regards detriment to the repute of the mark, also referred to as 'tarnishment' or 'degradation', such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark's power of attraction is reduced. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
41. As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.
42. Just one of those three types of injury suffices for Article 5(2) of Directive 89/104 to apply (see, to that effect, Intel Corporation, paragraph 28)."
"112. Thus, the issue raised by Jacob L.J. at para.91 of his judgment in L'Oréal v Bellure, which led him to pose the fifth of the referred questions, has been answered, in essence, to the effect that an advantage obtained by the third party from the use of a similar sign, which is neither confusing nor otherwise damaging, is unfair if the advantage is obtained intentionally in order to benefit from the power of attraction, the reputation and the prestige of the mark and to exploit the marketing effort expended by the proprietor of the mark without making any such efforts of his own, and without compensation for any loss caused to the proprietor, or for the benefit gained by the third party.
….
136. … It is not sufficient to show (even if Whirlpool could) that Kenwood has obtained an advantage. There must be an added factor of some kind for that advantage to be categorised as unfair. It may be that, in a case in which advantage can be proved, the unfairness of that advantage can be demonstrated by something other than intention, which was what was shown in L'Oréal v Bellure. No additional factor has been identified in this case other than intention.
137. The question of unfair advantage has to be considered in the round, using a global assessment as indicated in Intel in para.79 of the Court's judgment. As Advocate General Sharpston said at para.65 of her Opinion in Intel, unfair advantage is the more likely to be found if the mark is more distinctive and if the goods or services are more similar. The Board of Appeal in Mango also said that unfair advantage is the more likely where there is greater similarity of goods as well as where the mark is more distinctive, but that was a case where the mark was identical, and strongly distinctive, and the goods were not the same but they were in an associated or overlapping field. The Court in L'Oréal v Bellure also referred to the importance of the strength of the reputation of the mark, and the strength of the reminder, reiterating what had been said in Intel."
"[141] In my judgment these cases do reveal a development by the Court of Justice of its jurisprudence on the scope of Article 9(1)(c) of the Regulation. They establish that a proprietor of a trade mark with a reputation is not necessarily entitled to prohibit the use by a competitor of his mark in relation to goods for which it is registered even though the mark has been adopted with the intention and for the purpose of taking advantage of its distinctive character and repute, the competitor will derive a real advantage from his use of the mark, and the competitor will not pay any compensation in respect of that use. Consideration must be given to whether the use is without due cause. Specifically, the use of a trade mark as a keyword in order to advertise goods which are an alternative to but not mere imitations of the goods of the proprietor and in a way which does not cause dilution or tarnishment and which does not adversely affect the functions of the trade mark must be regarded as fair competition and cannot be prohibited."
"Q If you were worried about p.518 being too close to Fine & Country am I not right in saying that p.533 ought to have been ringing alarm bells loud and clear? This was much too close to Fine & Country.
A I would say all along I preferred a different option. I preferred something that looked more akin to what we developed on the Fine magazine just in terms of preferred style and the colours that we were working with.
Q Oh, I see, so somebody overruled you on the branding on p.533. Was that Mr. Smith who did it?
A I think that the final decisions on the board were taken out of my hands, but again I can understand that for a company that has at the highest level developed every single one of its for sale boards throughout its history.
Q So it was head office who overruled you and went for a design that was closer to Fine & Country than you would like?
A I would have preferred a different design altogether.
Joint liability of the Second Defendant
"…it is frequently sought to join as a defendant the parent of the company actually carrying on the allegedly infringing acts, either in order to be able effectively to enforce any award for damages, or for disclosure. In such cases, it is not enough to show that the parent company knew and approved of the acts concerned, or even that it knowingly assisted the conduct in question. It must be shown either that it procured or induced or conspired in the commission of the conduct, or was involved in its commission." (Reference is made to Credit Lyonnais v ECGD [1998] 1 Lloyd's Rep. 19 and Sepracor v Hoechst Marion Roussel [1999] FSR 746.)
"Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough that the parties combine to secure the doing of acts which in the event prove to be infringements."
(1) The cross-examination of Mr Heaviside showed the close and ultimately decisive involvement of Mr Smith and other members of the parent company in the decision to use the name Fine and the way in which it was used;
(2) In point of fact the group acts as a whole, with the parent company using various subsidiaries in effect as divisions within a co-ordinated whole directed by it through (especially) Mr Smith.
(1) The Spicerhaart group website at http://www.spicerhaart.co.uk makes the following statements and references to the name "Fine":
a) "We operate five well-known estate agencies in England – haart, Spicer McColl, Haybrook, Felicity J Lord and Fine".
b) "Fine" is stated to be one of the "divisions" of the group.
c) At the bottom of each or most pages of the Group Website, there is a list of estate agency brands operated by the group, which include the Fine name and Logo complained of above.
d) There is a page dedicated to the business of "Fine Estate Agency" at http://www.spicerhaart.co.uk/Spicerhaart-Fine.aspx". It contains:
a link to the Fine.co.uk website;
the following statements:
"Spicerhaart's fine estate agency delivers an exceptional service for unique and individual homes at the upper end of the market".
e) The Group Website provides details of Mr Dean Heaviside which can be accessed on the page accessible at http://www.spicerhaart.co.uk/spicerhaart-executive.aspx. The website states that he is the "Fine Divisional Director" and that he is "responsible for our Fine division, Spicerhaart's estate agency for prestige properties ...".
f) The "about us" page on the www.fine.co.uk website states:
"Welcome to Fine, our exceptional estate agency service for high quality homes, brought to you by the UK's largest independent estate agency group."
g) Okotoks most recent accounts for the years ending 31 December 2010 and 31 December 2009, show that about £5.9M and £3.1M respectively were owed by it to Spicerhaart Group and other members of the group. Such debts must have arisen as a result of the support given to the subsidiary by the parent, and such support would not have been given unless the two were working pursuant to a common design.
h) Fine's headed notepaper describes Spicerhaart Limited as "a Spicerhaart Group Business";
i) Yet the Agency Agreements are in the name of Spicerhaart Estate Agents Limited.
j) Most of the responses to ASA complaints have been answered in the name of Spicerhaart Group Limited: and I note, for example, that the advertisement itself stated "haart is the trading name of Spicerhaart Limited", but the response was still made in the name of the parent company.
k) The letter before action was responded to by Mr Pollington on behalf of the group.
Disposition of the case: summary of overall conclusions
(1) The Claimants have established the triple requirements of a successful claim in passing off, which are goodwill, deception and damage; they are entitled to protect the goodwill generated by them in the course of their business and the fact that goodwill generated by their licensees is held on trust for them so they are not the legal owners of it does not prevent them maintaining a claim for permanent injunction: they succeed in their primary claim;
(2) It may be that the Claimants may wish, if they seek damages in respect of erosion of the goodwill held on trust for them, to join the legal owners or appoint one to be representative of the others or put in place some other mechanism to ensure all are finally bound: but that does not affect the disposition of the case now;
(3) The Defendants have not established that the F&C Marks are not being used by or with the consent of the proprietor (the First Claimant); nor have they established that the use made of the F&C Marks has rendered them deceptive as to trade origin: they have failed to show any grounds for a declaration of invalidity, or for revocation, of the F&C Marks and their Part 20 Claim must be dismissed accordingly;
(4) The Claimants have established infringement of their trade marks in terms of Article 9(1)(b) and Article 9(1)(c) of the CTMR and (correspondingly) of sections 10(2) and 10(3) of the TMA;
(5) Subject to further submissions on the form of relief, it seems to me that the Claimants are 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.
CLAIMANTS' SCHEDULE OF INSTANCES OF CONFUSION
(as referred to in paragraph 95, 112(3), 119 and 121 of the judgment)
1. This document attempts to take each instance of confusion contained in bundles E1 and E2 and provide the following information:
(1) Whether it is an instance involving a buyer or seller or some other category of person (e.g. a journalist).
(2) Its date and location.
(3) Where it is dealt with in evidence in chief or cross-examination and any other relevant references to the incident.
Each incident is referred to by reference to its tab number in bundle E1 or E2.
2. In addition, instances of confusion not contained in bundles E1 or E2 are documents and the same information provided. These instances are identified by letter – e.g. A, B, C etc.
3. In some instances multiple instances of confusion are recorded in the same report.
4. Summary:
Sellers: 50 instances
Buyers: 76 instances
Other professionals: 24 instances
Others: 23 instances
Unclassified: 15 instances
Sellers: instances not in bundle E1 or E2
| DATE | LOCATION | COMMENTS | |
| A | 21/08/2010 | Gerrards Cross | Vendor had instructed F&C. Sue (Susan Anne Keveren) from FINE approached vendor in a touting process and sent him brochure. Vendor posted materials to FINE, thinking that he was actually posting them to Gari Holden at F&C. Angie Hannacher said in her email that: "Seems once again 'Fine and Country' are happy to ride on our marketing/profiling". |
| B | 24/08/2010 | Gerrards Cross | Rahul Jagota ACA sent an email to Susan Keveren of FINE, thinking that he was sending an email to F&C, to instruct F&C as a "multi-agent". |
Sellers: bundle E1
| Tab | DATE | LOCATION | COMMENTS |
| 2. | 24/02/2010 | Petersfield, Hampshire | FINE approached a client of F&C selling a property at £1.35m implying that FINE were part of or associated with F&C and had recently opened an office in Petersfield. Client confused by similar marketing material. |
| 4. | 24/02/2010 | Norwich | One F&C client believed F&C had changed its name. Another client said she had received F&C magazine in the post whereas it was in fact FINE's magazine. |
| 5. | 24/02/2010 | East Herts & West Essex |
F&C talking to potential client over period of weeks about listing her house. Potential client confused - mistook a FINE magazine sent to her for a F&C magazine. |
| Tab | DATE | LOCATION | COMMENTS |
| 6. | 24/02/2010 |
Essex/Suffolk | On average three calls a week received where caller insists F&C have a property at a location which is in fact on offer by FINE. F&C have also been asked to value properties where the potential client has asked about the "one you sold up the road", which has turned out to be listed with FINE. |
| 8. | 26/05/2010 |
Gerrards Cross | Numerous occasions of potential clients informing F&C agents that they had been into the "other office" (actually FINE's office) as they thought F&C had moved or that there were two offices in the same high street. Vendor confused between brands by marketing literature posted to her and by for sale sign for FINE nearby. Vendor instructed F&C and representatives of FINE visited F&C office to ask for the letter of instruction that the Vendors reputedly told FINE representatives to collect from F&C. Vendor did not in fact give such permission. |
| 14. | 14/06/2010 |
Saffron Walden | Vendor selling property through F&C visited office to hand in marketing letter sent to him from FINE believing that F&C had sent him unsolicited marketing mail after sale already agreed on property. Vendor had eventually realized the difference between F&C and FINE and stated that appearance of the letter, typeface, layout and content seemed to be designed to mislead the public. |
| 18. | 26/06/2010 |
East Sussex | FINE gained instruction and Vendor thought they were instructing F&C. F&C had been chasing instruction and Vendor said that the property was already on with F&C but this turned out to be FINE. |
| Tab | DATE | LOCATION | COMMENTS |
| 20. | 01/07/2010 |
Woodbridge | Vendors selling through F&C visited the office and enquired as to why FINE are copying F&C. (See "Unclassified") Vendor confused between brands. (see "Buyers") |
| 28. | 09/08/2010 |
Norwich | Vendor selling through F&C complaining of publicity received from FINE and stating that this must be confusing for prospective purchasers and irritating for sellers. |
| 32. | 12/08/2010 |
Gratfham, Cambridgeshire | Individual called, very agitated that F&C had not carried out instructions to remove property from rightmove.co.uk website despite vendor's insistence that F&C cease marketing. Property in fact marketed through FINE not F&C. Reputation of F&C damaged. |
| 38. | 16/09/2010 | Chelmsford | Call from vendor to F&C regarding property on the market through FINE. |
| 42. | 07/10/2010 | Chelmsford | (1) (see "Buyers"). (2) F&C received a telephone call from a potential seller requesting a valuation saying that he had seen boards around with FINE on them and enquiring whether F&C are the same company. |
| 43. | 12/10/2010 | St Ives | Vender selling through FINE came into the office to enquire why there would be a 2% charge on the sale of his property and to request further information prior to his appointment with the agent that afternoon. |
| 44. | 18/10/2010 | Epsom, Leatherhead & Dorking | Potential vendor called F&C asking to speak to someone who actually works for the Cobham office of Fine – however she was expecting to speak to F&C. (See "Unclassified"). |
| Tab | DATE | LOCATION | COMMENTS |
| 46. | 14/10/2010 | Suffolk | Michelle Smith (vendor) instructed "Fine" in the mistaken belief that she was actually instructing F&C. On realizing the error, she dis-instructed "Fine" and instructed F&C as had been her original intention. Letter from her explaining incident. |
| 49. | 03/11/2010 | Monmouth Usk Usk |
A long-standing friend of an F&C agent almost mistakenly instructed FINE to advise on selling his house and it took a telephone conversation with the F&C agent to realize that FINE was a completely different company. (See "Buyers"). (See "Buyers"). |
| 57. | 13/01/2011 | Cheltenham | One of F&C's clients saw his property advertised in the local paper and asked whether FINE was part of the same group as F&C as they advertised in the same paper. He said "they're the same colours, you could just put "& Country" after their name, and they'd be the same." |
| 60. | 27/01/2011 | Woodbridge | Claire Appleby put her property on the market with Fine she thought that she had instructed F&C. Appleby XX: Q: …that is clearly a Fine document… A: Except that, as I said to you, I thought that was a modernized rebranding. I didn't, at that stage, realise that it was a separate company. (p25/lines 13-16) Q: Well, why is it the same company? A: Well, because if somebody simply has a logo redesigned it doesn't make them a different company. It just means they have had their logo redesigned. (p25/lines 39-41) |
| Tab | DATE | LOCATION | COMMENTS |
| 66. | 29/03/2011 | Suffolk | Seller on with FINE was advised by negotiator at Spicerhaart that Haart was their bottom brand, F&C was their middle brand and FINE was their cream brand – Seller therefore instructed FINE on that basis. Property called "Heathersett" |
| 68. | 05/04/2011 | Suffolk | Client received unsolicited letter from FINE. She mistakenly thought this was from F&C and went to the F&C office to complain. |
| 70. | 07/04/2011 | Portsmouth | Client received letters from what he thought was F&C's new office in Petersfield. Actually a FINE office. |
| 79. | 17/05/2011 | Hampshire |
(See "Buyers"). Client rang F&C on a recommendation and asked if the "Petersfield" office could deal with the sale of their property. F&C do not have an office in Petersfield but FINE do. |
| 80. | 18/05/2011 | Gerrards Cross | Client attended F&C office and explained that she was looking for Steve from FINE to discuss the date for her forthcoming valuation. F&C representative explained that Steve worked for and was connected with an entirely separate business (FINE) rather than F&C. |
| 82. | 04/06/2011 | Cranbrook | Mrs Alma Leapa (whose property was sold by F&C) recommended the services of F&C to Mr John Evenden. Mr Evenden appointed FINE rather than F&C by mistake. |
| 83. | 08/06/2011 | Chelmsford & West Essex | F&C have attended valuations where the client was under the impression that she had instructed Fine. In addition, F&C regularly receive calls from the public requesting details of properties that are actually on with FINE. |
| 85. | 14/06/2011 | Wing | Vendor has been informed by FINE that FINE and F&C were once connected. |
| Tab | DATE | LOCATION | COMMENTS |
| 87. | 15/06/2011 | West Buckinghamshire | Mrs Brogan booked a valuation with F&C after seeing advert in The Milton Keynes Post. Later Mrs Brogan cancelled the valuation as she considered the F&C office to be "too far away". Mrs Brogan confirmed that when she booked the valuation she had wrongly assumed F&C was FINE who have an office in Milton Keynes close to Mrs Brogan's property. |
| 88. | 17/06/2011 | Kent | F&C had sold an apartment forming part of a house. The vendor recommended F&C to another resident. That client instructed FINE to sell his property in the belief that it was the agent that sold the first property. (In ReX, Lindley clarified the provenance of his email) |
| 92. | 19/08/2011 | Gerrards Cross | (See "Buyers"). Call to F&C from potential clients asking for valuation. When the F&C representative attended the property it became clear that the client believed that the advertising which had been produced by FINE had been produced by F&C. Representatives of F&C's Gerrards Cross office confirmed that the marketing materials which the clients had viewed in the FINE brochure were produced by an entirely different company and were unconnected with F&C. |
| 93. | 06/09/2011 | Gerrards Cross | Mr Hasnain telephoned offices of FINE in Gerrards Cross under the mistaken belief he was telephoning F&C. When he asked to speak with Ms Gari Holden (of F&C), who he had had dealings with in the past, he was told that Gari did not work for FINE and that FINE was an entirely separate business from that of F&C. |
| Tab | DATE | LOCATION | COMMENTS |
| 97. | 15/09/2011 | Hoddesdon, Hertfordshire | Telephone call from a vendor who was selling their property through F&C. They had received a letter touting for business which they wrongly assumed had been produced and delivered by another F&C office. After a long discussion with the vendor it became clear that the letter had been produced by FINE which the vendor found very confusing. |
| 100. | 16/09/2011 | Harpenden | Alan Collinge of F&C Harpenden had recently been instructed by a member of the public to sell and market a £4.5m property. Following receipt of instruction, Mr Collinge returned to the customer's property. The customer produced (from a folder marked "Fine & Country") a "FINE" brochure for a property being marketed by FINE plus covering letter. The customer commented that he considered the brochure to be fabulous and was under the assumption that the brochure had been produced by Fine & Country. Mr Collinge explained that the brochure was produced by another company that was not in anyway connected with Fine & Country. Until this had been explained, the customer had confused the FINE brochure as being a brochure produced by the Fine & Country. |
Sellers: bundle E2 ("101" refers to tab 1, "102" refers to tab 2, etc.)
| Tab | DATE | LOCATION | COMMENTS |
| 102. | 16/09/2011 | Grantham, Lincolnshire | Email of 21 January 2011 from a Mr Geoff Cook to F&C Grantham. Mr Cook referred F&C's newsletter article called "Sssh! House For Sale". Newsletter was actually produced by FINE. |
| 103. | 17/09/2011 | Kingswood | F&C Kingswood were liaising with a vendor to arrange for the placement of an advertisement in the Sunday Times property section. Zoe Cox, of F&C Kingswood discussed the approach with the vendor and it was clear that the vendor had confused the advertising that appears in the Sunday Times placed by FINE with that produced by F&C. |
| 105. | 20/09/2011 | Chelmsford & West Essex | Telephone call to F&C from member of the public who said that F&C had valued his property recently and that he wanted to discuss matters further. It transpired that the valuation had actually been undertaken by FINE. |
| 106. | 21/09/2011 | Loughborough | A friend of F&C representative spoke to them about an unsolicited card which had been sent to their home by (apparently) F&C. At the time the property was on the market with other estate agents. Both friend and estate agent asked F&C to discontinue such approaches. It transpired that the marketing material had actually been produced by FINE. (See "Buyers"). (See "Others"). |
| 112. | 27/09/2011 | Chelmsford & West Essex | Telephone call received by F&C from member of the public asking for a Nick Curtis. The F&C representative explained that no Nick Curtis worked in that office and that she was after FINE. |
| 117. | 30/09/2011 | Gerrards Cross |
A client of F&C, Mr Flint, is selling his property through F&C. He received an unsolicited letter through the post which he believed came form F&C and commented to F&C that he thought that it was strange that F&C would send it given that they were already instructed. On investigation he discovered that the letter was actually sent by FINE. He said that he found the situation very confusing. |
| Tab | DATE | LOCATION | COMMENTS |
| 118. | 30/09/2011 | Norwich |
A lady contacted the F&C offices to explain that she had just instructed FINE in relation to the sale of her property under the mistaken believe that she was instructing F&C. She had previously sold a house through F&C and had searched online for F&C's number but found Fine's number by mistake. She then made an appointment for a valuation with Fine and told them that she had previously sold a property through them. Fine did not inform her that they were not F&C. She said that the contract which we signed was very similar to that of F&C. |
| 124. | 16/01/2010 07/06/2010 |
Bexley | 1. F&C representative attended at The Old House to carry out a market appraisal. While valuing the property the consultant asked, for market research purposes, why F&C had been chosen. Client said that F&C had her friend's house on the market in Bexley. Consultant advised that F&C did not have a property on the market in that area. Client asked if consultant had come from FINE. Consultant explained that they had not and explained the difference between the companies. 2. F&C office contacted to carry out a market appraisal of their property as they believed that they were the FINE agents marketing the property in Bexley. |
| 127. | 12/10/2011 | Heathersett, Norfolk | Letter received by F&C from member of the public stating that he and others had perceived that FINE and F&C were the same company, and stating that this had had a negative impact on the image of F&C. Also stating: FINE's logo, type of print, style of presentation are like those of F&C. His friend had informed him that his property was not displayed in F&C's window. Upon checking he found that his friend had been looking in FINE's window. Writer had also received post from FINE suggesting he might like to sell his house through them as well as being sent a glossy magazine full of properties. He was about to call to explain that he was already on with the agent and ask why his property was not in the magazine when he realized that FINE was not in fact the same as F&C. Ralph Cross |
| 137. | 24/02/2010 | Monmouth | Potential client stating to F&C office that it had not done very well with a property for sale which was near his property. Agents eventually realised that he was referring to a property that was on the market with Fine, not F&C. |
| 155. | 19/1/12 | Saffron Walden | Prospective seller approached Haart in relation to the valuation of her buy-to-let property. She saw display of expensive properties in the Haart office and was introduced to "Fine". She came into contact with Fine and Country early 2012 in considering agencies to market her property. She mistook Fine & Country for "Fine" and incorrectly assumed that Fine & Country was the "posh end of Haart". Wilshere XX (day 3, p52): A: By Fine. He said, "I am not Haart, I'm Fine", and gave me a posh brochure… (lines 9-10) Q: … A: Well, the thing is I thought all the time we were dealing with Fine & Country…(line 16) Q: … Q: The brochure, okay. A: I think it had "Fine" on it and I think Fine was underlined and I think it was white background with a property on the front obviously just to draw your eye… (p53/lines 20-22) |
| 158. | 23/09/11 | Woodbridge | Member of the public called F&C to say that F&C had sent her marketing material (it had in fact been sent by Fine). She said that she felt that the marketing method was "intrusive" and that she would have assumed that it was sent by F&C had she not phoned in. |
| 159. | 11/04/2011 | Ambleside | Potential seller could not understand why F&C had two separate adverts in the Sunday Times (i.e. "Fine & Country" and "Fine"). He thought that they were the same company and wanted to know how F&C differentiated between which properties to put on which advert. |
| Tab | DATE | LOCATION | COMMENTS |
| 160. | 07/04/2011 | Portsmouth | Client advised F&C that he had received letters from what he initially thought was new F&C office in Petersfield and he was confused as F&C representative had not mentioned a new office. |
| 163. | 11/02/2012 | Loughton | 1. (See "Buyers"). 2. (See "Buyers") 3. Member of the public telephoned F&C regarding a complaint about a valuation. It transpired that Fine had valued the property and that the individual was calling to clarify the figures. F&C representative explained that they were not Fine. Individual said that it was very confusing. 4. Potential client who is marketing her property with Fine telephoned by F&C representative to see how the marketing was proceeding. Potential client complained that F&C representative should know how the marketing was going as she had had no viewings on the property and we had been acting for several weeks. F&C representative had to explain that Fine and F&C were separate companies and that F&C was not acting for her. Potential client stated that it was very confusing. |
| 164. | 13/02/2012 | Berkhamsted | Individual telephoned F&C Berkhamsted branch asking why he had not heard anything further in relation to the marketing of his property. On investigation by F&C representative, it was discovered that the property was actually being marketed by Fine. However, the individual was under the impression that F&C Berkhamsted were marketing the property. F&C had previously marketed a property opposite the property in question. |
Buyers: instances not in bundle E1 or E2
| DATE | LOCATION | COMMENTS | |
| C | 24/11/2009 | Grantham | James Eastaway reports confusion by actual purchaser. Bidwell reports that this is happening with irritating regularity. |
| D | Jan 2011 | Rugby | Pauline Desmond, a dentist and a buyer with experience in buy-to-let, presently has 10 properties. She carried out a search on Rightmove, She went to F&C office in Rugby to pick up sales brochures, at which point she was told that the F&C did not market the property, and found out that the property was marketed by FINE. Desmond: "At a glance when I am looking at the other stuff I just saw Fine. Fine" (Desmond XX, day 5, p25/line s 24-25). |
Buyers: bundle E1
| Tab | DATE | LOCATION | COMMENTS |
| 24/02/2010 | Wadhurst | Client believed property on offer in Wadhurst. In fact a FINE instruction. A further two clients believed that F&C had an office in Wadhurst, which is in fact a FINE office. | |
| 6. | 24/02/2010 |
Essex/Suffolk | On average three calls a week received where caller insists F&C have a property at a location which is in fact on offer by FINE. Usually calls originated from "For Sale" board. F&C have also been asked to value properties where the potential client has asked about the "one you sold up the road", which has turned out to be listed with FINE. |
| 7. | 24/02/2010 |
Hampshire | Enquiries received from potential clients regarding a property on the market with FINE in Petersfield. Staff have to explain to each enquirer that property not on offer through F&C. Do we want to emphasis "this takes some time"? Do we want to cross reference with her witness evidence? Ann-Marie Green. |
| 10. | 27/05/2010 |
Buckinghamshire | Client saw a FINE property on a website and telephoned the number displayed but got no response. Found F&C on directory enquiries and F&C agent had to explain that the property was on the market with FINE not F&C. |
| 11. | 08/06/2010 |
Woodhouse Eaves, Leicestershire | Woman called F&C office frustrated as unable to find a property she saw on Rightmove. In fact property is on the market through FINE. |
| 13. | 10/06/2010 |
Surrey | F&C received two calls from potential purchasers looking to view a property on the market with FINE in Dorking. |
| 16. | 21/06/2010 |
Grantham, Lincolnshire | Two clients called F&C wishing to view properties that were in fact available through FINE. |
| 17. | 23/06/2010 |
Cambridge | Two examples of potential purchasers confusing FINE and F&C marketing in national newspapers. |
| 19. | 30/06/2010 |
Norfolk & North Suffolk | Potential purchaser wished to view a property through F&C and was surprised when F&C did not have details of this on the system from previous viewing. Realised that it was a property previously viewed through FINE. |
| 20. | 01/07/2010 |
Woodbridge | (See "Sellers"). (See "Unclassified") (See "Sellers"). Client registered with F&C and purchased a property through FINE. Confused between F&C and FINE and states in a follow up courtesy call (incorrectly) that purchasing the property through F&C. |
| 21. | 06/07/2010 |
North Essex | Email enquiry received from potential client regarding property in fact being marketed by FINE. Property seen on rightmove.co.uk. |
| 24. | 15/07/2010 |
Felixstowe, Suffolk | Potential client saw a FINE board and mistook the property for one of F&C's. |
| 29. | 09/08/2010 |
Grantham, Lincolnshire | Query received from potential client regarding property advertised in The Times. Property in fact on market with FINE. |
| 30. | 09/08/2010 |
Grantham, Lincolnshire | Further example of potential client asking about a property which she could not see on F&C's website. In fact on market through FINE. |
| 31. | 09/08/2010 |
Essex | Potential client viewed advert for property being offered by FINE and could not get an answer from the advertised number on FINE advert so contacted F&C in Billericay (thinking it was a FINE office). F&C had to apologise for confusion as property on through FINE. |
| 37. | 15/09/2010 | Colchester North Essex | Email from buyer to F&C intended for Darryl Parr, manager of FINE in Colchester. |
| 39. | 20/09/2010 | North & West Norfolk | Email query to F&C from potential client regarding property on the market through FINE and advertised on primelocation.co.uk. |
| 42. | 07/10/2010 | Chelmsford | (1) F&C received a telephone call about a property for sale – the property is actually being sold by "FINE". (2) F&C received a telephone call from a potential seller requesting a valuation saying that he had seen boards around with FINE on them and enquiring whether F&C are the same company. |
| 45. | 18/10/2010 | Epsom | F&C received phone call from potential buyer standing outside one of F&C's properties enquiring why no one was there – she was actually due to view a different property with FINE. F&C received a telephone call from a potential client asking to speak with someone from FINE. Caller was very insistent that he was speaking with FINE and that someone called Guy worked there. |
| 48. | 01/11/2010 | Epsom, Surrey | Potential client contacted F&C in relation to a property he had seen advertised (by F&C) but he was under the impression that F&C and "Fine" Cobham office were the same thing. |
| 49. | 03/11/2010 | Monmouth Usk Usk |
(seller) Client of FINE visited F&C office to enquire why they were still advertising a property that her step-son had already agreed to buy. The property was in fact being purchased through FINE not F&C. Potential client requested details of property in Ponthir that she had seen advertised in Hereford Times. Property was a FINE property and not an F&C one. |
| 50. | 22/11/2010 | Colchester | Email to F&C in relation to a property that is being marketed by FINE. |
| Tab | DATE | LOCATION | COMMENTS |
| 51. | 21/11/2010 | North Essex | F&C received an email about a property in Wivenhoe. The property was in fact being marketed by FINE. |
| 52. | 23/11/2010 | Drayton, Hampshire | F&C received phone call from potential client in relation to a property that the client believed F&C were marketing as he had seen a sale board at the property - the property is actually being marketed by FINE. |
| 53. | 23/11/2010 | Rugby | F&C received visit from potential client in relation to a property in Church Walk that was being marketed by FINE. |
| 64. | 14/02/2011 | Epsom, Leatherhead and Dorking (Only the Epsom office is F&C) | Enquiry from potential customer requesting details of a property that is on the market with FINE. |
| 65. | 29/03/2011 | Gerrards Cross | Potential client collected property details from F&C, having previously visited FINE office by mistake as she thought they were the same company. |
| 69. | 07/04/2011 | Cambridge | Potential client spoke to F&C to confirm a viewing that he thought he had already booked with them – in fact he had booked it through FINE. |
| 71. | 11/04/2011 | Suffolk | Potential client came into F&C office to enquire about a property but on being unable to locate it, simply said that they must have the wrong office and left. It subsequently transpired that the property was in fact being marketed by FINE. |
| 72. | 12/04/2011 | Norwich | Potential client called F&C for details of property having seen board. Advised that the sale board was actually FINE's. Said that it was "very confusing". |
| Tab | DATE | LOCATION | COMMENTS |
| 73. | 15/04/2011 | Norwich | Potential client visited F&C office to obtain details of a property. Property was actually advertised through FINE. Client very surprised and confused to find that they were separate companies. |
| 75. | 30/04/2011 | Cranbrook | A member of the public attended F&C offices asking for details of a property that was in fact being marketed by FINE in Goudhurst. F&C representatives explained that F&C were not marketing the property and rather this was being marketed by FINE. The member of the public then left the offices. |
| 76. | 03/05/2011 | Cranbrook | Telephone call received by F&C requesting details for a property in Goudhurst that was in fact being marketed by FINE. |
| 77. | 10/05/2011 | Cranbook | F&C client indicated that she had emailed site plans to the F&C Cranbrook office. These had not been received. When F&C representative followed up with client it was clear she had confused FINE with F&C and emailed the plans to Fine. |
| 79. | 17/05/2011 | Hampshire |
Client looking at buying a property through F&C. When checked on rightmove.com, it transpired that the property was actually being marketed by FINE. (see sellers) |
| 84. | 10/06/2011 | St Neots | Mr Salmon called F&C office requesting details of a property that was actually being marketed by FINE. Representative of the F&C office explained that this was the case. Mr Salmon was upset to discover the confusion. He later contacted the F&C office to explain that he had just received an F&C brochure. This brochure was actually a FINE brochure. |
| Tab | DATE | LOCATION | COMMENTS |
| 90. | 20/06/2011 | Cranbrook | Customer walked into F&C Cranbrook office to ask for details of a property that was being marketed by FINE in the Wealden Advertiser. F&C representative explained that this was not a property being marketed by F&C. Customer left the office. |
| 92. | 19/08/2011 | Gerrards Cross | Telephone call to F&C Gerrards Cross branch from member of the public to obtain details of a property in Black Park in Gerrards Cross. Property was in fact listed with Fine, not F&C. (seller) |
| 95. | 11/09/2011 | Cambridge | Simon Bradbury of F&C attended a viewing at a property with a potential client who complained (without prompting) how confusing it was to have two estate agency companies with names that were so similar "FINE" and "Fine & Country". |
| 96. | 14/09/2011 | North Hampshire | Applicant contacted the North Hampshire branch of F&C believing that a property which was being marketed by Spicerhaart under the "FINE" brand which he had located on the primelocation.com website was actually being marketed by F&C. Representatives of the F&C office confirmed that the applicant had confused the property being marketed by Spicerhaart under the "FINE" brand as being a property marketed by F&C. |
| 98. | 15/09/2011 | Chelmsford & West Essex | Telephone message left with Moneypenny (a telephone answering service) was forwarded to F&C Chelmsford & West Essex. Caller had said that it was a message for F&C, but it transpired that the property that he was enquiring about was being marketed by Fine. |
Buyers: bundle E2 ("101" refers to tab 1, "102" refers to tab 2, etc.)
| Tab | DATE | LOCATION | COMMENTS |
| 104. | 19/09/2011 | Chelmsford & West Essex |
Telephone call received by F&C from a member of the public who explained that she had called the office on Saturday and spoken to a lady regarding a property and that the lady was going to call her back. It turned out that the member of the public had spoken to Fine earlier, and not F&C. |
| 106. | 21/09/2011 | Loughborough | (see "Sellers") Numerous telephone calls received by F&C from members of the public interested in buying houses which are in fact being marketed by FINE. Members of public insist that F&C is wrong and that they have seen an F&C board. (see "Others") |
| 110. | 22/09/2011 | Woodbridge | Member of the public telephoned F&C requesting further details regarding a property that she had seen on Rightmove. The representative of F&C explained that the property was not being marketed by F&C (although it had been previously) but by FINE. Member of the public had assumed that Fine was F&C. She was very insistent that the property showed on Rightmove as being marketed by F&C. Pryke: "…these references have come off Rightmoveplus. The reference is RMplus. That is actually the intelligence that sits behind that the agent has access to but the members of the public do not, so therefore both of the details were taken from Rightmoveplus, not the Rightmove site as available to the public." (p44/lines 27-31) |
| 113. | 27/09/2011 | Chelmsford & West Essex | F&C office received a call enquiring about a property in Kersey Tye. F&C representative explained that they were not acting on the sale of such property. Following the call representative identified the property on Rightmove. Property was being marketed by Fine. |
| Tab | DATE | LOCATION | COMMENTS |
| 115. | 28/09/2011 | Woodbridge | Member of the public (Mr Clarke) attended F&C office requesting further details of a property in Trimley. Mr Clarke explained that he had called into the office at an earlier date and had been given a brochure. He required a further copy of the brochure. F&C representative asked if it could be a "Fine Haart" property. Mr Clarke said that he was sure that it was "Fine & Country". F&C representative could not locate the property on Rightmove. Later that day Mr Clarke telephoned the office to explain that he had discovered that the property was being marketed with FINE. |
| 119. | 03/10/2011 | Gerrards Cross | Telephone call to F&C office from a member of the public (Ms Hunter) enquiring about 2 properties which were in fact being marketed by FINE. Ms Hunter explained that she had called the number given to her by directory enquiries for Fine. |
| 120. | 05/10/2011 | Woodbridge | Email enquiry sent by member of the public to F&C office requesting details of a property that was actually being marketed by FINE not F&C. |
| 122. | 07/10/2011 | Bishops Stortford |
Two instances of confusion regarding a property being marketed by FINE: 1. A telephone enquiry to F&C office. 2. An enquiry in person to the F&C office. Property had previously been marketed by F&C and enquirers had assumed that Fine were the same company. |
| 125. | 17/10/2011 | Colchester | F&C office received a call from a member of the public asking about a property in Colne Engaine where he had seen "our board". F&C informed him that the property was actually on the market with FINE. He said "Aren't you one and the same?" |
| Tab | DATE | LOCATION | COMMENTS |
| 128. | 19/10/2011 | Cambridge | Email received by F&C from client stating that although a property "Long Acre" that he was purchasing had been removed from the books of FINE, "your adversaries" Fine & Country had not removed it. F&C asked whether he was confusing F&C with FINE given that the property had been removed from F&C's books. The client confirmed that he had confused the two. Buyer has exchanged contract. |
| 130. | 19/10/2011 | Princess Risborough | F&C office received a call from a Mr Saffron who was on his way to a viewing and wanted to speak with "Sue". There is a Sue in the F&C Risborough office and calls are diverted to that office when busy. Sue had not heard of a Mr Safron so consultant called him back to clarify who he was trying to get in touch with. It transpired that he had wanted to speak with somebody at FINE. He stated that he knew that he had called Fine & Country but he thought they were the same company as FINE. |
| 131. | 21/10/2011 | Gerrards Cross | Member of the public rang to speak to somebody handling the sale of a particular property (on the market with Fine). F&C agent pointed out that he needed to contact Fine. He replied "Is that not who I am through to, this was the number given to me". |
| 132. | 21/10/2011 | Essex | Member of the public called F&C office asking if a property in Gosfield was still available. The F&C office has never marketed a property in that town and the agent asked if the caller had meant to contact F&C or FINE. The member of the public replied "Oh are you different then? I thought you were all the same". |
| Tab | DATE | LOCATION | COMMENTS |
| 134. | 31/10/2011 | Gerrards Cross | F&C office received a call from a member of the public regarding a property (which was actually for sale with FINE). The member of the public agreed that she had read the sale board as "FINE". However, she had (wrongly) assumed that the company was Fine & Country and looked up Fine & Country in the paper. |
| 138. | 10/11/2011 | Stanton, Wolds | Client telephoned F&C office to organise a viewing of a property on the market with F&C. Client asked if he could also have details of another property that F&C were selling in Stanton in the Wolds. F&C consultant could not find it on their website. Client said that it was definitely being marketed by F&C because it had their FINE board outside it. It transpired that the property was actually on sale with FINE. |
| 140. | 15/11/2011 | Park Lane | Potential client visited the Park Lane F&C office enquiring about a property he had seen advertised in either The Saturday Telegraph or The Financial Times. This property was in fact being marketed by FINE. |
| 142. | 26/11/2011 | Chelmsford & West Essex | Answerphone message received from member of the public requesting details of a property which was in fact being marketed by FINE. Member of the public subsequently confirmed that she had seen the "for sale" board and assumed that FINE and F&C were the same. |
| 143. | 01/12/2011 | Bishop Stortford | Member of the public stating that he had thought that a property he had viewed was not from the F&C office, stating that a representative of PrimeLocation had also been confused. The F&C consultant's explanation about there being two separate companies with similar names had now answered his questions regarding other properties that he had seen. |
| Tab | DATE | LOCATION | COMMENTS |
| 144. | 14/10/2011 | Ipswich | Potential client contacted F&C office wanting to arrange a viewing of the property, having received an email with the property advertised. Following a long conversation it was established that the email had been sent to her by FINE not F&C. She had thought that they were part of the same group. |
| 146. | 3/01/2012 | Chelmsford & West Essex | F&C answering service took a message from a member of the public requesting details of a property which was in fact being marketed by FINE. |
| 147. | 4/01/2012 | Colchester | F&C office received an enquiry from a member of the public asking for details of two properties that were in fact being marketed by FINE. When informed of this the member of the public said "aren't you one and the same". |
| 148. | 16/01/2012 | Monmouth | F&C office received email via Primelocation website from someone requesting details of a property. On looking at the Primelocation website it became clear that this was in fact a FINE property. |
| 149. | 16/01/2012 | Cambridge | Potential buyer asked F&C to arrange a viewing for a property which F&C were not in fact instructed to sell. The potential buyer had confused F&C with FINE. |
| 150. | 17/01/2012 | Kent | Member of the public contacted F&C office to discuss a property that she had seen on Rightmove. She had looked on Rightmove in order to find a property that she had seen in a Sunday Times advert. When the F&C employee enquired further, the member of the public described a property which was listed by FINE. |
| Tab | DATE | LOCATION | COMMENTS |
| 151. | 16/01/2012 | Ipswich | F&C office received a call from a member of the public who wanted to view a property about which he said he had "spoken at length" to Fine & Country previously. It was subsequently established that this was in fact a property that was listed with FINE. The member of the public was quite confused and thought that the companies were connected. |
| 154. | 19/12/11 | Cambridgeshire | Client phoned F&C office regarding a property he had seen on F&C website which was no longer there. It transpired that the property was in fact listed with FINE and that he had seen it on the FINE website. He had been confused with the Fine & Country website. |
| 156. | 15/03/2011 | Huddersfield | Client enquired of F&C about a property that he thought was on with F&C's Huddersfield office. It was actually being marketed by Fine. |
| 157. | 15/04/2010 | Bury St Edmunds | Member of public called F&C on behalf of daughter who had asked her to call regarding a property. She said that the for sale board said "Fine & Country". Computer search showed that the property was actually being marketed by Fine. |
| 161. | 11/10/2011 | Woodbridge | Member of the public attended F&C office to enquire about a property. On investigation, F&C representative discovered that the property was actually being marketed by Fine. |
| 162. | 09/02/2012 | Colchester | Member of public telephoned F&C office and left a message with answering service asking for 'Hannah'. F&C explained to member of public that they are not Fine, but F&C. Member of public complained that she wanted Fine but that she cannot get hold of Fine and no one is calling her back. |
| Tab | DATE | LOCATION | COMMENTS |
| 163. | 11/02/2012 | Loughton | 1. Potential client telephoned F&C to ask to view a property. F&C explained that the property was actually on the market with Fine. Client said that he thought it was F&C dealing with it and that he found it confusing with the close name association. He thought that he was phoning the agent dealing with the property. 2. Potential client called F&C regarding a property that was actually being marketed by Fine. Member of public found it confusing with the name association. 3. (see "Sellers"). 4. (see "Sellers"). |
| 167. | 20/02/12 | Suffolk | Riley telephoned F&C requesting details of a property. On investigation by F&C representative it was discovered that the property was actually being marketed by Fine. Riley assumed that Fine and F&C were the same company due to branding, name and location. Riley informed F&C representative that she had been confused and felt that it was misleading. |
| 169. | 28/02/2012 | Woodbridge | Potential client telephoned F&C office asking for details of a property that was on the market Fine. |
| 170. | 27/02/2012 | Park Lane | Potential client called F&C office asking to speak to Fine estate agents. It appeared that she had however called the number for the Fine & Country Hockley office from the Zoopla website. |
Instances not in bundles E1 or E2
| Tab | DATE | LOCATION | COMMENTS |
| E | 16/11/2011 | Leatherhead | FINE sent memorandum of sale. Sellers' solicitors sent letter wrongly to F&C rather than to FINE. |
| F | 27/01/2012 | F&C Park Lane Office | Mr Pryke, CEO of F&C, met Tim Swaddle of Roomservice, to discuss the possibility of Mr Swaddle providing luxury furniture hire services to F&C. Mr Swaddle said he had already attended the "F&C offices in Esher and Dorking". It transpired that Mr Swaddle had confused Fine and F&C. In fact Mr Swaddle had attended the Fine offices. |
| G | January 2012 | F&C Park Lane Office | Mr Pryke met a buying agent, Marilyn Acons who said that she had seen Fine being advertised around the UK and had assumed that this was a re-branded version of F&C. |
E1: professionals
| Tab | DATE | LOCATION | COMMENTS |
| 23. | 14/07/2010 | Cambridge | Letter from surveyors noting substantial similarity between F&C and FINE advertising and assumption that the trading entities must be related. |
| 27. | 06/08/2010 |
North Essex | Email from surveyor at Savills regarding her confusion upon seeing a FINE board outside a property and mistaking it for one of F&C's due to similarity in graphics and brand name. |
| Tab | DATE | LOCATION | COMMENTS |
| 55. | 04/01/2011 | Park Lane | F&C received a letter from Rushcliffe Borough Council accusing it of fly-posting. F&C do not have an office in the West Bridgford area and it is assumed that this letter was intended for FINE. Rushcliffe Borough Council subsequently confirmed that their letter had been sent to F&C in error and that they had confused F&C with FINE. Pryke: "On most of the occasions in these circumstances they would not want to admit that they have got something like this wrong. This was something that was an embarrassment for them and something that they did not want to go into a great amount of detail for. They were embarrassed at having accused a company of committing an offence when it had not actually been involved at all." (p62/lines 1-6) |
| 56. | 05/01/2011 | Park Lane | F&C was contacted by a journalist at the Mail on Sunday who wanted to do a feature on one of their properties. The property in question was in fact being marketed by FINE and not F&C. |
| 58. | 24/01/2011 | North Norfolk | F&C were contacted by Richard Kennedy (a relocation agent), who is paid to assist families of the disabled with finding suitable properties. Both he and his client were under the impression that a particular property was being listed with F&C when it was actually listed with FINE. Richard was angry at the similarity between the brands as he had spent significant time searching the F&C website for a particular property which his client advised him was listed with F&C, only to discover that it was in fact listed with FINE. Richard is paid by the hour, and the confusion caused expense to his client for wasted work. |
| Tab | DATE | LOCATION | COMMENTS |
| 59. | 24/01/2011 | Park Lane | F&C received an email from a sales and lettings manager who mistakenly believed that F&C had amalgamated with Spicerhaart and wanted to apply for a job with the new agency. An article in "Estate Agent Today" headed "Fine & Country agent rebrands as arch rival FINE" caused the confusion above. |
| 61. | 28/01/2011 | Cheltenham | Employee of letting agent next door to F&C asks for details of property advertised in a newspaper by FINE. He said that he saw the word "fine" and assumed it was F&C. |
| 78. | 12/05/2011 | Kent | Account manager who sells advertising space to estate agencies thought that the FINE branded window in the Broadstairs branch of Haart was F&C because the window display and colours look very similar to the F&C brand. |
| 81. | 31/05/2011 | Sheffield | The publication "Derbyshire Life" thought that F&C (Nottinghamshire) had taken half a page of adverts and asked F&C in Sheffield to fill the page with them. It transpired that the advert had in fact been taken by F&C. |
| 86. | 14/06/2011 | National | Article in the Saturday Telegraph states that a property is being marketed by FINE but provides the F&C website for further information. |
| 89. | 20/06/2011 | Park Lane, London | Richard Cutt of Knight Frank London attended F&C Park Lane offices. Mr Cutt spoke with representatives of F&C to discuss F&C and its approach to advertising. During the discussion it became clear that Mr Cutt believed that FINE and F&C were the same and that the FINE advertising was produced by F&C. |
E2: professionals ("101" refers to tab 1, "102" refers to tab 2, etc.)
| Tab | DATE | LOCATION | COMMENTS |
| 107. | 21/09/2011 | Cambridge | Email from chartered surveyor (Nicholas Chaplin) to F&C. Mr Chaplin explained that he had just had a meeting with his Head of Commercial (another chartered surveyor, Mr Burton) who, when Fine and Country were mentioned said "Oh, yes, I've seen their boards around our area, they are calling themselves FINE now, aren't they?". Mr Chaplin explained that FINE was entirely unconnected to F&C as had been explained to him by a member of staff at F&C the previous day. Mr Burton commented: "But they are the same colour, the same style etc. I just assumed they were one and the same." |
| 108. | 22/09/2011 | Cambridge | Simon Bradbury (of F&C Cambridge) had a meeting with Nicholas Chaplin (chartered surveyor and owner of Hilbery Chaplin Estate Agents in Essex) to discuss the merits of premium branding. During the conversation Mr Chaplin commented that he particularly liked the "new logo" that F&C had recently adopted. It transpired that Mr Chaplin had mistaken the FINE logo as being the new logo of Fine & Country. Mr Chaplin is an experienced estate agent and chartered surveyor who is familiar with the industry and the major players within it. |
| 109. | 22/09/2011 | Woodbridge | Nigel Broadhead Mynard solicitors sent two letters to F&C Woodbridge agent under the mistaken belief that they were dealing with the sale of the property. The property was actually being sold by FINE. |
| 114. | 27/09/2011 | Gerrards Cross | F&C took a call from The Buying Solution (an arm of Knight Frank which deals with relocations). The representative of The Buying Solution asked about various properties being marketed by that F&C office including 3 properties which were in fact being marketed by FINE. |
| Tab | DATE | LOCATION | COMMENTS |
| 121. | 06/10/2011 | Hampshire | Hampshire Chronicle article concerning a property being marketed by Fine. However, it appears that the property is being marketed by F&C as the F&C logo is at the end of the article. |
| 129. | 19/10/2011 | Essex | F&C office received a call from Connells surveyors asking about a property F&C had sold in White Colne. The property had actually been sold by FINE. |
| 133. | September/ October 2011 |
Cardiff | Publication called "Cardiff Life" featured a property which it stated was on the market with Fine & Country. The property was in fact on the market with FINE. |
| 145. | 22/12/2011 | Colchester | Estate agency Fenn Wright made enquiries of F&C office regarding a property that was in fact being marketed by Fine in Witham. |
| 152. | 18/01/12 | St Albans | Email from owner of property company stating that he thought that Fine & Country and FINE were the same company, one selling and one letting, the names and typefaces were so similar. He was surprised to find that they were different companies. |
| 166. | 16/02/12 | Loughton | F&C representative received a call from the Essex Chronicle newspaper requesting an advertising copy for a booking. F&C representative did not have a space booked until 1 March 2012. F&C's advertising agency telephoned the Essex Chronicle to clarify and confirmed that it was a booking for an advertisement for Fine rather than F&C. The Essex Chronicle employee had been confused as to who he should contact as he believed Fine and F&C to be the same company. |
| 170. | 27/02/2012 | Park Lane | Potential client called F&C office asking to speak to Fine estate agents. It appeared that she had however called the number for the Fine & Country Hockley office from the Zoopla website. |
Instances not in bundles E1 or E2
| Tab | DATE | LOCATION | COMMENTS |
| H | November 2011 | Wales | Mr Pryke met his sister-in-law and her husband. She saw a sign board which she thought was a F&C sign board, whilst he thought that Fine and F&C were the same company. The sign board turned out to be a Fine sign board. |
E1: others
| Tab | DATE | LOCATION | COMMENTS |
| 9. | 27/05/2010 |
Hampshire | Email sent from marketing and promotions agency to F&C offering "Haart" the opportunity to partner O2. |
| 15. | 16/06/2010 | Uckfield, East Sussex | Letter from member of the public who believed he had seen an F&C for sale sign at a property and was subsequently corrected by a relative. Upon re-inspection of sign realized it was through FINE. Stated it was "very confusing." |
| 22. | 13/07/2010 | Norfolk | Letter from client drawing F&C's attention to confusion between FINE and F&C. Client's friends and contacts also mentioned finding this confusing. |
| 25. | 26/07/2010 |
Park Lane | Call to F&C's Head Office from a member of staff from the FINE office in Cobham who had an enquiry from a friend of a Mr Peters regarding several properties to sell in Grenada, Spain and had called the F&C office confusing it for a FINE office. Evidence that even FINE staff are confused. |
| 26. | 29/07/2010 |
North Essex | Email from applicant for PA/secretary position at FINE sent to F&C in error. A friend had referred to FINE as Fine & Country when passing on details of the vacancy. |
| Tab | DATE | LOCATION | COMMENTS |
| 33. | 12/08/2010 |
St Neots | FINE staff admitting in a telephone call that confusion between brands happens regularly. |
| 34. | 12/08/2010 |
St Neots | Admission by member of FINE staff in an email that people confuse FINE with F&C as obviously the names are a "little similar". Louise Budd said " I think people confuse our Fine department with Fine & Country as obviously the names are a little similar." |
| 40. | 20/09/2010 | Norwich | FINE's Norwich office took instructions on a local property and an F&C board was erected in error by the board erection company. |
| 41. | 05/10/2010 | Mid Kent | Email query to F&C enquiring why property was not appearing on F&C website. Property was actually being marketed by "FINE" |
| 47. | 28/10/2010 | Epsom, Letherhead & Dorking | Call to F&C from Strutt & Parker Estate Agent after Knight Frank suggested that they call "Fine" regarding a property. |
| 54. | 06/12/2010 | Chelsea | A prospective licensee of F&C for the Chelsea area made a last minute decision not to proceed with the Licence, largely due to the large-scale brand confusion that he has seen between F&C and FINE in Surrey. |
| 62. | 28/01/2011 | LinkedIn invitation stating that Dean Heaviside has indicated that Napoleon Wilcox (of F&C) is a colleague at FINE. | |
| 74. | 22/04/2011 | Sister of an employee of F&C thought that a FINE brochure was produced by F&C. |
| Tab | DATE | LOCATION | COMMENTS |
| 94. | 09/09/2011 | Berkhamsted | Member of the public attended the Berkhamsted F&C offices to complain about a letter F&C had (apparently) sent to her stating that it had sold her property to her last year and offering a market appraisal. She had in fact used another agent and asked why F&C were sending out letters with false statements. F&C representative explained that F&C had not sent out the letter. On closer inspection of the letter it transpired that the letter had been sent by FINE. The member of the public was embarrassed when this was pointed out to her. F&C representative gave her the telephone number for FINE and advised her to take the matter up with FINE directly. The customer apologized for the confusion and left the office. |
E2: others ...101" refers to tab 1, "102" refers to tab 2, etc.)
| Tab | DATE | LOCATION | COMMENTS |
| 101. | 16/09/2011 | Gerrards Cross | Representative of F&C Gerrards Cross (Gari) took a telephone call from a member of the public (Ms Ward) asking to speak to "Sue". Gari explained to Ms Ward that there was no Sue who worked for F&C Gerrards Cross and, knowing that there was a Sue working for the Gerrards Cross FINE office, explained that Ms Ward needed to call FINE. Ms Ward explained to Gari that she understood that she had called Fine & Country. Gari was required to re-emphasis that this was F&C and that Sue worked for FINE. |
| 106. | 21/09/2011 | Loughborough | (See "Sellers"). (See "Buyers"). F&C representative's friends often ask how FINE is going. The friends live in West Bridgford where there is FINE branch. |
| Tab | DATE | LOCATION | COMMENTS |
| 111. | 24/09/2011 | Epsom | A new employee of F&C who previously worked for Haart in Chigwell (which had a Fine division) informed F&C that they were always getting calls from people who thought they were telephoning F&C. |
| 116. | 30/09/11 | Haslemere, Surrey | Relative of F&C employee received marketing material in the post which she assumed had been produced by F&C. They had in fact been produced by Fine. |
| 123. | 30/09/2011 | Member of the public telephoned F&C to complain about two dogs running on her land which came from a property that she thought was on the market with F&C. She said that the property had recently been advertised in the "East Anglian". F&C consultant asked what the company logo at the top of the page said and caller said that it said "FINE". Consultant explained that this was a different company. Caller said that she thought that they were the same company. | |
| 141. | 22/11/2011 | Stratford Upon Avon | F&C licensee conducted a consultancy morning and training afternoon during which she mentioned Fine & Country. A director of the company taking the training observed that Fine & Country had changed their name to FINE. It transpired that he thought that this was the case because he had seen a recent newspaper advertisement which he felt was "so similar to Fine & Country" that they must have changed their name. |
| Tab | DATE | LOCATION | COMMENTS |
| 170. | 27/02/2012 | Park Lane | Potential client called F&C office asking to speak to Fine estate agents. It appeared that she had however called the number for the Fine & Country Hockley office from the Zoopla website. |
| Tab | DATE | LOCATION | COMMENTS |
| 3. | 24/02/2010 | Gerrards Cross | FINE preparing to open an office in Gerrards Cross down the road from F&C office. Clients enquiring as to when F&C are moving. |
| 12. | 08/06/2010 |
Chelmsford & West Essex | Agent reporting that F&C regularly receive calls from public insisting F&C send details of properties which are in fact on the market with FINE. Clients frequently upset, believing F&C unhelpful until situation explained. Most clients believe two brands to be the same. |
| 20. | 01/07/2010 |
Woodbridge | (See "Sellers"). Applicants also coming in to Woodbridge office asking for details of FINE properties. (See "Sellers"). (See "Buyers"). |
| 35. | 20/08/2010 |
St Neots | Call from potential client to F&C asking to speak to someone from FINE. |
| 36. | 13/09/2010 | Grantham | Call from potential client regarding property on the market with FINE. |
| Tab | DATE | LOCATION | COMMENTS |
| 44. | 18/10/2010 | Epsom, Leatherhead & Dorking | (See "Sellers"). Telephone call from potential client to F&C asking to speak to someone who actually works for FINE. He then enquired whether he was speaking with F&C in Dorking. He had previously typed F&C into Google and got FINE's details, repeated the same search on the day of the call and got F&C's. |
| 63. | 09/02/2011 | Enquiry from potential customer requesting details of a property that is on the market with FINE. | |
| 67. | 30/03/2011 | Suffolk | F&C received a call from a client asking for a gentleman at FINE in Woodbridge |
| 91. | 28/06/2011 | Park Lane, London | Mr Ogden called the Park Lane F&C office to request a "FINE" brochure. He had first called the telephone number taken from FINE's Telegraph property advertising which did not work. Then he took the telephone number from the F&C advert, confusing F&C for FINE. |
| 126. | 15/10/2011 | South & West Suffolk | F&C received a query via the Rightmove website which read: "Can you please advise are you related to the "fine" estate agents? Thank you." F&C spoke to the enquirer and advised that the companies were not related. He said that he was just curious as our logos, marketing etc were very similar. |
| 135. | 25/02/2010 | Member of the public thought that F&C had rebranded their name and logo to burgundy. This was in fact the colour used by FINE. Member of the public was confused. | |
| 136. | 25/02/2010 | North Essex | F&C office experiences problems regarding confusion everyday. Some members of the public have become irate when F&C agent explains that a property was not in fact marketed by F&C but by FINE; F&C agent had had many conversations explaining that F&C and FINE are not the same company. |
| Tab | DATE | LOCATION | COMMENTS |
| 139. | 09/11/2011 | Representative of a company rang F&C asking to speak to Dean Heaviside, director of FINE. | |
| 153. | Cambridgeshire | Member of the public thought that Fine & Country was listing a property in Romsey which was in fact listed with FINE. | |
| 168. | 27/05/2011 | Park Lane | Note left for F&C Park Lane Office requesting a copy of "Fine" magazine |
