Passing off: NGRS. v Bee Moved

Author Anthony M. from Rome, Italy

Licence CC BY 2.0,

  Source Flickr, Wikipedia

Jane Lambert

Court of Appeal (Lady Justice Asplin and Lord Justice Kitchin)  The National Guild of Removers & Storers Ltd v Bee Moved Ltd and others [2018] EWCA Civ 1302 12 June 2018

This was an appeal from the decision of Mr Recorder Campbell QC in The National Guild of Removers And Storers Ltd v Bee Moved Ltd and others [2016] EWHC 3192 (IPEC) (13 Dec 2016) which was an action for passing off.  The appeal was over what constitutes a misrepresentation for the purposes of passing off and whether new evidence should be allowed on appeal.

The claimant company was described by Lady Justice Asplin as "a trade body which represents and provides services to its members in the removal and storage business".  Storage and removal companies that pay its fees and abide by its rules can describe themselves as a "member of the NGRS."  Those that cease to do so may no longer to hold themselves as members. They must remove all references to the Guild from their websites, advertising and business literature before their membership expires. Should they fail to do so they risk proceedings for trade mark infringement. passing off or both. I have blogged about several actions in which the claimant has sued its former subscribers.

The first defendant was a storage and removal company that had once subscribed to the NGRS's scheme. The other two defendants were the first defendant's directors and shareholders.  When the defendant company ceased to be a member of the NGRS the third defendant removed most of the references to the Guild but he missed the following bullet point on a checklist to house movers:

• "use a removal company who is a member of the National Guild of Removers and Storers."

The learned recorder held that that bullet point amounted to a misrepresentation that the defendant company was still a member of the Guild.  A bit harsh perhaps but neither the directors nor the company challenged that part of Mr Recorder Campbell QC's decision.

The claimant also complained that a statement that the first defendant was still a member of the NGRS appeared briefly on a directory page of the Really Moving website  after the company had ceased to be such.  That page had appeared after a website crash.  The crash caused the Really Moving server to substitute a page that had been created when the company was still  a member of the NGRS for a page that did not contain that statement.  Mr Recorder Campbell QC held that the defendant company and its directors could not be responsible for a statement that they had not made.  It was against that part of his judgment that the NGRS appealed.

Counsel for the NGRS argued that the action for passing off was a  tort of strict liability and that it was irrelevant that the defendants had not intended the untrue statement to appear on the Really Moving website.   Lady Justice Asplin did not buy that argument at all.  She said at para [26] of her judgment:

"t seems to me that the real question here is not one of intention or knowledge of the misrepresentation at all. It is whether the misrepresentation on the directory page can be said to have been "made" by BM or, to put it another way, whether BM was responsible for it. Did BM make the representation on the directory page by becoming a member of the Really Moving site and uploading information through a login page for the purposes of advertising, without stating at that stage, that the information was in any way time limited or might become inaccurate, when it was unaware of the existence of the directory page and had no intention that information be placed there? Lord Oliver in the Reckitt & Colman case was drawing attention to something entirely different. He was not addressing the question of whether the defendant 'made' the misrepresentation in the first place but whether he knew it was a misrepresentation or intended it to be one."

The recorder had observed that it might have been possible to argue that the owners of the Really Moving website was the defendant company's agent but that had not been pleaded.   Both Lady Justice Asplin and Lord Justice Kitchin held that the recorder was right to come to the conclusion that he had reached and they dismissed that part of the appeal.

The learned recorder had based his decision on the evidence of the third defendant that he had no access to, and no way of altering, the directory page.  The claimant's solicitor filed a witness statement exhibiting pages from the internet archive (presumably the "Wayback Machine") which allegedly discredited his evidence.  Lady Justice Asplin was not impressed by that material.  She said at paragraph [18]:

"It is well known that this court will not receive evidence which was not before the court below unless it orders otherwise: CPR 52.21(2). When determining whether to do so, the court must seek to give effect to the overriding objective of doing justice and, in doing so, attempt to strike a fair balance between the need for concluded litigation to be determinative of disputes and the desirability that the judicial process should achieve the right result."

Referring to Ladd v Marshall  [1954] 1 WLR 1489, [1954] 3 All ER 745, [1954] EWCA Civ 1, [1954] WLR 1489 and Sharab v Al-Saud  [2009] EWCA Civ 353, [2009] 2 Lloyd's Rep 160 she added that the principles that the court should consider were "whether the evidence could have been obtained with reasonable diligence for use at the trial; whether the new evidence would have had an important influence on the result; and whether the evidence is apparently credible."

Applying those principles her ladyship decided at paragraph [19] that it was not appropriate to admit the new evidence.  It could have been adduced with reasonable diligence before trial and it was not clear that it would have made any difference to the recorder's judgment.   

Though a short case this is quite an important one.  The appeal judgment should be read with the decision at first instance.  The difference between the overlooked bullet point on the checklist and the substitution of the old directory page may appear to be subtle but the former was a misrepresentation while the latter was not.

Anyone wishing to discuss this appeal or passing off generally should call me on 020 7404 5252 during office hours or send me message through my contact form.