Full case report

Fearns v Anglo-Dutch Paint & Chemical Co Ltd & Ors

Reference [2007] EWHC 955 (Ch)
Court Chancery Division

Judge Christopher Floyd QC

Date of Judgment 2 May 2007


Summary

Trade marks – Infringement – Passing off – Misrepresentation – Malicious falsehood – Publication – Copyright – Infringement – Duration – s.52 Copyright, Designs and Patents Act 1988 – Breach of contract – Causing loss by unlawful means


Facts

F sold high quality paint for spray painting cars under the name and trade mark ‘Autopaint’. He bought paint from various companies, including DB, the 2nd Defendant (run by the 4th-6th Defendants), whose UK distributor was AD, the 1st Defendant (whose UK representative was the 3rd Defendant). AD began selling paint directly to F’s franchisees under the Autopaint brand. F brought claims for trade mark infringement, passing off, malicious falsehood, copyright infringement and breach of contract. The Defendants maintained that ADs actions had been previously agreed with F.


Issue

(1) Whether F had consented to AD’s actions;

(2) If not, whether F’s various cause of actions were made out.


Held

(1) There was an agreement that AD could supply F’s franchisees, but this was limited to when F was unable to supply the relevant product. Some of AD’s actions were outside the scope of this agreement.

(2) The Defendants were liable for infringement F’s trade marks, 3 of the 4 claimed species of passing off and breach of contract. The claim to ‘false representation as to status’ passing off failed as the Defendants’ actions did not lead to a false inference of association with F. The malicious falsehood claim failed as the falsehood was not published. The copyright infringement claim failed as copyright protection was limited to 15 years under s.52 CDPA 1988 and the transitional provisions of that Act (as the logo had appeared on industrially processed copies which were not printed matter). Some of the breach of contract claims failed (the contracts not including such terms), as did the claim for causing loss by unlawful means (unlawful acts not causative of loss).


Comment

This was ultimately a simple case turning on the scope of the agreement between the parties as to direct selling by the Defendants, although each of the wide variety of causes of action pursued raised various subsidiary issues.


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Instructing Solicitors

Bevans for F; Faegre & Benson LLP for the Defendants