Inquiries as to Damages in the Intellectual Property Enterprise Court: The National Guild of Removers and Storers Ltd v Statham and Others
The National Guild of Removers and Storers is a trade association for the removal industry. According to its website
"The Guild's priority has always been, and remains, consumer protection in an industry where there are no specific laws to protect the moving public"
and its efforts in respect of consumer protection have been recognized by Which. As a result, the Guild has a good reputation among the public making it advantageous to become a member. The Guild has a number of trade marks which it allows its members to reproduce on their stationery, marketing literature and websites for so long as they remain members of the Guild.
When a remover ceases to be a member of the Guild it is required to remove the trade mark and references to the Guild immediately. If it fails to do so the Guild sues it for trade mark infringement or passing off. The Guild has brought a number of infringement proceedings over the years against its former members and the damages that have been awarded to it have been quite heavy. I have blogged about two of those cases in Assessment of Damages: National Guild of Removers & Storers Ltd v Silveria 13 Nov 2010 and Why we needed to reform the Patents County Court: Deakin and National Guild 8 March 2011.
In The National Guild of Removers and Storers Ltd v Statham and Others  EWHC 3572 (IPEC) (5 Nov 2014) the Guild claimed damages of £26,866.77 from a husband and wife removal firm in Wrexham which had omitted to remove a reference to the Guild in their listing on a third party website. That entry had remained unnoticed between 2010 and 2013. The partners of that firm, Mr and Mrs Statham, said that
"the relevant pages of the website were only ever viewed by four unique users, all on the same day (25 March 2013), and these users and thus the only people who ever saw the pages were NGRS's employees and its lawyers and .... the Stathams arranged for the removal of the representations on the same day they received the letter before action, 15 April 2013."
The Guild did not accept that that was the case and argued that it would have made no difference even if it were and that the defendants had to pay the going rate. Mr and Mrs Statham did not resist an application for summary judgment under CPR Part 24. Mr Justice Birss ordered an inquiry as to damages which came on before His Honour Judge Hacon.
Judge Hacon reviewed his predecessor's judgments in Silveria and Jones but declined to follow them. He reminded himself of the principles for determining the royalty that would have been agreed between a wiling licensor and willing licensee negotiating at arms' length which I listed in Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014. Applying those principles he directed himself as follows:
"The hypothesis with which I must begin is that immediately before the termination of the Stathams' membership on 13 October 2010 they entered into negotiations with NGRS for a licence to cover the use which the Stathams made of the NGRS name over the next two and a half years. Since both sides are to be taken to be willing to enter into a licence, I must assume that both would have been conciliatory to that extent."
He reasoned that the claimants would not be less than the annual membership fee and that the defendants would have accepted a licence on those terms. As the defendants had been charged no more than £1,800 per year for membership of the Guild the judge awarded damages at £5,200.
Judge Hacon's methodology is simple, systematic, fair and grounded in authority. It will not be easy to challenge on appeal. Should anyone wish to discuss this judgment or the assessment of damages in general he or she should call me on 020 7404 5252 during normal office hours or message me through my contact form.