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Intellectual Property Enterprise Court settles ‘Silent’ trade mark dispute

Written by Ellis Sweetenham on 20 January 2016

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Facts:

The applicant, who held a trade mark for the name "SILENTNIGHT", had alleged that the respondent company, who had been trading alongside it for 17 years under the name "Silent Sleep", was infringing its trade mark and engaging in passing off.

The parties concluded a settlement agreement where the respondent company agreed to rebrand. The rebrand included a change to its corporate name as well as the transfer of any domain names or registered trade marks which used “Silent Sleep” to the applicant.

They were told to do this ‘as soon as practically possible’, within a one-year period set.

As part of the agreement, the respondent company also agreed to not use any material which would be confusingly similar or linked to in any way, that of “SILENTNIGHT” or “Silent Sleep”. This includes any marketing material or any future intellectual property.

These proceedings were instigated by the applicant as they alleged the respondents had breached a number of key provisions from above explained agreement.

These breaches included the continuing use of “Silent Sleep” trade mark after the agreed deadline. It was also highlighted that they still had control over the domain name which lead to an ‘under construction’ website. This website also still contained the mark in question.

The respondent commented on the allegations highlighting that they had rebranded, changed its corporate name and withdrew all trade mark applications as requested.

The applicant sought relief in relation to the alleged breaches.

Judgment:

The respondents were in breach of several clauses of the agreement.

Although the respondent company had completed the rebranding before the deadline, it had taken 11 months which was not "as soon as practically possible". It also took the same time period to change its corporate name. Both suggested a breach of the agreement.

They were also in breach for keeping the domain name related to Silent Sleep: it had offered it to the applicant well after the deadline for transferring, and had renewed the undertaking to transfer at the instant hearing, but had not used its best endeavours to transfer it.

In addition, they had not made any effort to transfer any trade mark applications, only withdrawing them.

The respondents submitted that the website containing the name Silent Sleep was not a breach, as it was not using any sign or logo confusingly or colourably similar to the applicant's trade mark. It had not accepted in the agreement that Silent Sleep could be confused with the applicant's trade mark.

They advanced a similar defence for the failure to cease using the trading name Silent Sleep after the deadline.

The Judge indicated that they were arguable matters that could be determined if a trial took place.

The court found it unclear what relief was sought by the applicants.

If it was for an interim injunction, the court was satisfied that there had been breaches, but there was no evidence of likely irreparable harm to the applicant between the instant hearing and any trial. This would prevent an injunction being granted.

The court also, strongly disagreed with the request for the case to be taken further as they feel it would be a waste of the courts time. They believe the applicant had not shown any real threat of a future or continuing breach of the settlement agreement, given that the respondents had undertaken to transfer the domain name to the applicant. The court was not convinced that the applicant had suffered serious harm from any of the breaches

A trial seeking a permanent injunction to restrain future breaches would not satisfy the cost-benefit test, nor was it sensible to allow a trial to determine whether the arguable breaches were in fact breaches, and whether damages should be awarded for the rest.

No relief was awarded.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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