Passing off - Thurgood v Laight
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Intellectual Property Enterprise Court (David Stone) Thurgood v Laight and another [2024] EWHC 2947 (21 Nov 2024)
This was an action for passing off, The claimant, Laura Thurgood ("Ms Thurgood"), carried on a dog grooming business near Birmingham in the name or style of WASH WIGGLE & WAG. The first defendant, Danielle Laight ("Ms Laight"), worked in that business until May 2020 when she fell out with Ms Thurgood. She incorporated the second defendant in the name of Wash Wiggle & Wag Ltd, on 29 May 2020 and registered <washwigglewag.co.uk> as a domain name. Ms Laight and her company began to trade under that appellation. Ms Thurgood complained that her business had declined considerably in June and July 2020. She abandoned her WASH WIGGLE & WAG brand in September 2020.
Procedural History
Ms Thurgood issued proceedings against Ms Laight and her company out of the Queen's Bench Division for various causes of action including libel and malicious falsehood, money had and received, breach of confidence and passing off, The action was transferred to the Intellectual Property Enterprise Court. The issues were gradually narrowed so that the only claim left was for passing off,
Ms Laight's Defence
Ms Laight's defence to that claim is at para [2] of the transcript of judgment:
"i) Ms Thurgood had not traded sufficiently under WASH WIGGLE & WAG to have established goodwill;
ii) Ms Thurgood had traded under other names including SCRUFFY2FLUFFY and DOGGY STYLE such that customers would not recognise her business as WASH WIGGLE & WAG;
iii) Ms Laight was the only groomer in Ms Thurgood's business in the Territory, and she built up her own reputation – it was that which brought in custom;
iv) No one was misled because no one thought that the grooming services (also referred to as "grooms") offered by Ms Laight after she left Ms Thurgood's business were associated with Ms Thurgood; and
v) Any damage to Ms Thurgood's business following Ms Laight's departure was not caused by Ms Laight's actions, but rather by poor customer service within Ms Thurgood's business."
The Issues
At a case management conference which took place on 6 Feb 2024 His Honour Judge Hacon ordered the following issues to be tried (para [8] of the transcript):
"1. Goodwill. Whether Ms Thurgood owned any goodwill under or in connection with WASH WIGGLE & WAG at any material time during the period from about June 2018 onward, including by reason of the use of WASH WIGGLE & WAG by her and/or on her behalf and/or with her licence and/or consent, and if so, to what extent;2. Misrepresentation. Whether the Defendants have, or either of them has, caused or are/is likely to have caused, members of the public to be deceived into believing, contrary to the fact, that: (a) the Defendants' respective businesses and/or services (or any of them) are or were those of Ms Thurgood, or vice versa; and/or that (b) the Defendants' respective businesses and/or services (or any of them) are or were endorsed, approved, authorised, licensed or franchised by, or somehow otherwise associated in the course of trade with, Ms Thurgood, or vice versa; and
3. Damage. Whether Ms Thurgood has suffered damage to her said goodwill by reason of the said acts of deception and/or the said likelihood of deception"
Mr Stone reminded himself of Lord Macnaghten's description of goodwill on page 223 of his speech in Inland Revenue Commissioners v Muller & Co's Margarine [1901] UKLawRpAC 20; [1901] AC 217 (20 May 1901) as "the attractive force which brings in custom". There was no doubt in Mr Stone's mind that Ms Thurgood had established goodwill in her dog grooming business by reference to the sign WASH WIGGLE & WAG within a radius of 30 miles of Redditch between 3 July 2018 when she bought a van with those words printed on its side to 20 May 2020 when Ms Laight left the business.
"i) The use of the van with customers. As set out above, the van provided a mobile grooming salon. Most customers of the business would have encountered Ms Laight in that context, and would have seen the van whilst their dog was groomed. Pictures of the van were in evidence – each clearly shows the words WASH WIGGLE & WAG on the van. In my judgment, no one seeing that use would have considered it to be descriptive use – it would have been seen, in context, as indicating the source of the dog grooming services being offered. There was no argument before me that WASH WIGGLE & WAG is descriptive of dog grooming services, or would have been seen as such by the business's customers. There was no mention on the van of any other service-identifying sign, such as SCRUFFY2FLUFFY;
ii) Use of the van more generally. There was also evidence before me of at least two occasions on which Ms Laight parked the van at busy shopping centres to help promote Ms Thurgood's business – she recorded this in writing in correspondence with Mr Bob Thurgood. I accept that the van, driven around the area, will have helped to advertise Ms Thurgood's business, as potential customers of the business will have seen it, and been able to contact Ms Thurgood's business to discuss its service offering;
iii) Advertisements. Ms Thurgood placed advertisements in at least four local newspapers and on the website at Yell.com. The advertisements were in evidence, and clearly show use of WASH WIGGLE & WAG to identify Ms Thurgood's business: WASH WIGGLE & WAG is followed by MOBILE DOG GROOMING SALON. There is nothing else on the advertisements to indicate another entity – for example, the advertisements do not mention SCRUFFY2FLUFFY. The advertisements list the various dog grooming services provided, alongside an image of the van. There was a suggestion from Ms Laight that the advertisements, which she was sent in draft at the time by SMS, were never actually published. Given Ms Thurgood's clear evidence that they were, and an invoice for the advertisements which was in evidence, I am unable to accept that submission; and
iv) Facebook and Instagram pages. As noted above, Ms Laight set up, and ran, the Facebook and Instagram pages for Ms Thurgood's business, with Ms Thurgood's consent. Each page included use of WASH WIGGLE & WAG, although SCRUFFY2FLUFFY also appeared. In my judgment, having reviewed the extracts from the pages which were in evidence, it would have been clear to those seeing these pages that WASH WIGGLE & WAG was being used as an indication of source of origin, and not as a tagline or other promotional slogan. In evidence was, for example, a posting about a Covid food collection which Ms Laight signed off with:
'Sending all my love
Danni
Wash wiggle & wag'"
"Those uses were in trade. They were uses of a sign which was not descriptive of the services being offered. The sign was used to indicate the source of the services being offered by the business and customers would have seen it as such. On the evidence before me, that use gave rise to goodwill in WASH WIGGLE & WAG which I find to have been exclusively associated with Ms Thurgood's business."
The van was driven around the area and would have performed a general advertising function when driven around the area and parked in high-traffic areas. The WASH WIGGLE & WAG sign was also used in advertising, and on Facebook and Instagram. The sign SCRUFFY2FLUFFY had also been used but that did not matter because businesses often use multiple trade marks. Over 2,600 grooms were undertaken under the WASH WIGGLE & WAG sign and Ms Thurgood had 700 repeat customers. Mr Stone was therefore completely satisfied that Ms Thurgood owned goodwill in WASH WIGGLE & WAG in relation to dog grooming within 30 miles of Redditch.
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