[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	England and Wales Patents County Court
You are here: BAILII >> Databases >> England and Wales Patents County Court >> Filtco Inc & Anor v Air Science Technologies Ltd & Anor [2011] EWPCC 01 (06 January 2011) URL: http://www.bailii.org/ew/cases/EWPCC/2011/1.html Cite as: [2011] EWPCC 1, [2011] EWPCC 01

[New search] [Printable RTF version] [Help]

IN THE PATENTS COUNTY COURT

		St. Dunstan's House 133-137 Fetter Lane London EC4A 1HD
		06/01/2011

His Honour Judge Birss QC :

1. This is an application for summary judgment brought by the second defendant, John Haugh, which is sought in order to decide most (or all) of the points in issue.
2. The case is about fume cupboards. The first claimant (Filtco) makes fume cupboards in the USA. They are sold under the mark AIR SCIENCE. The second claimant (Air Science USA) holds a US registered trade mark for the mark AIR SCIENCE. Both claimants are US corporations. The first defendant (AST) is a UK company. It was distributing fume cupboards in the UK and elsewhere which were purchased from Filtco. The claimants contend this distribution was pursuant to an oral agreement. They say the agreement gave AST permission to use the brand AIR SCIENCE, provided that all the goodwill accruing would belong to Filtco and provided that AST would source product from Filtco (subject to certain specific exceptions).
3. There is a degree of common ownership and control between the various companies, such that Mr Andre Chambre is a director of all three companies: Filtco and Air Science USA and AST. The second defendant (John Haugh) was a director of AST but not the other two companies. The distribution agreement is said to have commenced in 2004 and come to an end in August 2009 when, say the claimants, AST was in breach. The breaches were that AST cancelled all outstanding purchase orders and stated it would source fume cupboards from elsewhere. The claimants contend that AST's breach was repudiatory, that the repudiation was accepted and so the contract came to an end in 2009. For a period of about 6 weeks thereafter AST continued to use the AIR SCIENCE mark in various ways. The claimants contend AST had no right to do so and that these activities amounted to passing off. AST had also registered a UK registered trade mark ("AIR SCIENCE") and had an internet domain www.airscienceuk.com. Both were claimed by the claimants.
4. The action began when the claim form was issued on 18^th December 2009. The Particulars of Claim includes the following claims

i) A breach of contract claim against AST.

ii) A claim for rectification of the trade mark register to gain control of the UK AIR SCIENCE registered trade mark then held by AST.

iii) A passing off claim against AST in relation to the use of the mark AIR SCIENCE.

iv) A claim that John Haugh is jointly liable as a joint tortfeasor for all the various acts committed by AST on the basis of a common design.

5. Two points arise, the first as to the claimants. Although Filtco was the manufacturer and was said to be the party to the distribution agreement, Air Science USA was a co-claimant. As the holder of the US registered trade mark, it was a proper party to the rectification claim. Also, in correspondence AST's solicitors had taken the position that the goodwill in the mark AIR SCIENCE might have been owned by Air Science USA rather than Filtco and so, from the claimants' point of view, that potential point was headed off by both companies being claimants. So initially Air Science USA was named as a party to the action.
6. The second point relates to the case against John Haugh. The Particulars of Claim pleaded his liability as a matter of joint tortfeasance arising from a common design (see the heading to paragraph 23 of the Particulars of Claim). Such common design joint tortfeasance pleas are quite common in intellectual property cases since infringements are torts (see e.g. Jacob LJ in Generics v Lundbeck [2006] EWCA Civ 1261 at para. 24 and Chadwick LJ in MCA v Charly [2002] FSR 26 at paras 49-53). As drafted however the pleading includes an allegation of joint liability for AST's (alleged) breach of contract. Correspondingly, the way in which the damages claim is put in the prayer is also completely general and, within its generality, includes a claim that John Haugh is jointly liable for damages for AST's breach of contract.
7. The claim was defended by both defendants. John Haugh's defence includes the following points:

i) He denies that there was a distribution agreement between Filtco and AST. He says the only relevant agreement was one between himself and Andre Chambre which led to John Haugh being employed by AST. In effect this was his employment contract with AST.

ii) He says there was no breach of the distribution agreement nor of the agreement he contends was entered into.

iii) He says there was no provision causing UK goodwill in the mark AIR SCIENCE to accrue to Filtco. He denies that Filtco (or both claimants) own the goodwill in the AIR SCIENCE mark when used on fume cupboards in the UK (Defence para 33). Therefore there was no passing off.

iv) On joint liability John Haugh's defence (para 62) states that he denies liability, states that the whole of the previous paragraphs of the defence are repeated and then states that "save as aforesaid" the paragraph of the Particulars of Claim which pleaded joint liability in the first place (para 23) is admitted.

8. The trial is listed for February 2011. Over the summer written evidence was exchanged. John Haugh relies on his own statement. The claimants filed a statement from Paul Chambre (a director of Air Science USA) and an unsigned witness summary from Andre Chambre. CPR Part 32 r 32.9 provides for the use of witness summaries when a party who is required to serve a witness statement is unable to obtain one. The party can apply for permission to serve a witness summary (r39(1)(b)) and the claimant did so in October 2010. I gave permission on 28^th October 2010. If the evidence is known, the witness summary is a summary of the evidence which would otherwise be included in a witness statement (r29.2(a)).
9. On 28^th October John Haugh applied for summary judgment. The order he sought was that the second claimant's claims be dismissed and the claim for breach of contract be dismissed. This was supported by a statement from Mr Bruce Jones of Hill Dickinson, John Haugh's solicitor. Mr Jones makes a number of points:-

i) If summary judgment were given as sought the only remaining claiming would be the passing off claim which could probably be determined in a morning as there is so little evidence in support of it.

ii) Now that evidence has been exchanged "it is clear there is no enforceable contract". The evidence makes no reference to the terms pleaded and the claim has no realistic prospect of success.

iii) The second claimant's position is unclear and following witness statements it has no prospect of success.

iv) The witness summary of Andre Chambre can be discounted entirely because apparently the only basis he would have attended trial was if he was compelled to do so but there is no mechanism by which the court could compel his attendance from the USA. So anything in his witness summary should be discounted on this application and without evidence from Andre Chambre, there was no evidence at all that the contract existed.

10. One further matter is addressed in Mr Jones' statement. He explains that recently John Haugh was "effectively forced to resign as a director of the first defendant following the exercise by Paul Chambre … of his power as majority shareholder of the first defendant." John Haugh thought that once further directors were installed in AST in his stead, that company would settle with the claimants.
11. Sure enough AST has now settled with the claimants. As part of the settlement the UK registered trade mark has been assigned to one of the claimants and that clearly disposes of the claim to rectify the trade marks register. Thus I have not seen the defence filed by AST. The application before me has proceeded on the basis that the settlement makes no difference to the liability (if any) of John Haugh to the claimants.
12. On 10^th December a witness statement from Andre Chambre was served (note not a witness summary) which addressed the application for summary judgment. From this statement it is clear that the impediment to his involvement before was the fact that he was a director of the claimants and was also the sole director of the first defendant after John Haugh had resigned. Now that matters have moved on Mr Andre Chambre says that he will be attending court to give evidence at trial. Thus, a significant element of John Haugh's application for summary judgment – that without Andre Chambre there was no evidence for the contract and Andre Chambre was not going to give evidence – has fallen away. Nevertheless since this was not the only basis for the application, John Haugh has proceeded with it.
13. The matter came before me on 20^th December 2010. Ms Anna Edwards-Stuart appeared for the claimants instructed by Pannone and Mr Andrew Norris appeared for John Haugh instructed by Hill Dickinson.
14. Mr Norris's skeleton argument raised two further points (which were characterised as "application creep" by Ms Edwards-Stuart). First it was submitted that if the application for summary judgment as put in the application notice was successful then in fact the passing off claim would be bound to fail too and should be summarily dismissed. Second it was submitted that John Haugh had a complete answer to the breach of contract claim, namely that he was not (and was not said to be) a party to the contract. All that is pleaded against him is a joint tortfeasance liability and there is no such liability for a director for breach of contract by the company.
15. Ms Edwards-Stuart submitted that I should not permit these two new points to be raised on the summary judgment application. They were not properly foreshadowed and the practice direction associated with Part 24 (PD24 para 2(3)) specifically provides that summary judgment applications must identify the point of law or provision in a document relied on and the accompanying statement must state that the application is made because the applicant believes that on the evidence the respondent has no prospect of success on the claim or issue.
16. I will not permit Mr Norris to raise the passing off point on this application. It was not properly foreshadowed and it changes the entire nature of the application from a partial one to an application which would, if successful, dispose of the whole claim. The basis on which I have refused to permit this point to be raised at this stage in this manner is that the rules applicable to summary judgment applications exist for a reason, to prevent unfair surprise to the respondent, and to give the second defendant permission to raise this point now would unfairly take the claimants by surprise. A second subsidiary matter is that although I can quite see Mr Norris' point that if he succeeds in establishing that there was no distribution agreement with a term about goodwill, that may well enhance his defence to passing off, nevertheless the distribution agreement is not the only basis for the claimants' claim to the UK goodwill. The Particulars of Claim pleads other matters as well, including the attendance by Filtco at international trade shows which were also attended by UK delegates, which are said to have caused Filtco to have acquired a UK based reputation in the mark AIR SCIENCE in any event. Mr Norris described these points and the evidence filed in support as thin and vague. I do not need to decide whether that is an accurate characterisation. It simply reinforces my view that it would not be fair to bounce the claimants into having to deal with this point here and now.
17. The point about joint liability for breach of contract is rather different. At the conclusion of the oral hearing of the application I indicated that I was not going to allow the claimant to be taken by surprise by this point, nevertheless it did seem to be a point which, once raised, needs to be addressed. I have summarised the parties' pleadings on the issue above. The point only arises at all from what might be nothing more than loose wording in part of the Particulars of Claim. Equally the Defence does not engage with the point either. Truly neither side has focussed on this point at all until Mr Norris raised it last week. I will say simply that joint tort liability for an act which is not a tort (breach of contract) would seem to be a surprising proposition. I will give the claimant a short period after this judgment within which to decide what they want to do (bearing in mind the trial is in February). If they intend to put forward a case by which John Haugh is jointly liable for the (alleged) breaches of contract of AST, then they must set it out properly and then John Haugh can respond if necessary.
18. The issues I have to resolve on this application for summary judgment are:-

i) The distribution agreement; and

ii) The second claimant.

19. During the course of the submissions I was taken to an exchange of letters between the parties' solicitors last week. On 13^th December the claimant's solicitors wrote to the second defendant's solicitors to make an open offer given that the claim had now ended as between the claimants and AST. The open offer was in effect that if John Haugh would undertake not to use the AIR SCIENCE mark in future and pay the claimants' costs then the claimants would waive any claim for damages or other financial relief. The undertaking sought is an undertaking not to pass off and to deliver up anything which could be used to breach that undertaking.
20. On 14^th December John Haugh's solicitors replied stating that Mr Haugh has never had any personal interest in the AIR SCIENCE mark and therefore would be willing to give the undertakings but was not prepared to bear costs since he believed the claims were unwarranted and ill-founded.
21. I asked the parties whether this showed that the only issue between the parties was one of costs but Mr Norris explained that the position was not as simple as that. Apparently the issue of the validity of the distribution agreement – which is at the heart of the issues in this case – is a very important matter for John Haugh because he is concerned that the first defendant AST is going to sue him personally very soon and that claim is likely to involve the same issue. Accordingly at least as it stands the action before me is proceeding.

The test for summary judgment

22. The grounds for summary judgment are provided by CPR Part 24, rule 24.2, which provides:

The court may give summary judgment against a claimant or defendant on the whole of a claim or on a particular issue if –

(a) it considers that –

(i) the claimant has no real prospect of succeeding on the claim or issue; or

(ii) the defendant has no real prospect of successfully defending the claim or issue; and

(b) there is no other compelling reason why the case or issue should be disposed of at a trial.

23. Mr Norris cited the convenient summary of the principles to be applied which Lewison J set out in Easyair Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch) at paragraph 15:

"The correct approach on applications by defendants is, in my judgment, as follows:

i) The court must consider whether the claimant has a "realistic" as opposed to a "fanciful" prospect of success: Swain v Hillman [2001] 1 All ER 91 ;

ii) A "realistic" claim is one that carries some degree of conviction. This means a claim that is more than merely arguable: ED & F Man Liquid Products v Patel [2003] EWCA Civ 472 at [8]

iii) In reaching its conclusion the court must not conduct a "mini-trial": Swain v Hillman

iv) This does not mean that the court must take at face value and without analysis everything that a claimant says in his statements before the court. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents: ED & F Man Liquid Products v Patel at [10]

v) However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial: Royal Brompton Hospital NHS Trust v Hammond (No 5) [2001] EWCA Civ 550;

vi) Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 63;

vii) On the other hand it is not uncommon for an application under Part 24 to give rise to a short point of law or construction and, if the court is satisfied that it has before it all the evidence necessary for the proper determination of the question and that the parties have had an adequate opportunity to address it in argument, it should grasp the nettle and decide it. The reason is quite simple: if the respondent's case is bad in law, he will in truth have no real prospect of succeeding on his claim or successfully defending the claim against him, as the case may be. Similarly, if the applicant's case is bad in law, the sooner that is determined, the better. If it is possible to show by evidence that although material in the form of documents or oral evidence that would put the documents in another light is not currently before the court, such material is likely to exist and can be expected to be available at trial, it would be wrong to give summary judgment because there would be a real, as opposed to a fanciful, prospect of success. However, it is not enough simply to argue that the case should be allowed to go to trial because something may turn up which would have a bearing on the question of construction: ICI Chemicals & Polymers Ltd v TTE Training Ltd [2007] EWCA Civ 725.

The Distribution agreement

24. The claimants' case is that since its formation in March 2004 and until August or September 2009 AST has operated as the United Kingdom distributor of Filtco's products pursuant to "an informal distribution agreement" between Filtco and AST (paragraph 2 of the Particulars of Claim). In paragraph 3 of the Particulars of Claim the claimants plead:

"The terms of the Distribution Agreement were agreed orally between Andre Chambre (at all times acting on behalf of the first claimant) and the second defendant (at all times acting on behalf of the first defendant) in or about March 2004."

25. The Particulars of Claim then set out various terms under a rubric that "the following terms were express alternatively implied terms of the Distribution Agreement:" The terms include points on territory, sourcing of product, permission to use the mark AIR SCIENCE and the point that UK goodwill would accrue to Filtco.
26. John Haugh's defence, as I have mentioned above, is that while there were discussions and an agreement between himself and Andre Chambre in about March 2004, the agreement was about the terms on which he would work for AST, it would include John Haugh owning 50% of AST (which he never did), the terms on sourcing were different and there was no agreement about goodwill.
27. Ms Edwards-Stuart submitted that it was obvious there had been a distribution agreement of some kind between Filtco and AST given their course of dealing over a 5 year period; and while it may not prove what the terms were the relationship does prove there was an agreement. I do not accept this submission. Just because the parties had a relationship over a number of years does not necessarily prove it was governed by an overarching agreement. As Mr Norris pointed out the individual supplies of product from Filtco to AST could have simply been governed by individual sales contracts.
28. The primary evidence that the distribution agreement was entered into comes from the witness statement of Paul Chambre (who was and is a director of Filtco), and the witness summary of Andre Chambre.
29. Mr Norris submitted that Paul Chambre – who was not present at the conversations between his father Andre Chambre – cannot given evidence that a contract was entered into. I do not accept that things are as simple as that. In a sense it is the reverse of the point above that the existence of a relationship does not prove a contract was in force. Paul Chambre – who was clearly closely involved with and dealt with AST over the years as director of Filtco - is in a position to give evidence relevant to the question of whether there was an contract governing that 5 year relationship even if he was not party to the formative discussions.
30. No doubt it would be fair to say that the claimants' task in proving that the contract existed would be more difficult if all they had was Paul Chambre's evidence to contradict John Haugh's direct evidence about the conversations he had with Andre Chambre, but now that Andre Chambre is going to give evidence at trial, that is not the position in which the claimants find themselves.
31. Andre Chambre's witness summary sets out what are described as "the key terms on which it was agreed AST would distribute Filtco products" (para 7, emphasis added). I have in mind that the court does not simply take such statements at face value and accept such assertions without analysis but in my judgment it cannot be right to give summary judgment denying the existence of an agreement in the face of this evidence. The witness will state that the terms were agreed. There is a clear conflict of testimony between Andre Chambre and John Haugh and the proper place to resolve that is at trial with cross-examination. This is not a case in which it could be said to be clear that there is no real substance in factual assertions made. The parties referred to me a few documents but none of them contradict the existence of an agreement.
32. I should note that the witness summary is not signed by Andre Chambre. Andre Chambre's witness statement on the application for summary judgment makes it clear he is willing to attend trial and give evidence in support of the claimants' case and so directions need to be given for a proper witness statement from Andre Chambre to be provided promptly.
33. A significant point made by Mr Norris is that the pleaded case cannot be right because it pleads that the agreement was formed with AST by John Haugh acting on behalf of AST in March 2004 in discussion with Andre Chambre on behalf of Filtco; but John Haugh was not an employee of AST until later. So he submits that the claimants cannot succeed because in March 2004 John Haugh was not able to act on behalf of AST. Although Mr Norris's submission is an attractive one, it does not take account of John Haugh's own evidence as to what happened in March. John Haugh's evidence is that there was indeed an agreement in March arising from discussions between himself and Andre Chambre. His case is that it was a different agreement from the one the claimants contend for, but he does maintain that there was an agreement. The terms of the 2004 agreement based on John Haugh's evidence included terms which concerned AST albeit that the meeting between John Haugh and Andre Chambre was on 6^th March 2004 but AST was not incorporated until 17^th March. So John Haugh contends that the 2004 agreement included a term that he would own 50% of AST, that he would apply his expertise to ensure that both AST and Filtco would be able to supply their customers with high quality fume cupboards, that AST and John Haugh on the one hand and Filtco on the other hand would cooperate as a team to their mutual benefit, that Filtco would sell product in the Americas and AST would sell in the rest of the world, with AST receiving 1.5% of the sales price of products sold directly by Filtco to a purchaser outside the Americas, and that subject to various terms including the ones listed above, AST "once incorporated and trading would act autonomously under the direction of" John Haugh (see paragraph 5 of the second defendant's Defence; note that for the sake clarity I have removed the references in the Defence to the claimants plural in the alternative to Filtco). In paragraphs 18 to 25 of his witness statement John Haugh gives evidence which corresponds to this part of his pleaded case.
34. In paragraph 30 of his witness statement for this application, Andre Chambre addresses the question of the status of John Haugh in March 2004 with respect to AST. He says that John Haugh commenced employment with AST in July 2004 but that "prior to July 2004 John Haugh (and his wife) were actively engaged in preparatory steps for AST to commence trading" and he makes the point that "John Haugh's own defence accepts that following the meeting in March 2004 with John Haugh and myself an agreement was reached prior to the formation of AST which was binding on the company's future conduct. The disagreement is over the terms reached." I can say at this stage that Andre Chambre's observations appear to be well founded on the materials before me. That should not be taken as a finding that I accept either side's version of events. John Haugh relies on documents which he says support his evidence as to what was and was not agreed. The claimants rely on documents to support their case too. What the materials before me do show is that it appears to be common ground that the discussions in March did involve deciding on how AST would behave in future. On that basis the point that John Haugh cannot have agreed to something binding on AST in March 2004 can be seen in a different light. I cannot resolve this dispute on an application for summary judgment.
35. Mr Norris' second submission is that even if one cannot say on a summary judgment application that there was no distribution agreement, one can look at the claimants' evidence and see that the evidence does not even purport to establish all the pleaded terms and in particular the term about ownership of goodwill. I do not accept that submission. Andre Chambre's witness summary paragraph 7 sets out in five sub-paragraphs what are described as "the key terms on which it was agreed AST would distribute Filtco's products". Those five points do not repeat verbatim the seven terms of the alleged distribution agreement pleaded in the Particulars of Claim but in my judgment they do support that case sufficiently to require the matter to be dealt with a trial and not on a summary basis.
36. Sub-paragraph 7(a) corresponds to pleaded term (1) in the Particulars of Claim (territory); sub-paragraphs 7(b) and (c) correspond to pleaded terms (2), (3) and (4) (product sourcing); and sub-paragraph 7(d) corresponds to pleaded terms (5) and (6) (permission to use the mark AIR SCIENCE for the duration of the distribution agreement). There is a further term (7(e)) referred to in the witness summary but it is about assistance from Filtco to AST and is a different point. Mr Norris is quite right that the witness summary does not set out expressly a contractual term which states that the goodwill in the AIR SCIENCE mark would accrue to Filtco and of course this is the crucial term from the point of view of the passing off action since, if the goodwill generated in the UK in respect of AIR SCIENCE was not owned by Filtco then that supports John Haugh's pleaded case. However the Particulars of Claim pleads that the terms relied on were "express or alternatively implied terms" of the distribution agreement. The evidence that Andre Chambre will give, that the agreement included permission to use the AIR SCIENCE mark for the duration of the distribution agreement, seems to me to provide perfectly realistic support for a case that by necessary implication this means that the goodwill accrued to the US company or companies. The claimants may be right or they may be wrong but it is not something which can be resolved on an application of this kind.
37. Overall on the distribution agreement and its terms, Mr Norris submits that the evidence is, as he put it, thin and vague. It is fair to say that the evidence from the claimants' side is terse but the test for summary judgment is an absence of reality. I do not find that in this case. There is a clear conflict of evidence between Andre Chambre and John Haugh about what was or was not agreed in 2004 but there also some common ground. These are issues to be explored at a trial, not ones to resolve on paper.

The second claimant

38. The other matter raised by the second defendant is the position of the second claimant Air Science USA. Mr Norris submits that it is not said to be the contracting party to the distribution agreement, its presence in the action because of the UK trade mark register rectification claim does not justify its continued presence now that that claim has been settled and it has no claim to the UK goodwill on AIR SCIENCE and therefore no claim to be a claimant in the passing off action. Mr Norris submits that Air Science USA is not entitled to a remedy against his client and therefore the action in so far as it is brought by Air Science USA should be dismissed.
39. The oddity about this point is that, assuming the submission is well founded that Air Science USA has no claim now, dismissing the case in that regard does not reduce the number of claims made against John Haugh, it simply reduces the number of claimants. Air Science USA has no claim for breach of contract at all and its claim vis a vis the rectification has been settled. So to that extent Mr Norris is right. However the passing off claim is a different matter. The Particulars of Claim pleads that "the first claimant is (alternatively the claimants are) the owner of a substantial goodwill and reputation in the mark AIR SCIENCE when used in relation to [the goods in question] in the United Kingdom" (paragraph 8). It is clear that the claimants' primary case is that the goodwill belongs to Filtco (the first claimant) but they maintain an alternative plea that the goodwill belongs to both claimant companies (Filtco and Air Science USA) together. One reason why this plea was put this way was because at an earlier stage in these proceedings the first defendant (AST) was maintaining that the goodwill did belong to Air Science USA rather than Filtco. No doubt one reason why this was alleged was because the American AIR SCIENCE trade mark was held by Air Science USA. As I understand it, at the time this point was being made on AST's behalf, John Haugh was the person directing the affairs of AST.
40. The passing off case is coming on for trial in February 2011. Air Science USA has a subsisting claim in relation to that cause of action as joint claimant on the claimants' alternative case that the goodwill belongs to both of them. The question is whether at this stage, I can or should dismiss Air Science USA's remaining claim. I decline to do so. The evidence from the claimants does of course support their primary case that the goodwill belongs to Filtco but it also addresses the relationship between Filtco and Air Science USA, explaining that Filtco is the manufacturer and Air Science USA is Filtco's distributor/reseller. I rather think that if a court was otherwise going to find in the claimant's favour on goodwill, and I should make clear at this stage I am making no such finding whatsoever, it would probably find that the goodwill was held by Filtco rather both together but that is not the issue. It seems to me that a finding that the goodwill was held by both would be perfectly realistic in the circumstances. If I remove Air Science USA from the case at this stage what happens if the court were to find that the goodwill was jointly held? The answer may be nothing but CPR Part 19 r 19.3(1) provides that all persons jointly entitled to a remedy must be parties unless the court orders otherwise. It seems to me to be pointless to arrange matters now so that this possible difficulty might arise when it can all be avoided. Leaving aside the fact that the prospects for the alternative case are realistic in themselves, in any event it would be far preferable for a company which may be entitled to the goodwill in issue to be a party to the decision and therefore for that decision to be binding on it. If they were not a party and had no wish to be a claimant then Air Science USA could be joined as a co-defendant under CPR Part 19 r 19.2 (2)(b) since there is an issue which involves them which the court is going to resolve but that approach is entirely unnecessary in this case. The company has a realistic claim to be joint owner of the goodwill and should remain.
41. I will conclude by observing that the remaining passing off claim relates to trading for about 6 weeks or so under a mark which the sole remaining defendant states in terms that he has no interest in using in future. There is a severe risk that the costs will dwarf the value of the outstanding issues and the parties should consider carefully whether a form of alternative dispute resolution might be a preferable way of bringing this dispute to an end.