Quantum Advisory Limited wins an appeal against Quantum Actuarial Limited in a dispute relating to whether it was entitled to an order for rectification of the trade marks register pursuant to section 10B of the Trade Marks Act 1994 or in equity.
In its decision in Quantum Advisory Limited v Quantum Actuarial Limited ([2024] EWCA Civ 247) handed down on 14 March 2024, the Court of Appeal (Newey, Nugee LJJ and Sir Christopher Floyd) unanimously allowed the appeal by Quantum Advisory Limited (Quad) and dismissed the appeal by Quantum Actuarial LLP (LLP) against the decision of the judgment of HHJ Keyser KC (sitting as a Judge of the High Court) ([2023] EWHC 47 (Ch)).
The underlying dispute arose out of the commercial arrangements between Quad and LLP and whether under those arrangements it was permissible for LLP to apply for registration of the mark QUANTUM ADVISORY and a number of associated marks.
A claim for rectification of the trade mark register was brought by Quad under section 10B of the Trade Marks Act 1994 (section 10B) and in equity on the basis that there as a fiduciary relationship between Quad and LLP. The relief that Quad sought was for the register to be rectified so as to identify Quad and not LLP as the proprietor of 4 trade marks.
At first instance the judge made an order for rectification pursuant to section 10B in respect of 3 of the 4 trade marks that had been made by LLP. An order for rectification in relation to 1 mark was refused pursuant to section 10B and on the basis of the claim in equity. In the judgment it was held that the application of equity was precluded as a matter of principle on the basis that section 10B implemented Article 13 of the Trade Marks Directive and therefore had the effect of harmonising the rights of principals vis-à-vis their agents or representatives. Both parties appealed.
In the judgment the Court of Appeal upheld the findings that there was a fiduciary relationship between the parties and in doing so provided an analysis of the law with respect to the circumstances in which fiduciary duties arise in commercial relationships.
With respect to the trade mark aspects of the appeal, the Court of Appeal upheld the findings that there should be an order for rectification with respect to 3 of the 4 marks pursuant to section 10B of the Trade Marks Act 1994 but went on to find that the application of equity was not precluded as a matter of principal. On that basis the Court of Appeal found that an order for rectification with respect to the fourth mark should also be made. In making those findings the Court of Appeal considered for the first time the scope and effect of section 10B and the applicability of national law both in the context of section 10B itself but also in the context of the availability of equitable relief.
Emma Himsworth KC (One Essex Court) and Guy Adams (New Square Chambers), instructed by Harrison Clark Rickerbys, acted for Quad. You can view the judgment below.
View Judgment