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Saturday, 5 July 2008

The Lloyd's case: what REALLY happened

Last month the IPKat published a note ("Lloyd's hanging on, but only just ...") on a recent Chancery Division decision of Mr Justice Warren that was briefly noted by LexisNexis Butterworths. He has since been in contact with Anna Carboni who, as good fortune would have it, was involved in this litigation. She is able to give here a far fuller and, dare one say it, more accurate account of what actually happened.

Right: it can be dangerous to rely on out-of-date information concerning the maritime industry

Anna tells the IPKat:

"Lloyd's and Informa (Lloyd's licensee in relation to publishing et al.) sued a company which, calling itself Lloyds Publishing Group Limited (LPGL), purported to issue publications and provide database and information services in relation to the maritime industry. Asserting a number of LLOYD'S and LLOYD'S LIST trade marks the claimants sued for Trade Marks Act 1994 section 10(2)- and 10(3)-type infringement -- (i) i.e. similar/same mark + similar/same goods/services + likelihood of confusion and (ii) similar/same mark + taking advantage without due cause. Claims were also made under the equivalent Community Trade Mark Regulation provisions and for passing off.

LPGL counterclaimed for partial invalidity of some of the LLOYD'S trade marks, insofar as they went beyond insurance services, on the basis that lots of companies have LLOYD or LLOYDS in their names, particularly in the maritime arena, so LLOYD'S was not capable of distinguishing one particular entity from others. The claimants applied for summary judgment on both the claim and counterclaim.

Warren J issued a lengthy and detailed judgment which took over two hours to deliver. He found that the claimants had established their case in relation to passing off and section 10(3) infringement, but thought that the case under section 10(2) was not made out on a summary judgment basis because all the trade marks were limited by the term "all in relation to insurance" or the like (e.g. "publications, all in relation to insurance") and the question of similarity of goods could not be determined on a summary basis. The only thing that the judge could not be sure of was whether the mere use of the company name Lloyds Publishing Group Limited or the domain name Lloyds-pg.com in future, without some of the other behaviour of which the claimants complained (such as describing itself as "the leading information source for the global maritime industry"), ought to be stopped on a summary judgment application. He thought that, if LPGL were to adopt a completely different trading name and to stop saying things which were obviously meant to convey the message that they were connected with the claimants, they might have an arguable defence to the claims.

The result at the end of the judgment was that the judge planned to make an order for final injunctive relief to prevent the use of the names LLOYDS and LLOYDS PUBLISHING as a brand or trading name (e.g. to mark magazines and to name data subscription services) and to stop a number of specific activities that had been complained of (e.g. the "leading information source" claim), and to grant interim injunctive relief to prevent the use of the web address www.lloyds-pg.com for the defendant's website. The question of the company name and whether the web address relief should be made final would have to go to trial.

On the claimants' separate application to join the sole director and shareholder of LPGL as an individual defendant, he also said that he intended to give leave to join him so that the claimants could pursue him as a joint tortfeasor. When discussing costs, the judge stated that the claimants had been "90% successful" and made an order that LPGL should pay £50,000 of the claimants' costs bill on the summary judgment application by way of an interim award. (ie.the claimants were certainly due more, but would have to go to a detailed assessment for the rest).

That was the situation at lunchtime on 19 June. By the end of the afternoon, however, both LPGL and the individual concerned (Mr Nadeem Casim) had agreed to a final order granting final relief in the action and dismissing the counterclaim. That Order was made by the judge by consent of the parties".

The IPKat says thanks, Anna, for this. Merpel says, this still looks like one of those cases in which, on any objective analysis, the defendants should have had the common sense to keep out of trouble rather than argue their way out of it.

4 comments:

Anonymous said...

A very one-sided take on things! You should contact the other side for their take on the matter. Then you can arrive at a a more balanced view-point.

Ms Sarah Penn said...

Dear Sir,

We believe that your article is biased and disparages our company. We are seeking legal advice on the matter. In the meantime, please remove the name of our MD from your web pages.

We made it clear to the Court from the outset that we would not be responding to every single argument at this Summary stage, as this would simply be a costs exercise. The Judge did in fact say that it was a 'finely balanced case' for Summary trial. We were 100% successful in preventing the other side from succeeding at the summary stage, which in fact is all we needed to do.

Post verdict, the Judge made recommendations to us to re-phrase the descriptions on our site such as, 'the definitive' information source, as this could possibly give rise to injunctive relief to the other side. He explicitly stated that the claimants would find it difficult to convince any Judge to prevent us from using the name Lloyds Publishing Group and neither was he planning to injunct our domain name per se.

Post verdict, our MD accepted Ms Carboni’s polite invitation to sit down in conference with Lloyd’s and Informa. He did not have to accept and could easily have turned her down! The MD made a commercial decision to bring the case to an end since the matter had become a distraction for us and we had several projects that we wanted to bring to market without the spectre of litigation in the background. Incidentally, Lloyd's and Informa accepted the same deal that we had put forward several months earlier but at that time they had rejected.

Lloyd’s did not recover any costs, contrary to the assertion made in your article. Similarly, we agreed to forego our counter-claim in return for the other side’s agreement not to pursue its claim for damages and/or an account of profits.

On an objective analysis, you should check your sources properly and approach both sides for an opinion before you take the plunge and publish a misleading article.

Yours faithfully,

Sarah Penn
PA to NC

Ps. our MD describes Ms Carboni as a worthy adversary who was in fact very gracious even when her side came in second place.

Jeremy said...

The IPKat is not a newspaper. It's a weblog. It quotes its sources, so if you don't like what he says you can at least see where he has got it from. And the IPKat is happy to let people who want to press the opposite view post comments, just as you have done.

Some, hiding behind their anonymity, are disgruntled litigants ...

Sarah Penn said...

You say that you let people who want to press the opposite view post comments. In that case can you please ensure that my comment dated Thursday, July 31, 2008 5:00:00PM is posted to all the other web pages where you have posted the article, including:

http://groups.google.com/group/ipkat_readers/browse_thread/thread/f41dba326b43e418?pli=1

Please ensure that this happens, as we have still not ruled out legal recourse.

Sarah Penn

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