Estta797162 01/25/2017 in the United States

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA797162 Filing date: 01/25/2017 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91212834 Party Defendant Mobigame Correspondence PATRICK J CONCANNON Address NUTTER MCLENNEN & FISH 155 SEAPORT BLVD BOSTON, MA 02210-2698 UNITED STATES [email protected], [email protected] Submission Defendant's Notice of Reliance Filer's Name Patrick J. Concannon Filer's e-mail [email protected], [email protected] Signature /PJC/ Date 01/25/2017 Attachments Notice of Reliance on Official Records with Exhibits OR1-OR3.pdf(5364277 bytes ) Notice of Reliance Exhibit OR4.pdf(1279357 bytes ) Notice of Reliance Exhibits OR5-OR7.pdf(539180 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the matter of application Serial No. 79/067304

Published June 4, 2013

EDGE GAMES,INC., Opposer,

v. Opposition No. 91212834

MOBIGAME, Applicant.

APPLICANT'S NOTICE OF RELIANCE ON OFFICIAL RECORDS UNDER 37 C.F.R.§ 2.122(e)

Pursuant to Rule 2.122(e) of the Trademark Rules of Practice, 37 C.F.R. § 2.122(e), and TBMP § 704.07, Applicant Mobigame hereby makes of record and notifies Opposer of its reliance on the following official record(s):

1. True and correct copies of corporate registry database records from the California Secretary of State's corporate database specific to The Edge Interactive, Inc. and Edge Games, Inc. printed from the Internet by Patrick Concannon on January 17, 2017, which are attached hereto as Exhibit OR1. These records are: "Business Search — Entity Detail" for California entity number C2767367;"Statement of Information" filed December 28, 2016 concerning California entity number C2767367;"Business Search — Entity Detail" for California entity number C1677002; and "Statement of Information" filed February 19, 2010 concerning California entity number C1677002. Applicant will rely on these records to show that The Edge Interactive, Inc. and Edge Games, Inc. are separate business entities that each are ongoing and subsisting, and that Edge Games, Inc. is not:(a) merely the new name for The Edge Interactive, Inc.; nor (b)the result of a merger with The Edge Interactive, Inc. Applicant intends to rely upon all pages submitted at Exhibit OR1.

2. A true and correct copy of an October 1, 2010 "Order Denying Motion for Preliminary Injunction" authored by Hon. William Alsup, United States District Judge, in connection with Opposer's civil suit No. C 10-02614 WHA in the United States District Court of the District of Northern California printed from the Internet by Patrick Concannon on January 17, 2017, which is attached hereto as Exhibit OR2. Applicant will rely on this official record to impeach the credibility of Dr. Tim Langdell, who has testified in these proceedings for Opposer. Applicant intends to rely upon pages 8-23 of this document. 3. A true and correct copy of a June 13, 2011 Judgment authored by the Hon. Mrs. Justice Proudman in connection with civil case number HC09CO2265 in the United Kingdom High Court of Justice, Chancery Division, brought by Future Publishing Limited against Opposer and printed from the Internet by Patrick Concannon on January 17, 2017, which is attached hereto as Exhibit OR3. In that case Opposer was accused of breach of contract, breach of copyright and passing off claims against Future Publishing Limited. Applicant will rely on this official record and printed publication to impeach the credibility of Dr. Tim Langdell, who has testified in this proceeding for Opposer. Applicant intends to rely upon all pages submitted at Exhibit OR3.

4. A true and correct copy of a March 18, 2014 Judgment authored by Ms. Judi Pike, acting on behalf of the United Kingdom Intellectual Property Office Trade Marks Registrar, the Comptroller-General, in connection with opposition number 101125 brought by Future Publishing Limited concerning Opposer's 2540453, printed from the Internet by Patrick Concannon on January 20, 2017, which is attached hereto as Exhibit OR4. The Judgment includes appendices comprised of written decision by Hearings Officer Mr. Edward Smith dated February 23, 2012. Applicant will rely on this official record to impeach the credibility of Dr. Tim Langdell, who testified in this proceeding for Opposer. Applicant also will rely on this official record to discredit Opposer's claim that it holds a power of attorney granted by Future Publishing Limited and to demonstrate that any purported assignment of Future Publishing Limited's trademark rights to Opposer by Opposer acting under any such power of attorney is invalid under applicable law. Applicant intends to rely upon all pages submitted at Exhibit OR4.

5. A true and correct copy of a July 25, 2010 Judgment No. 0/283/12 authored by Mr. David Landau, acting on behalf of the United Kingdom Intellectual Property Office Trade Marks Registrar, the Comptroller-General, in connection with a dispute between Future Publishing Limited and Opposer concerning Opposer's purported assignment of United Kingdom Trade Mark Reg. Nos. 2552136 and 2552147, printed from the Internet by Patrick Concannon on January 25, 2017, which is attached hereto as Exhibit ORS. Applicant will rely on this official record to impeach the credibility of Dr. Tim Langdell, who testified in this proceeding for Opposer. Applicant also will rely on this official record to discredit Opposer's claim that it holds a power of attorney granted by Future Publishing Limited and to demonstrate that any purported assignment of Future Publishing Limited's trademark rights to Opposer by Opposer acting under any such power of attorney is invalid under applicable law. Applicant intends to rely upon all pages submitted at Exhibit ORS.

6. A true and correct copy of a March 18, 2014 appeal Decision authored by Mr. Geoffrey Hobbes Q.C. sitting as the Appointed Person to decide an appeal of Judgment No. 0/283/12 issued by Mr. David Landau (see above Paragraph 5 and Exhibit ORS), printed from the Internet by Patrick Concannon on January 25, 2017, and which is attached hereto as Exhibit OR6. Applicant will rely on this official record to impeach the credibility of Dr. Tim Langdell, who testified in this proceeding for Opposer. Applicant also will rely on this official record to discredit Opposer's claim that it holds a power of attorney granted by Future Publishing Limited and to demonstrate that any purported assignment of Future Publishing Limited's trademark rights to Opposer by Opposer acting under any such power of attorney is invalid under applicable law. Applicant intends to rely upon all pages submitted at Exhibit OR6. 7. A true and correct copy of a November 7, 2008 Memorandum Opinion authored by Judge James R. Spencer of the United States District Court for Eastern District of Virginia, in connection with civil suit No. 3:08cv135 brought by Velocity Micro, Inc. against The Edge Interactive Media, Inc., printed from the Internet by Patrick Concannon on January 20, 2017, which is attached hereto as Exhibit OR7. Applicant will rely on this official record to impeach the credibility of Dr. Tim Langdell, who testified in this proceeding for Opposer. Applicant intends to rely upon all pages submitted at Exhibit OR7.

Dated: January 25, 2017 MOBIGAME

tto e

P trick J. Con pconcannon@ .com Nutter, McClennen & Fish, LLP Seaport West 155 Seaport Boulevard Boston, MA 02210 Telephone: (617)439-2177

CERTIFICATE OF SERVICE

I hereby certify that the foregoing APPLICANTS NOTICE OF RELIANCE ON OFFICIAL RECORDS UNDER 37 C.F.R. § 2.122(e) was served by First Class Mail upon Opposer to the below-indicated address on this 25th day of January 2017.

Dr. Timothy Langdell Edge Games, Inc. 530 South Lake Avenue #171 Pasadena, CA 91101

Patrick J. Cone

3492211.1 Exhibit OR1 Business Search - Business Entities - Business Programs l California Secretary of State Page 1 of2

Alex Padilla California Secretary of State Qs Business Search - Entity Detail

The California Business Search is updated daily and reflects work processed through Monday, January 16, 2017. Please refer to document Processing Times for the received dates of filings currently being processed. The data provided is not a complete or certified record of an entity. Not all images are available online.

C2767367 EDGE GAMES, INC.

Registration Date: 07/12/2005 Jurisdiction: CALIFORNIA Entity Type: DOMESTIC STOCK Status: ACTIVE Agent for Service of Process: TIM LANGDELL 70 SOUTH LAKE AVENUE PASADENA CA 91101 Entity Address: 70 SOUTH LAKE AVENUE PASADENA CA 91101 Entity Mailing Address: STE 171 PASADENA CA 91101

A Statement of Information is due EVERY year beginning five months before and through the end of July.

Document Type it File Date 11 PDF

SI-NO CHANGE 12/28/2016

SI-COMPLETE 05/01/2010

* Indicates the information is not contained in the California Secretary of State's database.

• If the status of the corporation is "Surrender," the agent for service of process is automatically revoked. Please refer to California Corporations Code section 2114 for information relating to service upon corporations that have surrendered. • For information on checking or reserving a name, refer to Name Availability. • If the image of a Statement of Information is not available online, for information on ordering a copy of that statement refer to Information Requests. • For information on ordering certificates, status reports, certified copies of documents and copies of documents not currently available in the Business Search such as a filing that is not a Statement of Information or filings for other types of business entities, or to request a more extensive search for records, refer to Information Requests. • For help with searching an entity name, refer to Search Tips. • For descriptions of the various fields and status types, refer to Frequently Asked Questions.

https://businesssearch.sos.ca.gov/CBS/Detail 1/17/2017 Business Search - Business Entities - Business Programs l California Secretary of State Page 2 of2

Modify Search New Search Back to Search Results

https://businesssearch.sos.ca.gov/CBS/Detail 1/17/2017 . State of California -.6.4._ -,,,,..t Secretary of State . Statement of Information l IFPn FH74460 (Domestic Stock and Agricultural Cooperative Corporations) FEES (Filing and Disclosure): $25.00. If this is an amendment, see instructions. FILED IMPORTANT — READ INSTRUCTIONS BEFORE COMPLETING THIS FORM In the office of the Secretary of State 1. CORPORATE NAME of the State of California EDGE GAMES, INC. DEC-28 2016

2. CALIFORNIA CORPORATE NUMBER C2767367 This Space for Filing Use Only No Change Statement (Not applicable if agent address of record is a P.O. Box address. See instructions ) 3. If there have been any changes to the information contained in the last Statement of Information filed with the California Secretary of State, or no statement of information has been previously filed, this form must be completed in its entirety. i If there has been no change in any of the information contained in the last Statement of Information filed with the California Secretary of State, check the box and proceed to Item 17. Complete Addresses for the Following (Do not abbreviate the name of the city. Items 4 and 5 cannot be P.O. Boxes.) 4. STREET ADDRESS OF PRINCIPAL EXECUTIVE OFFICE CITY STATE ZIP CODE

5. STREET ADDRESS OF PRINCIPAL BUSINESS OFFICE IN CALIFORNIA, IF ANY CITY STATE ZIP CODE

6. MAILING ADDRESS OF CORPORATION, IF DIFFERENT THAN ITEM 4 CITY STATE ZIP CODE

Names and Complete Addresses of the Following Officers (The corporation must list these three officers. A comparable title for the specific officer may be added; however, the preprinted titles on this form must not be altered.) 7. CHIEF EXECUTIVE OFFICER/ ADDRESS CITY STATE ZIP CODE

8. SECRETARY ADDRESS CITY STATE ZIP CODE

9. CHIEF FINANCIAL OFFICER/ ADDRESS 'CITY STATE ZIP CODE

Names and Complete Addresses of All Directors, Including Directors Who are Also Officers (The corporation must have at least one director. Attach additional pages, if necessary.) 10. NAME ADDRESS CITY STATE ZIP CODE

11. NAME ADDRESS CITY STATE ZIP CODE

12. NAME ADDRESS CITY STATE ZIP CODE

13. NUMBER OF VACANCIES ON THE BOARD OF DIRECTORS, IF ANY: Agent for Service of Process If the agent is an individual, the agent must reside in California and Item 15 must be completed with a California street address, a P.O. Box address is not acceptable. If the agent is another corporation, the agent must have on file with the California Secretary of State a certificate pursuant to California Corporations Code section 1505 and Item 15 must be left blank. 14. NAME OF AGENT FOR SERVICE OF PROCESS

15. STREET ADDRESS OF AGENT FOR SERVICE OF PROCESS IN CALIFORNIA, IF AN INDIVIDUAL CITY STATE ZIP CODE

Type of Business 16. DESCRIBE THE TYPE OF BUSINESS OF THE CORPORATION

17. BY SUBMITTING THIS STATEMENT OF INFORMATION TO THE CALIFORNIA SECRETARY OF STATE, THE CORPORATION CERTIFIES THE INFORMATION CONTAINED HEREIN, INCLUDING ANY ATTACHMENTS, IS TRUE AND CORRECT. 12/28/2016 TIM LANGDEL CEO DATE TYPE/PRINT NAME OF PERSON COMPLETING FORM TITLE SIGNATURE SI-200(REV 01/2013) APPROVED BY SECRETARY OF STATE State of California E-A54854 Secretary of State FILED STATEMENT OF INFORMATION In the office of the Secretary of (Domestic Stock and Agricultural Cooperative Corporations) State of the State of California

FEES (Filing and Disclosure): $25.00. If amendment, see instructions. May - 1 2010 IMPORTANT - READ INSTRUCTIONS BEFORE COMPLETING THIS FORM This Space For Filing Use Only 1. CORPORATE NAME (Please do not alter if name is preprinted.) C2767367 I EDGE GAMES, INC. 530 SOUTH LAKE AVENUE STE 171 PASADENA CA 91101

DUE DATE: COMPLETE ADDRESSES FOR THE FOLLOWING (Do not abbreviate the name of the city. Items 2 and 3 cannot be P.O. Boxes.)

2. STREET ADDRESS OF PRINCIPAL EXECUTIVE OFFICE CITY STATE ZIP CODE 70 SOUTH LAKE AVENUE PASADENA CA 91101

3. STREET ADDRESS OF PRINCIPAL BUSINESS OFFICE IN CALIFORNIA, IF ANY CITY STATE ZIP CODE 70 SOUTH LAKE AVENUE PASADENA CA 91101 4. MAILING ADDRESS OF THE CORPORATION, IF DIFFERENT THAN ITEM 2 CITY STATE ZIP CODE 530 SOUTH LAKE AVENUE STE 171 PASADENA CA 91101 NAMES AND COMPLETE ADDRESSES OF THE FOLLOWING OFFICERS (The corporation must have these three officers. A comparable title for the specific officer may be added; however, the preprinted titles on this form must not be altered.) 5. CHIEF EXECUTIVE OFFICER/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 70 SOUTH LAKE AVENUE PASADENA, CA 91101

6. SECRETARY/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 70 SOUTH LAKE AVENUE PASADENA, CA 91101

7. CHIEF FINANCIAL OFFICER/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 70 SOUTH LAKE AVENUE PASADENA CA 91101 NAMES AND COMPLETE ADDRESSES OF ALL DIRECTORS, INCLUDING DIRECTORS WHO ARE ALSO OFFICERS (The corporation must have at least one director. Attach additional pages, if necessary.) 8. NAME ADDRESS CITY STATE ZIP CODE TIM LANGDELL 70 SOUTH LAKE AVENUE PASADENA, CA 91101 9. NAME ADDRESS CITY STATE ZIP CODE

10. NAME ADDRESS CITY STATE ZIP CODE

11. NUMBER OF VACANCIES ON THE BOARD OF DIRECTIONS, IF ANY: AGENT FOR SERVICE OF PROCESS (If the agent is an individual, the agent must reside in California and Item 13 must be completed with a California street address(a P.O.Box address is not acceptable). If the agent is another corporation, the agent must have on file with the California Secretary of State a certificate pursuant to Corporations Code section 1505 and Item 13 must be left blank.) 12. NAME Or AGENT FOR SERVICE OF PROCESS TIM LANGDELL

13. STREET ADDRESS OF AGENT FOR SERVICE OF PROCESS IN CALIFORNIA, IF AN INDIVIDUAL CITY STATE ZIP CODE 70 SOUTH LAKE AVENUE PASADENA, CA 91101 TYPE OF BUSINESS 14. DESCRIBE THE TYPE OF BUSINESS OF THE CORPORATION COMPUTER SOFTWARE ~15. BY SUBMITTING THIS STATEMENT OF INFORMATION TO THE CALIFORNIA SECRETARY OF STATE, THE CORPORATION CERTIFIES THE INFORMATION CONTAINED HEREIN, INCLUDING ANY ATTACHMENTS, IS TRUE AND CORRECT. 05/01/2010 TIM LANGDELL CEO DATE TYPE OR PRINT NAME OF PERSON COMPLETING THE FORM TITLE SIGNATURE

SI-200 C(REV 01/2008) APPROVED BY SECRETARY OF STATE Business Search - Business Entities - Business Programs l California Secretary of State Page 1 of2

Alex Padilla California Secretary of State

0 Business Search - Entity Detail

The California Business Search is updated daily and reflects work processed through Monday, January 16, 2017. Please refer to document Processinq Times for the received dates of filings currently being processed. The data provided is not a complete or certified record of an entity. Not all images are available online.

C1677002 THE EDGE INTERACTIVE MEDIA, INC.

Registration Date: 11/26/1990 Jurisdiction: CALIFORNIA Entity Type: DOMESTIC STOCK Status: ACTIVE Agent for Service of Process: TIM LANGDELL 530 S LAKE AVE, STE 171 PASADENA CA 91101 Entity Address: 530 S LAKE AVE, STE 171 PASADENA CA 91101 Entity Mailing Address: 530 S LAKE AVE, STE 171 PASADENA CA 91101

A Statement of Information is due EVERY year beginning five months before and through the end of November.

Document Type It File Date J, PDF

SI-NO CHANGE 12/28/2016

SI-COMPLETE 02/19/2010

* Indicates the information is not contained in the California Secretary of State's database.

https://businesssearch.sos.ca.gov/CBS/Detail 1/17/2017 Business Search - Business Entities - Business Programs l California Secretary of State Page 2 of2

Modify Search New Search Back to Search Results

https://businesssearch.sos.ca.gov/CBS/Detail 1/17/2017 State of California E-962172 Secretary of State FILED STATEMENT OF INFORMATION In the office of the Secretary of (Domestic Stock and Agricultural Cooperative Corporations) State of the State of California

FEES (Filing and Disclosure): $26.00. If amendment, see instructions. Feb -19 2010 IMPORTANT - READ INSTRUCTIONS BEFORE COMPLETING THIS FORM This Space For Filing Use Only 1. CORPORATE NAME (Please do not alter if name is preprinted.) C1677002 S THE EDGE INTERACTIVE MEDIA, INC.

DUE DATE: ' COMPLETE ADDRESSES FOR THE FOLLOWING (Do not abbreviate the name of the city. Items 2 and 3 cannot be P.O. Boxes.)

2. STREET ADDRESS OF PRINCIPAL EXECUTIVE OFFICE CITY STATE ZIP CODE 530 S LAKE AVE STE 171 PASADENA CA 91101

3. STREET ADDRESS OF PRINCIPAL BUSINESS OFFICE IN CALIFORNIA, IF ANY CITY STATE ZIP CODE

4. MAILING ADDRESS OF THE CORPORATION, IF DIFFERENT THAN ITEM 2 CITY STATE ZIP CODE

NAMES AND COMPLETE ADDRESSES OF THE FOLLOWING OFFICERS (The corporation must have these three officers. A comparable title for the specific officer may be added; however, the preprinted titles on this form must not be altered.) 5. CHIEF EXECUTIVE OFFICER/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 530 S LAKE AVE STE 171 PASADENA, CA 91191

6. SECRETARY/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 530 S LAKE AVE STE 171 PASADENA, CA 91101

7. CHIEF FINANCIAL OFFICER/ ADDRESS CITY STATE ZIP CODE TIM LANGDELL 530 S LAKE AVE STE 171 PASADENA CA 91101 NAMES AND COMPLETE ADDRESSES OF ALL DIRECTORS, INCLUDING DIRECTORS WHO ARE ALSO OFFICERS (The corporation must have at least one director. Attach additional pages, if necessary.) 8. NAME ADDRESS CITY STATE ZIP CODE TIM LANGDELL 530 S LAKE AVE STE 171 PASADENA, CA 91101 VANUATU 9. NAME ADDRESS CITY STATE 7EP CODE

10. NAME ADDRESS CITY STATE ZIP CODE

11. NUMBER OF VACANCIES ON THE BOARD OF DIRECTIONS, IF ANY: AGENT FOR SERVICE OF PROCESS (If the agent is an individual, the agent must reside in California and Item 13 must be completed with a California street address (a P.O.Box address is not acceptable). If the agent is another corporation, the agent must have on file with the California Secretary of State a certificate pursuant to Corporations Code section 1505 and Item 13 must be left blank.) 12. NAME OF AGENT FOR SERVICE OF PROCESS TIM LANGDELL

13. STREET ADDRESS OF AGENT FOR SERVICE OF PROCESS IN CALIFORNIA, IF AN INDIVIDUAL CITY STATE ZIP CODE 530 S LAKE AVE STE 171 PASADENA, CA 91101 TYPE OF BUSINESS 14. DESCRIBE THE TYPE OF BUSINESS OF THE CORPORATION COMPUTER SOFTWARE • 15. BY SUBMITTING THIS STATEMENT OF INFORMATION TO THE CALIFORNIA SECRETARY OF STATE, THE CORPORATION CERTIFIES THE INFORMATION CONTAINED HEREIN, INCLUDING ANY ATTACHMENTS, IS TRUE AND CORRECT. 02/19/2010 TIM LANGDELL CEO DATE TYPE OR PRINT NAME OF PERSON COMPLETING THE FORM TITLE SIGNATURE

SI-200 C (REV 01/2008) APPROVED BY SECRETARY OF STATE ,,.-, „ N State of California l s

Go"--, ..,01'4--:z kaj Val e Secretary of State 0 elk r

C,IL, c, tl• Statement of Information FH72644 (Domestic Stock and Agricultural Cooperative Corporations) FEES (Filing and Disclosure): $25.00. If this is an amendment, see instructions. FILED IMPORTANT — READ INSTRUCTIONS BEFORE COMPLETING THIS FORM In the office of the Secretary of State 1. CORPORATE NAME of the State of California THE EDGE INTERACTIVE MEDIA, INC. DEC-28 2016

2. CALIFORNIA CORPORATE NUMBER C1677002 This Space for Filing Use Only No Change Statement (Not applicable if agent address of record is a P.O. Box address. See instructions.) 3. If there have been any changes to the information contained in the last Statement of Information filed with the California Secretary of State, or no statement of information has been previously filed, this form must be completed in its entirety. If there has been no change in any of the information contained in the last Statement of Information filed with the California Secretary i of State, check the box and proceed to Item 17.

Complete Addresses for the Following (Do not abbreviate the name of the city. Items 4 and 5 cannot be P.O. Boxes.) 4. STREET ADDRESS OF PRINCIPAL EXECUTIVE OFFICE CITY STATE ZIP CODE

5. STREET ADDRESS OF PRINCIPAL BUSINESS OFFICE IN CALIFORNIA, IF ANY CITY STATE ZIP CODE

6. MAILING ADDRESS OF CORPORATION, IF DIFFERENT THAN ITEM 4 CITY STATE ZIP CODE

Names and Complete Addresses of the Following Officers (The corporation must list these three officers. A comparable title for the specific officer_may be added; however, the preprinted titles on this form must not be altered.) 7. CHIEF EXECUTIVE OFFICER/ ADDRESS CITY STATE ZIP CODE

8. SECRETARY ADDRESS CITY STATE ZIP CODE

9. CHIEF FINANCIAL OFFICER/ ADDRESS CITY STATE ZIP CODE

11. NAME ADDRESS CITY STATE ZIP CODE

12. NAME ADDRESS CITY STATE ZIP CODE

15. STREET ADDRESS OF AGENT FOR SERVICE OF PROCESS IN CALIFORNIA, IF AN INDIVIDUAL CITY STATE ZIP CODE

Type of Business 16. DESCRIBE THE TYPE OF BUSINESS OF THE CORPORATION

17. BY SUBMITTING THIS STATEMENT OF INFORMATION TO THE CALIFORNIA SECRETARY OF STATE, THE CORPORATION CERTIFIES THE INFORMATION CONTAINED HEREIN, INCLUDING ANY ATTACHMENTS, IS TRUE AND CORRECT. 12/28/2016 TIM LANGDEL CEO DATE TYPE/PRINT NAME OF PERSON COMPLETING FORM TITLE SIGNATURE SI-200(REV 01/2013) APPROVED BY SECRETARY OF STATE .— Exhibit OR2 Edge Games, Inc. v. Electronic Arts Inc., Doc. 67

2 3

4 5

6 IN THE UNITED STATES DISTRICT COURT 7

8 FOR THE NORTHERN DISTRICT OF CALIFORNIA 9 10

11 EDGE GAMES,INC., a California No. C 10-02614 WHA corporation, 12 Court Plaintiff,

California 13 ORDER DENYING MOTION FOR

of v. PRELIMINARY INJUNCTION 14 District

District ELECTRONIC ARTS,INC., a Delaware 15 corporation, Northern States 16 Defendant. the

For 17

United 18 INTRODUCTION

19 In this trademark infringement action involving video-gaming giant Electronic Arts, Inc.

20 and its "revolutionary" first-person, action-adventure video game "Mirror's Edge," plaintiff Edge 21 Games, Inc. — a so-called "small video-gaming company" based in Pasadena — moves to

22 preliminarily enjoin defendant Electronic Arts from using the "MIRROR'S EDGE" mark while

23 this dispute unfolds in court. Because plaintiff has failed to establish that it is likely to succeed on

24 the merits, that it is likely to suffer irreparable harm in the absence of preliminary relief, that the 25 balance of equities tips in its favor, or that an injunction is in the public interest, the motion for a

26 preliminary injunction is DENIED.

Dockets.Justia.c Forthe Northern District ofCalifornia (id. "Battlepods," several Dr. supposed one and Xbox releases shareholder, marketing alleged businesses" video as moved and/or which be declaration, purportedly video 17). Amazon.com, sold Langdell's at or mobile Examples -gaming game 360, ¶ are licenses more to Edge Plaintiff 1. According dozen through trademark 2). are Los predecessor games and the -phone Softek on currently sold Edge of Dr. Games, products, and video Angeles industry. PLAINTIFF Nintendo sales declaration, the the games of the Edge Tim over that Best "Racers" Games recent to holder video asserted planet is same back games Dr. Inc. Langdell, supposedly -in can being Games 11,000 Buy, for in as -interest Wii, games, Langdell, video herein retailers in — 1990, is is well be major EDGE from he (id "one marks and a developed 1984 at played and units and legitimate began -game as least, would he Target at — Dr. gaming the GAMES, to of a over through its the that 1114, include reincorporated of predecessor these in Edge the on Langdell mid predecessors that's using products Apple Raffles, 2005 45,000 have the (id for certain oldest Exhs. "small -1990s consoles "upcoming" STATEMENT Games). INC. "Bobby a accused gaming the at (id what a London iPhone jury ¶ also units K—T). Mythora, surviving "EDGE" purportedly mobile -in 20). video through at 2 its -interest such ¶ supposedly Softek believe claims consoles Bearing," products He of founder, -based and 3). In -gaming Between releases Bobby phones then as sum, iPad and 2010 mark video as that the (Langdell to video marketed incorporated and Edge were Racers, based chief (id "Raffles," Edge Sony Bearing, (id bearing company" Edge in developed, from game 2003 platforms -game connection (and at Interactive at executive Games. upon PlayStation ¶ Edge Games In Decl. and which development by 15). the Pengu, are company 15-16). "Mythora," Edge Dr. 2009, that Edge Games distributed, asserted including TIT still are develops, After with Langdell's officer, Media is 1-3). Games and "packaged Games being) Edge 3, active In called will video Dr. and and BattlePods, marks addition "Pengu," (another According Microsoft's and Games and Langdell and publishes, supposedly sold, that in — publishing -game Softek the (id sole the bearing sold PC various such to at PC to ¶ UnitedStates District Court

Forthe Northern District ofCalifornia "Mirror's Edge throughout ten the that 2008 creating and game instant other development, by streets, consoles grown as marketing development units by for EA a game video explore develops, press (Hershberger for items magazine PCs, (id. to Digital trademark "Mirror's In 3. 2. Electronic The whose a at -game including become describes Edge July "revolutionary release director, at least the Macs, within game this ¶ studios which publishes, Illusions population DEFENDANT 2007, THE 4). gaming development published 31 world video Edge an itself dispute issued and Arts the The Microsoft's Decl. her, "MIRROR'S Lincoln of spanned international, EA spanning various city its through game — industry announcement is CE a is by announced and ¶ active "runner) (id. new set has or by one while 5). AB EA Hershberger, ELECTRONIC (id. EA in distributes Future studios three at been take mobile the of Tens (or the Xbox a on video and ¶ EDGE" for evading at city EA's 3). globe. publicly "EA eyes on July marginalized years Exh. tasked became in of short Publishing -gaming — -game 360, of the was "Edge millions modestly 11, of DICE" the FRANCHISE video gleaming A; and "Mirror's government In first — ARTS, the a with a traded 2007, "Mirror's Binns franchises 2009 character one cover is involved -person Magazine" devices. Sony games a for covertly of — 3 of by INC. successful leading officially alone, corporation Decl. skyscrapers dollars that story short) the Edge a PlayStation and totalitarian surveillance. action Edge" named a (Hershberger most its Since ¶ team in EA delivering "interactive — related in 3, were EA was the announcing video Stockholm, Exh. a anticipated adventure had franchise "Faith," its of leading DICE with with magazine, widely invested 3, formation over sales regime. software -game F). and information, more reflective The development Decl. 60 entertainment" According who print exceeding known the stands game" the video franchises. Sweden network by individuals than and Players for Nintendo ¶ in is EA development and 2). a -game at 1982, surfaces it modern and ten entitled messenger in online was the messages, — to of one interact video the discussed studio EA's EA heart rooftops one (id. accompanied Developed releases Wii, company million game's gaming "Mirror's and video -game has of at of was of senior as (or, with ¶ empty EA's and the the well - 8). and of as UnitedStates District Court

Forthe Northern District ofCalifornia 27 28 26 25 22 24 23 21 20 17 16 19 18 14 15 10 12 13 11 9 6 7 4 2 8 5 3 1 (id. "Mirror's Edge 2009 2-6). units franchise. the and was version online sellers sold the invested Microsoft's series" adaptation industry Entertainment Comic government aerial Sony "substantially video at sold through have and 2D." ¶ This skyways -Con, (e.g., retailers Due In was Prior of 17). events, over as -game PlayStation developed Edge November the already In of side It "Mirror's published to Xbox Best is the to retail While "Mirror's February is $9 game its Expo dubbed (e.g., -scrolling that its currently industry including largest have million Buy), modest 360. scaled been official channels Faith EA remains (or from 2008, Amazon.com) 3, Edge in been the 2009, comic Edge" the downloaded "E3") is video A (id. 2008 to down" success, version and available scratch PC no "Mirror's the release, "Mirror's market sold Microsoft's Pure including available at longer EA -game -book other version Game and in was ¶ worldwide, side Time 9). July released of for additional "Mirror's 2009 "Mirror's for "runners" announced. (id. the resellers convention manufacturing -scrolling Edge" for Developers Also the Edge followed 2008. for mass Trials purchase Xbox game at the by Apple download "additional ¶ in (id. a Apple merchandisers including 14). was Edge E3 products (e.g., July division Edge Map — utilize 360, version iPad, in at The 4 in through is Conference released published Since 2008, ¶ January Pack" the iPad widely GameStop), or or 6). was in on six to iPhone, the of downloadable were distributing over world, North of (id -issue EA's make its "Mirror's demonstrated DC Apple's (id. PC the for regarded 2009 initial (e.g., in 750,000 developed at Comics in for game at America online the these and where "Mirror's 2010 ¶¶ ¶ February club (id. third Walmart, release, 4-6; Sony App 15). iPod Edge copies was deliveries as — store a at units stores context" (id. -party limited the (id. Hershberger Store, and for ¶ Additionally, was PlayStation Touch announced Edge 13). at 2008 was over (id. of in most the at Target), (e.g., publicized ¶ entitled "Mirror's retailers, North ¶ where -run 10). "Mirror's (Correa These and for showcased at two 11). and comic important ¶ Costco), the comic evade 18). In million America the 3 "Mirror's in Decl. electronics over games a and game, total, the "mini- December at separate Decl. Edge Electronic -book Edge" numerous the 37,000 PC ¶ at expo and units EA 15). were which alone for in of UnitedStates District Court

Forthe Northern District ofCalifornia i "Edge "Mirror's see and clearly September development also Finally, packaging 11-13, in Trademark g placed the seen The Exhs. 4. As As in a EDGE' MIRROR'S reproduction Edge Mac the shown, should and 2009 "MIRROR'S on on and D—E; "Mirror's the THE advertising. version the Office and appeared is be the advertisement bottom Shafer ASSERTED slated obvious — logos approved of above, over Edge" EDGE" the for in Decl. right In for a advertising original by release the the letter franchise. AND both of ¶ the this (to mark logos 2, reproductions the ACCUSED registration the of EA Exhs. point, later "Mirror's Xbox protest is left are and and owned The this A—H): this clearly of 360 EA product "There's logo MARKS filed year trademark Edge of 5 above, DICE cover by the (Hershberger visible for by EA packaging "MIRROR'S video "Mirror's Edge art. were the No DICE. battle on logos The Looking prominently Games game the The logos are centers Edge" Decl. normal for is reproduced EDGE" — application Bade). EA currently for ¶ the on and and sized 13). displayed EA EA's United examples mark EA and While THFRES version. under below was use DICE EA on States on NO difficult filed of June DICE LOOKING (id. of the the are - Patent how in at game's 22, word most BACK were 1111 to _ UnitedStates District Court

Forthe Northern District ofCalifornia "EDGE 1121, the Exh. common-law 2010, companies. connection issued and game least six used also video Again, According mark federally USPTO services, claims one in T). -game Exh. was accessories, for by Dr. Plaintiff D. B. Edge Ownership Turning Another C. A. connection OF of Each computer the originally S). to Langdell with common-law the EXTINCTION," in magazines, These registered Games with USPTO Dr. mark "THE "EDGE "EDGE" "GAMER'S 2009 mark two next registered also computer Langdell, with continuous of "EDGE" marks with and registrations for registered purportedly asserts will supposedly to the EDGE" in trademarks the continuous OF use video with printed 2008 "EDGE be trademark are: -game mark asserted the in EXTINCTION" that described EDGE" for (5) continuous game use for (1) connection "EDGE" by matter the use purportedly owns "CUTTING software, owns — OF use "EDGE," supposedly a that use non-party marks plaintiff software, rights is in EXTINCTION" in briefly incontestable. a two connection supposedly and it connection valid use mark supposedly with over in with valid publications (2) owned owns allegedly this EDGE," below. extending registration comic and was video the "THE continuous 6 USPTO action, issued with a "EDGE" extending in with by valid -game books, "uses Edge continuous EDGE," mark extending and Edge video relating back Edge video registrations by for registration (6) Games use software, and and is the logo Games -game back the to "EDGEGAMERS." also -game Games (3) purportedly selectively USPTO online to 1984 back mark use (Langdell "GAMER'S to also video claimed software is since video software 1986 (id. over is to for "GAMER'S "THE video asserts the in 1995 games the at (id. -game this licenses" 1985, 2003 by extending purported Decl. ¶ games and EDGE," mark 6, (id. Edge and ownership at mark. EDGE," and Exhs. for and ¶ related controllers, at at "EDGE" various 8, EDGE," Edge (Schatz 1 comic use Games. to ¶ — Exh. back owner issued 7, A—C). other 4-12, in for (4) goods Exh. Games over E). video books. to at Decl. as This of by and D). the - UnitedStates District Court

Forthe Northern District ofCalifomia "EDGEGAMERS," comic extending gaming Licensed 2000. published purportedly print it game website Langdell, become not asserts related publications software books. The Finally, E. 5. Edge F. The According G. club, published incontestable has products the by the to mark last licensed been Games NIS "EDGE with video reach The "EDGEGAMERS" "CUTTING PLAINTIFF'S The and Edge registered was America, and to used by continuous supposedly mark "EDGE" related games. of issued also by Dr. Games later Future (id. OF websites, its sold The continually Edge has Langdell's asserts asserted EXTINCTION" at mark assigned websites by "Edge" and by This EDGE" LICENSING ¶ supposedly Publishing, claims Logo Games use the 10, include Velocity Edge comic purportedly ownership mark Exh. USPTO extending marks as to line since ownership declaration, include Magazine, a Edge "Cross books, was H, trademark of PRACTICES Micro, been Inc. well 2001 I). in mark high-performance issued over Games owned back (ibid.; (id 2008 in Edge," beyond video (id over Inc. continuous is the plaintiffs 7 a at to by leading for and incontestable at -game ¶ by by (id id. a supposedly 2006 the a 22): ¶ common-law video use the Edge service at video 12): at PTO Exhs. (id. in original hardware, Exh. video licensing -game use Games connection gaming game at in mark U, extending W). -gaming (id. valid ¶ 1999 11, software V). registrant. for mark, — in at practices and computers registered Exh. for 119, "CUTTING the connection Additional with news computers reproduced use back Sony Exh. to an in According gaming have magazine to PlayStation mark online F, connection 1995 products with G) been EDGE" (id. -related below, computer its and at and prolific, to ¶ video Dr. has — with 21). 3 that is - - Forthe Northern District ofCalifornia 27 22 26 20 28 24 23 25 21 10 12 14 13 15 11 17 19 18 16 4 2 3 1 "Combined the no supporting registered related commerce Dr. continuing soaked entire certified marks -holds front Langdell's declaration can 1

to 6. According A. According in Defendants' -barred to cover video fraud. the be for evidence to the Declaration trusted. "EDGE" use at Fraud ALLEGATIONS sworn USPTO of games attack least First, the our — to to request — EA, EA, are mark representations EDGE five and Indeed, (RJN (which "The on the Fuzzyeyes The The comic The EdgeGamers The The Cybernet in at that mark which of set for the Exh. almost January the "Edge" years Abandonment Use in "EdgeGamers" "Cutting (1) online website video forth judicial Edge," Exh. -book two for Games commerce validity EA's OF raise is T). and his following use nothing Systems owned -game FRAUD in registrations K). 1999, Stupio computer comic companies notice Incontestability series serious and opposition detail sold Organization, in magazine, Edge," made 1 of

connection Five controller video by Edge of as each -book by set AND Pty. Corp. published below. Regarding the the reflected video to Marvel) questions "Over Datel forth game years records of Ltd. both Interactive ABANDONMENT game had January obtained brief series July (id. 8 plaintiff -gaming above Design "Edge for later, (id. made LLC with the the (id. under "Edge at 2004 by and invests in regarding published the "EDGE" Exh. Edge," USPTO at 1999 a Marvel by (id. various in documents at regarding continuous specimen Exh. of Media s Nintendo & edition, website, Sections Exh. 2004, plaintiff asserted of Z). Extinction" a at registration Development substantial Twilight" and AA). Exh. and Comics, the BB). paper by (a Edge cited with "Double Edge operated described predecessor Malibu 8 the veracity for Wii marks Y). use & goods, herein Interactive the the Court. 5," called of as by by date, Games number "EDGE" and Ltd. the registration well Comics wherein Edge" is by of including as GRANTED. and "EDGE" the These Dr. (id. to as a and of "Color (2) Media Edge credibility Langdell's Dr. pages its mark attacks were serial asserted magazines Langdell Games) mark filed scan were to and a of in a of UnitedStates District Court

Forthe Northern District ofCalifornia the clear (RJN "EDGE" the Langdell comic ever and USPTO according Langdell The Decl. publisher and number validity "EDGE" warning the unrelated USPTO published Exh. ¶ -book 2

Second, 13, actual This written for of submitted mark was of to that S). the Exh. the order cover Edge the apparently registration not company document. Edge "willful on "EDGE" As was in clearly C). magazine's notes a As Magazine, June January evidence submitted genuine in to Magazine Submitted It false that the the was on 20, more relied (RJN mark spring statements all USPTO it 2003, faked. 2006, copy of of publisher, as (id. however, than upon to cover the his in Exh. a the of Edge connection of in at specimen, USPTO company's a a The . 1995 Exh. Dr. apparent . "[s]canned any USPTO M). decade for . are Interactive the Marvel specimen Langdell's July magazine (id. filings L). punishable magazine 2 earlier however,

2004 with at reliance "use" According and Entertainment, ¶¶ cover 9 submitted various Media declarations (right) 9-11). cover by (Bard declaration of cover fine on of had the that our Dr. filed or to are Decl. "EDGE" paper Nevertheless, been submitted Wm.) imprisonment" a by Plus: Naga comic signed Langdell's had Actual 10.0 shown declaration a LLC, M,1.91.1 and Dr. - 1 tha published ¶ N.. separate goods, ever 11). best PSn by Langdell false book Cover mark the Rua.* below: Dr. ,.tea= from to been Even including A.., last sworn the the and Langdell specimen rp EDGE application E3 submitted or. in by published "Edge" could USPTO USPTO commerce, to ram more an representation the entirely issue contained jeopardize comic remarkable, and USPTO by comic by registered with (Binns 2." maintained the Dr. Dr. books different a the The book (left) that the UnitedStates District Court

Forthe Northern District ofCalifornia 22 20 23 21 26 24 25 27 28 12 14 10 13 11 17 19 18 16 15 6 2 4 9 3 7 5 8 the commerce example, of between declaration 4-6). Comics of licensees out Deputy confirmed publication As Marvel's also Magazine's the Marvel's stated, comic of confirmed "EDGE" In print 3 In

Similar (owned General This 1989 other "Double in of this book (RJN however, that filed for of "Over his status Dr. evidence connection, and Marvel's words, it nearly alleged that declaration, that CC cover include: f. mark services Langdell's by Counsel Exh. in was to Edge as the support Marvel) are the display the is at a in a T). was none 15 presented Edge licensee. 22. EDGE," licensee Licensee true untruths promoted licensee license least "Cutting last commerce currently Alpha" Walter years. EA representative of companies of and one installment Dr. in 2003. comic the these also the Attached by only Langdell Malibu correct or of plague and and Even Bard, Marvel Although Edge EA at instant marketed spring 3 Edge by more presents

www.edgegames.com. comic "Double "Double covered * In mini-series to plaintiff, more for neither support presenting Dr. exemplars of Comics' comic hereto Comics' of Interactive of of motion asserts the any books the the Langdell's compelling plaintiff egregious, 1995 ley the EDGE" Edge its "Edge" Marvel of magazine's EDGE book Edge's as its 10 was claim (Langdell use "Edge" contains (Bard these "CUTTING is Exhibits this licensees, of Omega" being Media of in was s that product comic comic family current nor evidence, representations duly according the August marks evidence Decl. comic the in "currently numerous Malibu

"EDGE" publisher W, Decl. between authorized See December asserted -book comics or book of (id. packaging 1111). EDGE," use X, 1996, its book Exhibit marks. EA ¶ that to Y, at Comics of series, predecessors series 22) marks was 1996 Marvel ¶¶ misrepresentations. mark Z, asserts — marketer Similarly, the and series, there (emphasis with 1995, licensees "Over 7, AA, Future BB. These "EDGE" and in have was and the and 10). in are October was respect that Vice BB as relation the last been published 2004, or the Publishing the no in — & Dr. last were President publication added): abandoned. mark interest bona all last to 1995 the Langdell's publication to Edge have ever print publisher in by fide For (id. — at Malibu and been and use all of at UnitedStates District Court

Forthe Northern District ofCalifornia (Klieger "Snoopy: to Exhs. Dr. cover electronic submitted by video October period, agreements Game mark marks. online wherein has Curiously, years plaintiffs mark plaintiffs Edge Langdell been "THE in old game for O, versions (right) Even B. Compelling Edge They commerce 2004, Future Games Decl. P). selling the at The "EDGE" versions by while granted the included EDGE" "THE after The submitted Magazine video Dr. were Cool are 114, Future Fraud Publishing time of until the the Langdell USPTO 2003, shown Edge "naked" Exh. is of EDGE" game evidence mark Computer plaintiff video for of exterior a suspect. October Publishing Edge and website the as was Magazine use C). the submitted below: in relied game evidence (left) Abandonment was application, Magazine licenses. mark. 2009 with evidence not the Even of packaging 2008 Game For address granted fraud even right Mythora and upon various and (id. more in example, For — of by the the distributed Edge to that at on (id. (id. this supposed nearly example, plaintiff "www.mythora.com," rendering a submitted Exh. disturbing, exercise actual the (supposedly United goods, worldwide plaintiff at at questionable Regarding Interactive Dr. In Exh. USPTO R). four box 7-8). to 11 Kingdom including Langdell's in use within quality it E). the by years had March cover it doubtful of license has appears Dr. USPTO "THE Critically, The bearing Media been the the video after control also for Langdell (Binns video 1996, game, mark United declaration to making "Snoopy: that -game EDGE" entered the been as this the was the -game over though in a neither it however, Decl. game's "EDGE" website box marketing States doctored. to submitted his was packaging bona the into the application cover software The ¶ asserted still the of 6). (ibid). use purported USPTO fide a wasn't these was mark) Cool specimen new being of During of and The by use when a already the that and agreement EA licensing Computer game Then, promotion for even specimen since sold of to "EDGE" release comic Edge that with register the it the of renewed in registered entitled seven 2004. in "EDGE" the time Mythora respect 1996 Games (RJN books, box of the UnitedStates District Court

Forthe Northern District ofCalifornia the company for of Edge cover by disclaimer As USPTO with the Dr. "THE shown, specimen comic is "Edge" of Langdell Even a (left) the trademark who EDGE" for the books video more submitted and comic the "box was in (RJN "PEANUTS the in game evidence November never cover" of the book actual As The As to Exh. specimen differ Submitted 60 a Submitted 1 the 1 — licensee 4 specimen I l Edge i of comic F). which, 2005 USPTO in STEVEN fraud characters," two Interactive In submitted to book GRANT of for to support the is as submitted key the plaintiff— contained seen his & stated, USPTO (right) GIL USPTO respects. application WINE which in of Media, to the was the the 12 to are an as appears the comic application, last USPTO. shown First, entirely Inc." a USPTO to specimen. Actual Actual published -book register a on below "TM" different Second, Box Comic the by Dr. specimen "THE (Klieger Cover bottom a The Dr. has Langdell decade Book instead disclaimer Langdell been specimen EDGE" right submitted Decl. earlier added submitted of of and a in submitted ¶ that the copyright by next 5, connection the to Exhs. genuine stated an the the to actual unrelated the USPTO cover to D, "The logo the box, box E): Forthe Northem District ofCalifornia "THE (Klieger "TM" "THE EDGE" Edge February company's trademark and entitled Langdell's changed Once between been were Third, what doctored not Games) again EDGE" EDGE" was a In Evidence C. "Garfield: for disclaimer Decl. from 1989 present EA 2006, light of added application use various playing The asserts over "Edge and in ¶ Fraud mark mark of of Dr. 7, in three of to Edge these the 2003. seventeen Winter's Exh. was the Langdell "spot goods, fraud the was was as mark and to As material when original Interactive being misrepresentations, tacked manipulated F): "The actually being Submitted the infects Abandonment including in Tail," it submitted years differences," the commerce, Edge issued on used comic ways. plaintiffs actual being to which Media, to earlier in the title video in the -book the First, commerce an the used box bottom USPTO (it had registration Dr. Inc. -game application Regarding in the specimen. registration EA is cover. cover and on been Langdell 1989. visible specimen All argues 13 any of most software in for the released Rights Nevertheless, The products connection for on to "GA1VIER'S the egregious, specimen that This Actual submitted for "THE submitted specimen the the Reserved." video (id. "GAMER'S there by was top USPTO Box by at Softek EDGE" game with right done that Edge are Exh. the Cover the the submitted to EDGE" serious stated to name comic box (a USPTO the of (right) apparently These H). Games register in EDGE" the predecessor USPTO cover 2009 As of "'The books. last doubts "enhancements" to are the relied during a "GAMER'S (RJN of the "E" specimen as shown to comic Edge' appears a well. over USPTO show Second, video -in upon in the Exh. "EDGE"). -interest below book is whether period In that Dr. of to game the G). (left) a have his was to UnitedStates District Court

Forthe Northern District ofCalifornia 27 28 22 24 26 23 25 20 21 14 17 19 13 16 18 15 10 12 11 9 6 4 7 2 8 5 3 1 legitimacy products (id. "[t]he EDGE" a retroactively for presented event, plaintiff Exhs. EDGE" mark. fide actually being submitted registration, Based declaration submitted One bearing licensee EA at use critical sold ¶ G—R). resource given were In upon D. Fraud Finally, In attempted the"GAMER'S 23; of While were of mark been or April evidence addition of to evidence plaintiff's in the sold its as RJN 4 this difference EA disturbing the plaintiff

onto the counsel is used used was licensees Additionally, being "GAMER'S Fraud on requested 1995, while also apparently has USPTO Exh. United Amazon.com to product issued to in continuously current that demonstrating purchase also currently for alleged this connection until Marvel Dr. and D). stands evidence plaintiff the made EDGE" States submitted is . . to sales Langdell evidence packaging In Abandonment 2008, not EDGE" vendor doctored . plaintiff it by rather cannot sum, filed any out: various activities sold is attempted rather present EA mark unclear by that with when bona than there that an the by of assaulting claimed Edge evidence surrounding mark in be specimen the by than application these video the — are Edge "GAMER'S Amazon.com anywhere Dr. plaintiff February to fide found" from is plaintiff, "GAMER'S including Games explain sale highly over the Regarding no Langdell's computers in Games, games use calling the clear Dr. United of his (Langdell the submitted sued 14 of these plaintiffs 2008 suspect or personal plaintiffs on with validity the Langdell's declaration Marketplace past the that evidence has EDGE" they the into error Velocity record Kingdom EDGE" "GAMER'S "CUTTING claimed the for — two Dr. been genuine (Opp. only question Decl. messages by of misleading Velocity use computers USPTO registration Langdell decades. mark is plaintiffs Dr. — abandoned. exhibits — that with received Micro mark tainted sales (Langdell 13). Exhs. cannot at Langdell, box that at both whether least to Micro video EDGE" representation EDGE" the may of For represented for since cover register In K, whether be as is "EDGE" "GAMER'S of hearing, video error on particular, ignored. trademark example, visible N, to have games the — Decl. this the plaintiff 1998, for whether mark O, "CUTTING messages did "CUTTING games "GAMER'S the certain been the R; record that (RJN on Exh. and not in EA suspect prior Klieger when video EA the infringement its made his grafted EDGE" the supposedly "GAMER'S even has T). games — Exh. specimen stating to has mark counsel game. that In 2008. bona EDGE" become EDGE" Decl. J). any were has that Forthe Northern District ofCalifornia "CUTTING "Cutting for The published Opposition the assigning 2005. Declaration specimen June Marvel EA made at described As to EA 2007 after announced in February, Exh. January, his stated, use (which same claims registration it 1999 "extensive letter declaration, Additionally, was as Fast 7. By since W) Edge" single the its was in as: April, Marvel registration his (emphasis that (Langdell -forward and to was March, announced of EDGE" December rights that title "Cover Marvel's own most Use EVIDENCE -issue it Dr. comic attached issued June, use received single of was Dr. in and May, admission, Langdell certainly the six a mark "Cutting the Decl. of of added). Langdell comic and was date. never in in Incontestability registration 1995. comic issue years currently the to July, mark, July June OF no had August ever his ¶ mark To a did book not 25, DELAY (id. voice to No 2007. and licensee The Dr. Edge been 1999 book declaration) including then support published November not the Exh. at other since on (Bard Langdell of September specimen of mails in (id. ¶ receive was cover purportedly Indeed, IN that sale comic "CUTTING 3). DD). continuous of "Cutting under October FILING this at Decl. not, from the year any In comic by of Exh. two 2005. knew contention, a published EA's November submitted he pending Marvel and a 2008, Sections reply of (Langdell ¶ Dr. comic days SUIT 15 V). claims 1984 Dr. book 3). Edge sent had about use legal Despite EDGE," Langdell to and Langdell's A after in (RJN numerous never book application, in sold it by 8 single to to comic 2006, department 1995, (id. the he left commerce & Decl. Marvel have "Mirror's the the attached via "currently 15" release Exh. claiming been, at voice during issue USPTO, Dr. Dr. fact book ¶ ¶ our mailed wherein companies. letters 25; 26). U). in "sold Langdell Langdell to mails licensee that of of this for has as has Edge" 1995. Schatz plaintiff that Marvel Despite "Cutting "Mirror's on a to a however, at only no time via ever he cease specimen with EA's sale least his record In filed certified was filed [plaintiff bearing Decl. one period been companies the responded in -and other these five in legal Edge publicly September Edge a issue a was department November ¶ of "Combined -desist published Notice what years 3). the words, assertions, and that this department the s] was of shortly mark" According licensee." he that by had the July the cover after letter of then the 1997. the by in (id the to of Forthe Northern District ofCalifornia the supposedly agreement. judgments "final these thereafter requested first Langdell companies of confusion explaining injunction release another September The email, once marks waited later United "Mirror's talks letter (id. again negotiations, (id. warnings" 6 5 and

until Instead of communication In Dr. States sent at continued ended "Mirror's on additional it between fact, at against in EA had 2008 had called rif Langdell received June to Edge ¶ January our District 14-15). that 4, EA why of no recently in letter, were Exh. favor 2009 immediately upon EA further separate in July EA "Mirror's did began through its Edge Court documentation January, from 16, in B). not given "Mirror's EA reiterated to EA 2009 from prevailed and a 2009 action, for re interactions attach in letter him A — for to -attempt December "on March, the by earnest back Edge without Dr. cease through (Hershberger the seeking to was * Eastern in Dr. dated the Edge" its his Langdell which -and in Apple May, Langdell on regarding using position declaration and on a merits" negotiations an with similar November -forth District outside September 2008, a Velocity November July, video the agreement preliminary iPad the until Dr. "EDGE" (id. and to Decl. between to of with "Mirror's trademark any game the and counsel Langdell Micro Edge Virginia, EA September 16 March at copies with 10, ownership 24, Dr. iPhone. ¶ ¶¶ 11, (Schatz in did 13). filed Games injunction 2008, EA's marks 5-12, 2008 these Langdell 2008, EA — of 2010, ended Edge" not until action 2008. suit these sent (id. (Schatz In and outside Decl. infringe. Exhs. communications. purportedly against that with pursuant and shortly this this "numerous a at name. against representing threatening to letter ¶ there use ¶ a action communication, C—J). halt 13; Dr. counsel, PC 13). Decl. to after of in EA EA's Langdell's Langdell a was these a version 6 the letters" confidential

EA reply was owned third ¶ Numerous did EA no 3). asserted to reply EA did to sales, filed not 5 party to seek likelihood had that Meanwhile,

released EA companies Decl. by In DICE, not Dr. respond letter were three announced settlement response Dr. Dr. Dr. that a "with "EDGE" receive purported Langdell preliminary ¶ Langdell Langdell Langdell. and also his 28). shortly months in of to sales Dr. to the In the the UnitedStates District Court

Forthe Northern District ofCalifornia 27 22 20 28 24 23 21 26 25 17 19 12 14 13 10 18 16 15 11 6 4 9 2 7 5 8 3 "EDGE" the Natural record fraud selling owns EA's their interest without 2002). below, deceive.'" balance Cir. must was detailed 1197 marks merits, 2005) filed "presumption (9th then evidence a against have detailed the Edge plaintiff A To 1. On A. valid These in any of Resources above, (Dkt. marks, plaintiff Cir. show the (quoting "Mirror's prevail equities that the KP been motions Games mark, the asserted misrepresentations 2009) issue LIKELIHOOD Trademark Permanent is No. he herein the Edge that possibly USPTO abandoned, credited, on is seeking Defense tips record of and 16). 15 of filed EA's likely (citation Edge" being its Games validity." — "EDGE" U.S.C. whether in thus claim This that in this warranting "use his contains a Make such to filed. Council, video Validity obtaining preliminary a OF has favor, which suffer any order omitted). action protectable 1114(1)(a)—(b)). of of plaintiff fraud SUCCESS -Up, marks, See failed trademark Finally, also the of game numerous follows irreparable and would these on Tie ---- criminal Inc. mark could support and/or to the June to If that has injunction Tech, U on ON v. interest." establish factors the .S. ownership ANALYSIS also preliminary (and a infringement, Lasting is sufficiently an August 15, THE maintaining hearing items ----, penalties public, EA's Inc. likely harm render injunction 17 2010 likely weigh MERITS ----, v. — must of Impression argument Lahoti to 20, in Kinedyne of the held (Dkt. evidence based them 129 cause would) injunction if the such demonstrated in over establish instant the registrations Edge is on its absence S.Ct. v. No. invalid. in upon a misrepresentations 21 confusion, September favor. that VeriCheck, strip the mark Corp., I, that Games 1). preliminary months 365, Inc., that record the many public of these plaintiff Nearly is 374 preliminary that 296 he preliminary for 408 "must established, (if or after 30. speaks Inc., is interest. registered (2008). many it F.3d to F.3d not two likely owns injunction wilfully EA cause demonstrate 586 all) 778, months of for 596, prove first to injunction a relief, F.3d As the Winter of Edge itself. mistake, protectable marks succeed 783 committed 602 plaintiff's explained began asserted true. motion 1190, passed (9th that Games (9th v. that As of If or on the Cir. it to UnitedStates District Court

Forthe Northern District ofCalifornia 28 27 26 25 22 20 24 23 21 19 18 17 16 15 12 14 13 11 10 9 6 4 7 2 8 5 3 1 AMF the defendant's eight that injunction used, O'Neal 296 marks. cannot valid made commerce Langdell's demonstrated prima of the Entertainment declaration declarations his goods, representations F.3d it (6) Inc. factors trademark in representations facie is Even To be B. In Additionally, Distributing, As the likely type at v. sum, credited (3) record determine and such, assertions evidence were 783; intent ordinary Sleekcraft provided set if a of similarity to and Likelihood the the based likelihood is forth see goods Edge materially succeed does in a to asserted purported Future made prerequisite also selecting Inc., justify course of EA whether in regarding upon have by Boats, Games not and abandonment. AMF of EA has by 15 on Publishing 578 of support of the become the the marks misleading the of Dr. U.S.C. the "sales" success from put Confusion 599 Inc. a the has F.3d marks, trade, evidence degree "likelihood the extraordinary Langdell to merits. forth mark, F.2d not were v. two a a highly bona 1154, 1127 likelihood Sleekcraft of finding in and — (4) established of substantial of 341, or his presumed proving Use and revealed in fide ("Nonuse care not evidence plaintiff's in 1162 downright suspect the company's of (8) 348-49 his of of made and likely relief confusion" record, of (9th Boats: infringement, 18 declaration a that likelihood that that continuous evidence confusion mark valid in of [of merely (9th requested Cir. to supposed the false. light actual many it this (1) video be a means and is asserted 2009) mark] Cir. exists, exercised of likely strength order to of calling These submitted protectable, of -game confusion, between the reserve use Edge expansion 1979); "licensees" herein. the Dr. for finds to this evidence marks of falsehoods bona Langdell's into 3 products. of succeed Games by the One consecutive order the a the that to the right (5) severe fide are asserted the of the asserted Industries, mark, — presented plaintiff purchaser, must has the marketing valid. on preliminary use in Court. Marvel In infect assertions question failed product the a (2) of other examine marks mark."). years and See merits. such has proximity all Indeed, LLC by to (7) channels accused words, Tie of lines. in not shall many EA. establish mark in the Dr. v. Tech, Since his Jim the be They all of of a UnitedStates District Court

Forthe Northern District ofCalifornia 27 24 26 28 22 20 23 25 21 19 18 17 16 15 10 12 14 13 11 6 9 7 4 8 2 5 3 1 the and "Mirror's the low the there similar "reasonably the susceptible consumers This compelling Similarly, including Langdell retail selling numerous For — endorsement, arguments major marketed likelihood EA beyond public). goods word example, degree conclusion is DICE channels retailers, to his Additionally, The no The "Mirror." never the with Edge "EDGE" pre in under company's evidence of on Dr. marks at of to evidence fact preliminary Moreover, the prudent -announcements confusion "Mirror's all. according or this attack. care significant Langdell's used that states plaintiff is marketplace are plaintiffs approval for issue bolstered as the -branded prominently In by of any consumer" there that (Opp. to exactly Even various current this actual EA plaintiff Edge are to injunction be has reason plaintiffs of monetary bare Dr. is "reverse connection, 22). confused to tainted if by not the video asserted no support confusion how the distribute and and displayed Langdell, mark statements the but evidence established in has competing "EDGE" future demonstrations much the games record by fact to confusion" investments marks failed video or as its the describe marketplace on that the to that "Mirror's (despite claims capital Edge video "Mirror's -game are in suspect for and the in to "strength" marks purchasers products the that the not his show modern publisher the -game Games the of theory 19 word even record he the suspect through products over Edge were evidence Sleekeraft infringement. Edge." at that visual has is marketing visually major herein. "edge products. likely 21 gaming of is of of invested that deemed each advertising or currently declaration plaintiffs months sophisticated, "Mirror's infringement, and may The developer industry similar EA set to of factors Indeed, in thematic consoles be not forth channels evidence the chose "Mirror's "arbitrary," Given in of Indeed, and confused to selling even developing, asserted asserted "Mirror's Edge each events, do — in packaging the of to that Dr. aspects through not is high the the be other used to call majority EA (or paper Edge "Mirror's would Langdell's available support support as record competing and as marks marks -profile it's and has plans or Edge further to plaintiff of marketing, the thin. was the that product the is produced the exercise of does is is to used this exact a proximity the reduces channels, origin, sold for plaintiff confusingly being also finding Edge" video sell) Indeed, declaration. products.' EA argues, assertion not sale to same by highly and such sold modify game. was to that s Dr. of a to a UnitedStates District Court

Forthe Northern District ofCalifornia 27 28 24 23 26 25 22 20 21 19 14 17 16 18 15 12 13 11 10 9 6 4 7 2 8 5 3 from Thomas asserted user's mark context — suffer on in that another are logo, licensed registered that shared more Edge origin support constitute purchasing this the even the likely that can goods any "simile' EA and McCarthy, irreparable 9 8 senior of litigation.' merits. franchise.

between the 2. In Following Yet of This Reverse for plaintiffs entity, be exist) by goods. accused has to are sum, trademarks a market preliminary afforded public trademark another Edge "family user's order be associated put IRREPARABLE would confusion Future to confused under McCarthy them. is 8 marks By is forth mark, Games harm EA's the For recognizes swamped, claim not failed of to contrast, the believe Supreme with and bound are Publishing, these actions. injunctive the convincing the On marks" in "Mirror's occurs on (Opp. that as confusingly Sleekcraft junior the the argument product this asserted Trademarks resulting to by, reasons, junior purchasers that absence that EA when HARM the issue, where and user Court's 20-21). Rather, relief, has they Edge" origin, the and evidence declines names user. a in saturates marks similar. factors, junior is Edge there a and confusion term produced of that plaintiff likelihood were it "In decision irreparable of Given logo Unfair preliminary endorsement, is within to user is is Games "edge" a its the its the that defer plaintiff reverse associated limited. no (specifically, engages appearance market various Competition this s plaintiffs 20 that evidence can evidence the in the to, assertion has in confusion consumers Winter, harm crowded determinations logo be and video has in the relief." Finally, "EDGE" failed such analyzed or with 'overwhelms not asserted that is itself in § was approval burden that gaming irreparable 23:10 established it extensive situation, the EA, to sufficiently will field, the was with Winter, recently the was -branded establish record (2006). by mistakenly based EA term to marks changed the industry various respect the the first of rather promotion prove DICE, 129 USPTO any "edge scope senior harm showing upon altered when used is that shown products than S.Ct. believe of "EDGE" that to indicative from that or user.'" cannot of a the it of as plaintiffs trying a in is common to "he the is plaintiff to goods protection at that commerce are that found the blue products make likely whether (to 374. "Mirror's 3 to is not senior be consumers J. marks the under profit of likely the to presumed in it "EDGE" owned to In is element a red). the extent appear many common (if at a succeed the by to issue any) or UnitedStates District Court

Forthe Northern District ofCalifornia 28 24 27 26 25 22 23 21 20 19 17 16 18 14 13 15 10 12 11 9 6 8 7 4 5 2 3 1 "Mirror's Edge Edge" injunction already has the sale bulk the adequately gaming question continued evidence protectable plaintiff's plaintiff. Maxwell later meet unlikely filing Court not to of date, this franchise franchise the For Second, -related First, Third, the demonstrated occurred. -Jolly, to whether that and burden. concerning Edge While use asserted now in public these shown alleged be marks, the as resolution the and of made would 563 industries given from stated has a ordinary was the reasons, before asserted plaintiffs jury The that most "irreparable Edge marks F.3d already "Mirror's whole first that plaintiff inundating the prevent the in undisputed may telling, seeking of Games 847, the this suspect tempers course for it announced marks potential this by is ultimately business been prior licensing order 851-52 likely any an s Edge action it harm" current cannot a of were the award is nature done. the fact preliminary section, irreparable litigation. undisputed finds harm to market activities and name. (9th likelihood could fraudulently to find that opportunities. suffer suffer and of Edge of the to — 21 the monetary Cir. Dr. plaintiff otherwise, future the not is based asserted months irreparable any harm Games See preliminary alone injunction. legitimately Langdell's 2009). that 21 "EDGE" be of harm sales California upon adequately registered irreparable to Edge did damages since sufficient marks has In this its As not to and the this harm marks marks Games not "Mirror's explained thunderstorm representations its Due injunction timely extend purportedly record business connection, shown property Pharmacists and/or or remedied absent to harm. to beyond during some waited deny this act beyond presented Edge" why have below, activities, record Indeed, preliminary to unreasonable rights other the the the over caused over by prevent plaintiff issuing been to instant trolling Ass interim "harm" legal was plaintiff legal contains both due three the — without 'n abandoned it by first that the damages. to v. a validity the is remedy motion. relief. has various period the preliminary years that EA's an delay, "Mirror's offered has Edge compelling USPTO not valid "Mirror's open has failed since of between at the Games by and a for and to Forthe Northern District ofCalifornia 28 24 27 26 25 22 20 23 21 19 18 17 14 16 15 10 12 13 11 9 6 4 2 7 8 3 5 1 "Mirror's trademark likely interest. preliminary injunction. franchise of obtain be defendant. that create allow could that services promoting use plaintiff. the confused of the Edge to the have video and the a Second, For By 3. Finally, balance preliminary succeed bearing As "Mirror's over First, Edge" Games asserted infringement release the contrast, the sought See Rather, relief, such, or game "Mirror's such foregoing BALANCING deceived E-Systems, the Edge for of the video on has a products for that a equities marks two all as Edge" a preliminary EA the asserted preliminary injunction Games invested long the stated, the the game remaining merits, actions has by Edge reasons, Apple are reasons balance franchise period Inc. tips carrying the shown THE has marks. began infected plaintiff any * that products after v. in franchise. — injunction iPad EQUITIES injunction not of Monitek, this its already factors amount of avoiding that in it time the to allowing shown favor. and equities is by has earnest, order develop it "Mirror's likely at evidence would has iPhone. weigh not discussed It of is issue. Inc., AND prior that finds confusion All now not funds invested tips EA sufficiently to it 22 and THE of the be 720 did heavily to suffer warranted that has to in Edge Given of its (or plainly into expand. public not. invest PUBLIC in F.2d its deceit. representations millions plaintiff millions to shortly this irreparable favor, the against this name, consumers Instead, 604, established inequitable interest in order, under development During INTEREST Moreover, record, and or of after) 607 has of including granting that customers. Edge the develop dollars plaintiff failed typically (9th harm — this sales allowing an regarding factors that and would Games Cir. there injunction in delay, to the into of newly consumers of the waited highly the establish recent associated 1983). the relief set While "Mirror's is building Edge favor absence has EA the scant forth released original prejudicial 21 products sought is not continued validity Edge Games a that months in are in evidence preliminary and established with of the Edge" Winter. likely versions it Games by is to public and and to to to to UnitedStates District Court

Forthe Northern District ofCalifornia 22 27 20 24 23 28 26 25 21 17 19 16 18 15 10 12 14 13 11 9 6 4 8 2 7 5 3 1 Dated: preliminary IT Based October IS injunction SO upon 1, ORDERED. 2010. the is findings DENIED. and conclusions CONCLUSION 23 set X UNITED forth herein, AM STATES Alti ALSUP plaintiff — DISTRICT f — s motion JUDGE for a Exhibit OR3 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 1 of 16

[Home] [Databases] [World Law] [Multidatabase Search] [Help][Feedback] hi England and Wales High Court (Chancery Division) Decisions

You are here: BAILII » Databases >> England anti Wales I'MI Court { iancer Division) Decisions >> Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) (13 June 2011) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2011/1489.html Cite as: [2011] ETMR 50,[2011] EWHC 1489(Ch)

[New search] [Contexts] [View without highlighting [Printable RTF version] [Hein]

Neutral Citation Number:[2011] EWHC 1489(Ch) Case No: HC09CO2265

IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION

Royal Courts of Justice Strand, London, WC2A 2LL 13/06/2011

Before:

MRS JUSTICE PROUDMAN

Between: tFUTURE PUBLISHING‘LIMITED Claimant - and - THE tEDGEI,INTERACTIVE MEDIA INC tEDGEs GAMES INC DR TIMOTHY LANGDELL Defendants

Iain Purvis QC and David Wilkinson (solicitor advocate)(instructed by Stevens & Bolton LLP) for the Claimant Dr Tim Langdell (the 3rd Defendant) in person for the Defendants Hearing dates: 7,8, 9, 10, 13, 14, 15, December 2010, 12 January, 16 February,2 March 2011 (and further written submissions 9 and 11 March 2011)

HTML VERSION OF JUDGMENT

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 2 of 16

Crown Copyright C

Mrs Justice Proudman :

1. These proceedings are brought by truture Publishing's Limited for breach of contract, breach of copyright and passing off against two companies registered in the United States, tEdges Interactive Media Inc("EIM") and tEdges Games Inc("Games Inc") and Dr Timothy Langdell, an individual of British origin who now lives in Pasadena USA. I am satisfied that EIM and Games Inc are controlled exclusively by Dr Langdell. A "Jack Phillips" has occasionally put his name to witness statements on behalf of EIM in the past but he is not mentioned at all by Dr Langdell in his evidence and I suspect(without making any findings in this respect) that the claimant is right in saying that he does not exist and is an invention of Dr Langdell. At all events, I find that anything EIM and Games Inc have done has been procured solely through Dr Langdell's intervention. In so far as there is tortious liability on the part of EIM Dr Langdell is liable as joint tortfeasor on the principles set out in MCA tv‘. Charly Records(No 5)[2002] FSR 26.

2. EIM and Games Inc have previously been, but are not now, legally represented in the action. Dr Langdell has appeared in person on behalf of all the defendants and I will sometimes refer to him rather than the particular defendant in question.

3. The claimant is a well-known publisher of magazines and it sells approximately 3.6m magazines per month. For present purposes its speciality is computer gaming magazines, in particular the magazine.EDGE'S, which has been distributed in the United Kingdom since 1993. *EDGE% magazine has a large circulation. Its website is visited by over 400,000 visitors per month. Many jobs in the computer gaming industry are advertised in its pages, it has many corporate subscribers and it has won a number of awards over the years, including Games Magazine of the Year 2008. It is plainly a substantial enterprise engendering a substantial following and substantial respect in the gaming industry.

4. Since its initial launch in 1993 the magazine has been published under the name tEDGE'S and has used a particular and distinctive form of logo. The letters "E" in the logo extend the cross bar on the left hand side (with a corresponding shortening on the right) and there is a sharp scalpel like point at the Ledges of the extension.

5. In the 1980s and early 1990s Dr Langdell had a business writing games software, under the name Softek and then tEdgel. He is now well-known, indeed the claimant says notorious, for pursuing third parties using the name tEdgel for licence fees, failing which he pursues them for damages for trade mark infringement.

6. It is common ground that Dr Langdell and the defendant companies have used three versions of an tEDGE's logo, all based on a stretched version of the Franklin Gothic or Helvetica fonts. One of these versions is indistinguishable from the logo used by the claimant and was used on the defendants' letter heading in 2008 and 2009 and on EIM's website at various times. A second has a shorter bevelled trapezoid and was used on EIM's website from about 2003-4 until June 2009. A third has a much shorter trapezoid to the left of the vertical stanchion of the "E", amounting to no more than a triangle shape. I only have photocopies which Dr Langdell assures me accentuate the shadow produced by the bevelling. In all three cases, however, the slashed middle bar of the E was retained, as well as the stretching effect of the letters.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 3 of 16

7. A number of preliminary issues arise of fact and law with which I intend to deal first.

Action unnecessary

8. Dr Langdell alleges that this present action was unnecessary as the defendants met all the claimant's requests for undertakings before the claim was served. However it seems to me wholly reasonable that the claimant should bring the action. The defendants' solicitors letter of 29th June 2009 says as follows;

"The tEDGE1,logo has been used by our clients for many years and they will not cease using it because they are entitled to use it."

9. I am unable to find unequivocal undertakings in the correspondence, despite Dr Langdell's assertions that they were given. Further, Dr Langdell continued to contend before me that he was entitled to continue to use the tEDGE1 logo and that he intended to do so.

Originality

10. Dr Langdell submitted that the claimant can have no copyright in its tEDGE1 logo because it is not original over the Franklin Gothic typeface. I do not accept this submission. The stretching of the font was combined with the distinctive slash and projection on the middle bar of the E. What is required for artistic originality is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work: see Copinger and Skone James on Copyright 16th Ed at 3-130 and Ladbroke'4 -4. William Hill [1964] 1 WLR 273 at 287. The claimant's logo is original within this test.

Consensual use

11. Dr Langdell claims that in 2005 he asked for and obtained the consent of Mr Pierce ofthe claimant to use of the tEDGE-3 logo. I accept Mr Pierce's evidence, which was not seriously challenged, that there were no discussions on the subject at any time. I therefore reject the defendants' contention under this head.

12. Dr Langdell accepted in cross-examination that he copied the tEDGE1 logo when he used it in his letter head to write to the claimant. He said this was what he called "an estoppel representation", by which I understood him to mean that he was using it as a deliberate challenge to the claimant to complain about the use. He asserted rather vaguely that this entitled him to a licence by conduct. I do not accept his contention.

1991 invention by Dr Langdell

13. A third preliminary matter is that Dr Langdell asserts that he invented the tEDGE's logo in 1991. He contends that he did not copy the -tEDGE's logo from any work of the claimant. Indeed he said that, consciously or unconsciously, the claimant copied his invention when the claimant started to use the tEDGE's logo in 1993.

14. I observe that Mr Williams, the claimant's creative director, gave evidence that he specifically designed the logo for the magazine in the course of his employment. His evidence that he was unaware of the existence of any logo used by Dr Langdell at that time was not seriously challenged in cross-examination.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 4 of 16

5.25" floppy disks

15. The most important part of Dr Langdell's case under this head is the question ofthe floppy disks which he adduced as evidence in support of his case that he had invented the tEDGE'S logo in January 1991.

16. The defendants allege in their pleading that Dr Langdell's invented logo was published and distributed in a single page catalogue and then on a printed flysheet to promote the defendants' products at trade shows and elsewhere. Dr Langdell said in opening that this was known "really clearly" to the claimant at all times and that he had been using the logo continuously for 19 years. When the court asked him what evidence there was of use of the logo in the 1990s Dr Langdell then claimed that there had in fact been what he termed "scarcity of use" at that time.

17. The evidence, and the only evidence, of his creation of the logo, supporting Dr Langdell's own testimony as to the two pages of documents, is that of certain floppy disks. They were first mentioned by Dr Langdell in open correspondence in a letter dated 20th May 2010 and his account of what happened in relation to the disks did not emerge until his seventh witness statement of 29th November 2010.

18. He claims that he saved the catalogue and flysheet on to a 5.25" banana brand floppy disk in 1991, for what reason he cannot now remember. This disk ("disk 1") was sent to the defendants' expert, Mr Steggles of Disklabs, who said not only that it was a genuine 1991 disk but also gave his opinion that the information on it was genuinely created at that time. However when the claimant's expert, Mr Dearsley of Kroll Computers, examined it he pointed out that although disk 1 was an old disk the alleged 1991 content had been created using Windows 95, that is to say, later software. He also said that the content had been deliberately backdated as though it had been created at an earlier date. When the matter was referred back to him, Mr Steggles agreed with Mr Dearsley that the content of disk 1 could not date back to 1991.

19. Dr Langdell then claimed that disk 1 had been sent in error and was a copy he had created in the mid-1990s for some reason he said he was unable to remember. He then produced an involved and absurd story about how he had found two disks in a box in 2009, one of which was a mid- 90s back up disk ("disk 2") and the other of which,(disk 1) was used to clone the original. He said he took the two disks to a "repair man" and mixed them up by marking the wrong one. His oral evidence did not tally with his witness statement and his evidence about the boxes in which he allegedly found disk 1 and disk 2 was confused and unpersuasive.

20. He sought to explain the backdating of the images on disk 1 by saying that he wanted to create a clone as close as possible to the original. However he was wholly unable to explain to the Court's satisfaction why he should wish to create a clone at all rather than a simple back-up copy. It was not until October 2010, according to his account, that he found disk 3, the alleged original 1991 disk, although I found his evidence confusing under this head; it is possible that disk 2 and disk 3 were supposed to be one and the same.

21. At any rate, by October 2010 Dr Langdell had seen Mr Dearsley's report setting out the reasons why the information on disk 1 could not have been produced on the disk in 1991. Mr Dearsley's view was that it would be possible to create a disk which did not show these software anomalies once the maker was armed with the Report's explanation of what was wrong with the previous version. Dr Langdell said that he was technically incompetent to do such a thing but I do not accept his evidence that he did not either do it himself or procure someone else to do it.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 5 of 16

22. In May 2010 Dr Langdell had claimed that the relevant disk was too delicate to be moved to the UK, despite the fact that he says that he shipped it twice across the Atlantic in the early part of that year. He was ordered to provide inspection by Order ofthe Master on 19th August 2010 which resulted in the examination by the experts.

23. Dr Langdell then produced a long and tortuous explanation of the emails he had sent to Mr Steggles, which were disclosed only a week before trial. The emails were presented to the court in a sequence which gave the impression that an email received from Mr Steggles on 3rd October 2010 was in response to an email from Dr Langdell ("the suspect Steggles email") which in fact had never been received by Mr Steggles. The suspect Steggles email mentioned no fewer than 5 times that a clone had been made. The email actually received by Mr Steggles (and to which his own email was a response) made no reference to the creation of a clone. Moreover the format of the suspect Steggles email is suspicious in itself and I have no doubt not merely that it was not received but that it was never in fact sent. The overwhelming inference is that the suspect Steggles email was concocted as support for Dr Langdell's story that he had created a cloned disk.

24. Dr Langdell's story is incredible. The truth is a prosaic one, namely that Dr Langdell concocted disk 1 in support of his claim that he had invented the tEDGE3 logo in 1991. When this was exposed by the claimant's expert he constructed an elaborate explanation and created disk 3, having learned from the Report how to avoid the mistakes he made the first time.

25. There is however a further and very important aspect of the matter. In his closing submissions, Mr Purvis QC pointed out that in all the correspondence about disclosure there had never been a suggestion prior to May 2010 that the evidence relied on by the defendants was contained in disk rather than paper form.

26. The claimant had expressed willingness to let the court read the without prejudice correspondence passing between the parties but Dr Langdell, as was his right, refused to waive the privilege attaching to it.

27. In his closing written submissions, however, Dr Langdell made the serious allegation against the claimant and its solicitors that they were deliberately misleading the court. He asserted that they knew very well that the disks had been referred to in without prejudice correspondence.

28. Mr Purvis took me to the relevant authorities and I held that this allegation resulted in a waiver by the defendants of their right to keep the without prejudice correspondence from the court. Mr Purvis then produced a clip of what the claimant said was the entire without prejudice correspondence for the relevant period. None of the letters in that clip mentioned the existence of a disk. In response, Dr Langdell subsequently produced a hard copy oftwo emails allegedly written by him to Mr Millar of the claimant (respectively dated October 2nd 2009 and February 23rd 2010) which he alleged had been deliberately and dishonestly excluded from the string of correspondence and which do indeed refer to the disk on which he relies.

29. I was in some difficulty as the matter of the without prejudice correspondence had arisen entirely in the course of closing submissions. No evidence had been formally given and there had been no cross-examination. However the correspondence and the counter allegations could not simply be ignored. Not only was the claimant's allegedly dishonest behaviour now part of

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 6 of 16

Dr Langdell's case but, if the emails were genuine, they would support Dr Langdell's substantive case about the genuineness of the disk.

30. By this stage Dr Langdell had returned to Pasadena and arranging a mini-trial on the issue of the emails would be no easy task and would add substantially to the costs of the proceedings. Neither side wished me to do so.

31. I have decided that I should apply some common sense to this issue. I cannot let the case run on indefinitely in circumstances where the evidence (properly and fully tested in cross- examination) is overwhelming that the disks were concocted.

32. In deciding not to reopen the matter I have taken into account the following. The claimant has, pursuant to its continuing disclosure obligations, carried out a full search of its IT systems for the emails. No trace has been found. Dr Langdell has at no stage said that he has conducted a similar exercise and at no stage has he offered to let the claimant's experts examine any of his digital material.

33. Secondly, although Dr Langdell was aware of the claimant's allegation in mid-January, the two emails were not produced to the claimant until the hearing of2 nd March 2011, giving the claimant no opportunity to test them forensically, to seek permission to adduce evidence about them or to cross-examine Dr Langdell as to their authenticity. The emails had never been referred to before and, in common with other emails which Dr Langdell alleges were sent but not received, were not produced until the very last moment. It is hard to escape the inference that (in common with the suspect Steggles email and the email to Randall Copland referred to below)the intention was to try and reduce the scope for investigation by the claimant. It is also hard to escape the inference that crucial emails, said to have been sent by Dr Langdell but not received (for example an email sent to Jo Clayton of the claimant, together with an alleged "read receipt") were never in fact sent at all.

34. Thirdly, Dr Langdell claimed (as with the email to Randall Copland) that the email of2 nd October 2009 was a "stand-alone place-holder" reply and not part of a thread. However he was unable to explain why it was headed "Original Message". The email of 23rd February 2010 is also headed "Original Message" and again no thread has been disclosed.

35. Fourthly, a subsequent email to the claimant (dated 18th December 2010)from Dr Langdell says in terms that he had not responded to the claimant's without prejudice email timed at 1.18 am on 2nd October 2009. The alleged email of 11.34 am of2 nd October 2009 is therefore inconsistent with this assertion.

36. Lastly, the format ofthese emails differs from the thread disclosed by the claimant and its solicitors and resembles that of the suspect Steggles email and the Copland email, both of which were extensively dealt with in evidence.

37. I accept that it would be wrong to make positive findings offorgery of the two alleged without prejudice emails without proper evidence formally adduced. I cannot and should not make any findings of fact about them. The above factors are merely the circumstances against which I have decided that it would not be in accordance with the overriding objective to re-open the issue of whether the disks are genuine. In all those circumstances I propose to attach no weight

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 7 of 16

to the two alleged without prejudice emails on the basis of a new allegation made by Dr Langdell.

38. I now turn to the claims made by the claimant in the action.

Contract

39. In October 1993 Dr Langdell issued proceedings against the claimant for passing off, alleging that he had unregistered rights in the mark tEDGE3. On I 1 th February 1994 Dr Langdell applied to register the trade mark tEDGE3 in the class 16 (printed matter) category in respect of various items including gaming magazines. The action was stayed pending payment by Dr Langdell of security for costs but was then settled by an agreement dated 4th December 1996 ("the 1996 Agreement"). By that date, the claimant as well as EIM had applied to register the name tEDGE3 in the class 16 (printed matter) category.

40. The thrust of the 1996 Agreement was that EIM would keep its registered mark and would be given the claimant's trade mark application in return for a royalty-free licence for the claimant to use the mark tEDGE3 in relation to tEDGE3 magazine in any form, electronic, on-line or otherwise. The claimant paid EIM the sum of £20,000. All rights and goodwill arising out of the mark tEDGE3 were to vest in EIM. EIM was prohibited from tpublishing3 or licensing anyone else to publish a magazine substantially similar to'LEDGE'S magazine under the name tEDGE's or any colourably similar mark. EIM was prohibited from claiming any association or connection with tEDGE3 magazine or with the claimant, save that in response to an unsolicited request EIM could confirm that it had licensed the mark EDGE1 to the claimant in relation to t.EDGE1 , magazine.

41. The claimant's case is that thereafter, as 'LEDGE'S magazine's success grew, Dr Langdell's behaviour became increasingly burdensome. The claimant wanted to abrogate the licensing agreement and buy all necessary trade marks from the defendants.

42. Agreement was reached in 2004, both with EIM and with Dr Langdell. The result was a Concurrent Trading Agreement("CTA") with EIM and a Deed with Dr Langdell. Each was paid a substantial sum of money in consideration of entering into the deeds, $250,000 to EIM and $25,000 to Dr Langdell, although the total sum was paid into Dr Langdell's bank account.

43. I should say at this juncture that Dr Langdell relied before me on Recital F to the 1996 Agreement, saying (although this was not pleaded) that it barred the claimant from bringing these present proceedings against EIM. Recital F provided (the emphasis is mine),

"EIM Softek and *Future's wish to settle the Proceedings and all actual and potential disputes between them relating to the publication bytFuturel.of t EDGE-4 Magazine upon the terms hereinafter appearing."

This contention is misconceived as it ignores the fact that the 1996 Agreement was expressly (see Recital 4 of the CTA)terminated and replaced by the CTA.

44. The primary effect of the CTA was to assign to the claimant those parts of the trade marks owned by EIM which included the word 'LEDGE'S and which covered tEDGE3 magazine. Because Class 16 includes not only magazines but also other printed matter such as posters,

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 8 of 16

booklets and instruction manuals the agreements provided that EIM would assign to the claimant that part of each mark in Part 16 which covered:

"Printed matter and publications, namely magazines, newspapers,journals, columns and sections within such magazines, newspapers and journals, all in the field of business, entertainment and educations relating to computers, computer software, computer games, video games, hand-held games and other interactive media."

The Register of Trade Marks was duly amended accordingly, with a suffix "A" for EIM's marks and a suffix "B" for the claimant's marks.

45. The assignment included all rights in the agreed part of the trade marks,

"including all goodwill attaching to the use of the Agreed Part of the Trademarks in class 16 and all rights of action, powers and benefits arising from ownership of the Agreed Part..."

"Trademarks" was defined as including not only the registered marks but also "all unregistered trademark rights ofEIM in those marks."

46. Under clause 2.1.2 of the CTA,EIM granted the claimant certain licensed rights, making it clear that EIM could not object to claimant using the mark tEDGE1 in relation to electronic publications. By Clause 2.9, the claimant undertook not to use the mark tEDGE‘ outside the publication of computer games magazines, their associated marketing and promotion and the uses covered by clause 2.1.2.

47. Importantly, both agreements provided as follows:

CTA clause 2.4:

"EIM further undertakes that it shall not use or permit the use by any other person of any Trade marks in a way which is or could reasonably be confusing with t Future's use of the same in accordance with this Agreement and Deed."

The Deed clause 2.1.6:

"Not [to] use or permit the use by any other person of any of the Trademarks in a way which is or could reasonably be confusing with tFuture‘'s use of the same in accordance with the [CTA]."

48. I will also cite the provisions of clause 6.9 of the CTA as Dr Langdell set great store by them, saying that the claimant never fulfilled its obligations under the last part of the sub-clause:

"...The Parties acknowledge that specifically in respect to the trademark and brand "tEDGEI." in the computer and video games sectors, they will both be actively promoting, building and enforcing rights in the brand to the Parties' mutual benefit, and that the Parties will share a common aim to use their reasonable endeavours to grow and enhance the LEDGES brand in the computer and video game industry and promote worldwide consumer recognition of the tEDGER4 brand as one associated with innovative quality goods and services. While not committing either

http://wvvw.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489(Ch) ... Page 9 of 16

Party to take any specific action after Completion, the Parties agree in good faith to use their reasonable endeavours to identify ways in which they may work together to jointly promote and enhance the tEDGEs brand in the worldwide computer and video game markets."

49. I am not sure of the relevance of clause 6.9 to the case. Dr Langdell's counterclaim has been struck out. He seeks to use the provision (and the claimant's alleged shortcomings, which in any event the claimant denies) as some sort of defence to the claim,justifying his use of the t EDGE-4 logo and his claims to be responsible for the magazine. However while clause 6.9 recognises that both parties will be, and should in good faith be, promoting the tEDGEs brand, it does not provide any mandate for making claims to the business of the other party or for causing confusion between the undertakings of the two parties. Dr Langdell's assertion that his use of the tEDGEs logo was merely "a good faith effort to comply with paragraph 6.9" is misplaced.

Breaches of the CTA and of the Deed

Confusing use of the t.EDGE1 logo

50. I have no doubt that the defendants deliberately adopted a logo which is an obvious replica of the claimant's tEDGEs mark. I was taken to many examples and I mention only the following. The version on the home page of EIM's website in June 2010. A version used in July 2010 on EIM's page on the Café press website. A version used on a letterhead in 2008 and 2009.(Dr Langdell accepted in cross-examination that the logo adopted on his letterhead for the purposes of a letter to the claimant's solicitors was a deliberate copy.) A version used on the homepage of EIM's website between 2003/4 and June 2009. A version used on EIM's game Mythora. Versions used on the game Bobby Bearing.

51. I accept the claimant's submission that all such uses are confusing or could reasonably be confused with the claimants' tEDGEs logo within the meaning of CTA clause 2.4. This is so whether the test to be applied is the "defective recollection" test appropriate to passing off, or a straight comparison of the marks side by side: see generally British Telecommunications plc -tv- One in a Million Ltd 1-19991FSR 1 at 23.

52. Dr Langdell admitted in cross-examination that he adopted the tEDGEs logo on his website in June 2009 in order to create a connection in the mind ofthe public with the claimant. He said he believed he had the right to do so but that was on the basis of his assertion, which I have already rejected, that he himself devised the tEDGEs logo in 1991. The logo was adopted to indicate Dr Langdell's entire business including his own games business and I reject his claim that he only used it on his webpage to promote the claimant's magazine.

53. There is also some hearsay evidence of confusion to be found in blog comments on the Internet. Dr Langdell shrugged this off saying that this evidence could have been written by the claimant. This seems to me inherently unlikely but I ascribe less weight to such evidence as the origin is unknown and there is no possibility of analysing its trustworthiness.

Deceptive statements

54. I also accept the claimant's submission that various statements made by Dr Langdell, combined with his use of the tEDGEs logo, are designed to confuse visitors to his website. For example,

http://www.bailii.org/cgi-bin/markup.cgi?docqew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 10 of 16

in his letter to Apple of 31st March 2009 Dr Langdell stated that 4-EDGE% is extremely well known for its other game products and services such as tEDGE% magazine." Dr Langdell operated a domain name using the title "tEDGE1 Magazine", claiming that the magazine was published under licence from *EDGE;Games. The tEDGE% games website stated that the magazine was "published by our trading partner, tFuture Publishinn". Dr Langdell's personal website stated that "the tEDGE's brand is now known for many game related products and services, notably the UK top selling games magazine tEDGEI". His biography on the International Games Developers Association ("IGDA") website stated that[EDGE‘ games "spawned such well-known tEDGE1 branded ventures as tEDGE% magazine."

55. The primary defence advanced by Dr Langdell at trial was that the statements are true. Some (but not all) ofthem may well be literally true, but that does not prevent them from being misleading and in my judgment they are. My one doubt was about the phrase "trading partners", since in a letter Mr Millar himself described the claimant and the defendants in these very terms. However even leaving this one phrase on one side there is enough material amply to justify my finding that the defendants' statements on websites controlled by them claim, explicitly or otherwise, a relationship between EIM and the claimant which does not exist and which comprises a confusing use of the trade mark tEDGE1 in breach of the CTA.

56. I should add that Dr Langdell denies any responsibility for the contents of his biography on the IGDA website. However he was a director ofIGDA when complaint was first made, and no positive defence was pleaded to this effect at a time when the point could have been investigated with IGDA.

Clauses 2.3 and 4.2

57. The claimant pursued two allegations of breach in relation to US registered trade marks. It is notable that although the distinction between denial and non-admission was carefully explained to Dr Langdell by the Court during the course ofthe hearing, the defence advanced no positive case but merely pleaded non-admissions. Dr Langdell claims to have assigned these trademarks to the claimant in compliance with the CTA and during the course of the trial produce extracts from the US Patent Office Website which records the existence of a corrective assignment on its assignment page. He contends that the claimant's claim in these respects is yet more evidence of its bad faith in its dealings with him.

58. It not clear exactly what did happen with these assignments as EIM had already assigned the marks to tEDGEs Games. However that may be, the claimant(without making any admissions) does not now pursue these claims since in proceedings in the USA the US Court has now revoked tEDGE14, Games' ownership portion ofthe relevant trade marks. I therefore say no more about this aspect of the case.

Fundamental breach

59. The final contractual issue is whether the breaches of the CTA and the Deed by EIM and Dr Langdell are such as to constitute fundamental breach and, if so, whether the claimant has accepted the repudiation. This is an important issue since the claimant is restricted by the CTA from using the mark tEDGE'S for any purpose other than the publication of computer games magazines and certain ancillary uses.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 11 of 16

60. The test for fundamental breach, approved by Lord Wilberforce in Federal Commerce tv's. Molena Alpha [1979] AC 757 at 778-9 is that expounded by Buckley LJ in Decro-Wally. Practitioners in Marketing [1971] 1 WLR 361 at 380:

"...the... breach must be such as to deprive the injured party of a substantial part of the benefit to which he is entitled under the contract...Will the consequences of the breach be such that it would be unfair to the injured party to hold him to the contract and leave him to his remedy in damages".

61. Further, as Lord Wright said in Ross T Smyth tv4. T D Bailey [1940] 3 All ER 60 at 72,

"I do not say that it is necessary to show that the party alleged to have repudiated should have an actual intention not to fulfil the contract. He may intend in fact to fulfil it, but may be determined to do so only in a manner substantially inconsistent with his obligations and not in any other way."

62. However, although the mere fact that a breach is deliberate will not of itself make it a fundamental breach, deliberateness is a relevant factor. As Lord Wilberforce recognised in Suisse Atlantique Societe d'Armement SA tv-4. NV Ritterdamsche Kolen Centrale [1967] 1 AC 361 at 435,

"a deliberate breach may give rise to a right for the innocent party to refuse further performance because it indicates the other party's attitude towards further performance."'

63. In deciding that the defendants' breaches were fundamental, I take into account the following matters. First, the breaches are of critically important terms of the CTA and the Deed. They are breaches of the terms regulating the ongoing obligations of the parties. Clause 2.4 of the CTA balances the restrictions on the claimant's use of the tEDGE3 logo in areas in which EIM had no interest by protecting the claimant's independent goodwill in the area allocated to it. As Scrutton LJ said in Gibaud tv-4. Great Eastern Rly [1921] 2 KB 426 at 435,

"If you undertake to do a thing in a certain way, or to keep a thing in a certain place, with certain condition protecting it, and have broken the contract by not doing the thing contracted for, or not keeping the article in the place where you have contracted to keep it, you cannot rely on the conditions which were only intended to protect you if you carried out the contract in the way in which you had contracted to do it."

I agree with the claimant that EIM cannot continue to claim the benefit of the CTA while at the same time refusing to comply with its own obligations not to damage the claimant's goodwill. Where, as here, the parties have agreed terms which are to apply to both sides, the defendants' continuing refusal to comply with their side of the bargain is inconsistent with a right to insist on the contract continuing in force. Dr Langdell on behalf of the defendants has made it quite clear before and during this trial that they intend to continue to use their versions of the tEDGEI logo.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 12 of 16

64. Secondly, the defendants' breaches were deliberately calculated to cause confusion. Thirdly, that confusion has necessarily caused substantial damage to the claimant's reputation.

65. There was a great deal of evidence before the court of Dr Langdell's increasing notoriety in the gaming industry. Dr Langdell submitted that his reputation was unjustified and had been orchestrated by the claimant. As to the former, it does not matter for present purposes whether the generally held view about Dr Langdell is justified or not. What matters is that connection with him harms the claimant. As to the latter point, I find it unlikely that all of the very considerable amount of internet condemnation of Dr Langdell has been posted by the claimant. In any event, there was other evidence of notoriety. For example, evidence from some of the claimant's witnesses (in particular Mr Binns and Mr Douglas) which was not seriously challenged. The fact that Dr Langdell pre-empted a petition to remove him from the Board of IGDA by resigning, followed by his expulsion from IGDA on ethical grounds. The fact that serious findings have been made against him and his companies in two sets of litigation in the US. Dr Langdell protested that those findings were made in interim proceedings only, but it is plain that the US court took a robust view of his conduct which will deleteriously affect the claimant's reputation if it is thought that the two businesses are connected.

66. In principle, therefore it is my view that the defendants' breaches of the CTA and the Deed were fundamental breaches within the test propounded by Lord Wilberforce.

67. Termination of a contract by acceptance of repudiation can be effected notwithstanding the prior acquisition of rights unconditionally acquired. Accordingly the assignment to the claimant of goodwill and registered trade mark rights in the name'LEDGE"' and the payments to EIM and Dr Langdell of consideration under the agreements do not prevent termination. Each side is entitled to retain those benefits: see Chitty on Contracts(30 th Edition) at 24-051 and cases therein cited.

68. The only outstanding question is whether the claimant can be said to have unequivocally affirmed the CTA in such a manner as to debar it from terminating it through acceptance of fundamental breach. I have in mind that in August 2009 the claimant brought these proceedings for breach only. The claimant only purported to accept the defendants' repudiatory breaches by amendment to its pleading on 19th August 2010.

69. However this was a case in which the breaches were persisted in by the defendants. In those circumstances the fact that the claimant continued to press for performance should not preclude it from treating itself as discharged from its obligations under the contract. The claimant is not discharging on account of the original repudiation and trying to go back on an election to affirm. It is instead treating the contract as being at an end on account of the continuing repudiation reflected in the other party's behaviour: see Chitty (above) at 24-004 and cases therein cited.

70. I therefore find that the claimant has accepted the defendants' repudiatory breaches and validly terminated the CTA.

Passing off claims

71. I have found that Dr Langdell has tried to appropriate for his own business the goodwill associated with 'LEDGE"' Magazine by statements leading the public to believe that EIM is responsible for'LEDGE"' Magazine or that EIM's games are in some way approved or

http://wvvw.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 13 of 16

authorised by tEDGE%. Magazine. It follows that all the pleaded breaches of the CTA committed within the jurisdiction of the court also comprise acts of passing off as representations likely to lead to confusion.

72. The court will assume damage where the goodwill associated with the product is being used and eroded by the actions of the defendant: see Blazer tri.. Yardley [1992] FSR 501 at 509- 10, BT ivs. One in a Million at 23 and Irvine -tv.44. Talkspurt 1_20021 FSR 60.

73. Further, as I have already found, association with Dr Langdell is likely to cause serious damage to the claimant and tEDGE1 Magazine.

Infringement of copyright

74. I have already said that I accept Mr Williams's evidence that he created the tEDGEs Logo for the claimant and that it has artistic originality. Dr Langdell's case in copyright was put squarely on the basis that he invented the tEDGE's Logo in 1991. I have rejected that claim. Accordingly use by the defendants of all three versions of the tEDGE't logo are in my judgment copies infringing the claimant's copyright.

75. There were infringing acts within the jurisdiction of this court. Merchandise bearing the t EDGES logo was advertised on the Café Press website and sold in the UK pursuant to an order from the claimant. This is an issue of copies of the work to the public within s. 16(1) (b) of the Copyright Designs and Patents Act 1988. In addition Dr Langdell has continued to threaten to infringe copyright through use of the tEDGE's logo. An injunction is thus in my judgment justified and appropriate.

De-registration through non-use

76. The claimant contends that all of EIM's registered trade marks in the UK are invalid for non-use under s. 46(1) (b) ofthe Trade Marks Act 1994, namely:

"that such use has been suspended for an uninterrupted period of five years and there are no proper reasons for non-use".

The burden of proof lies on the proprietor to show that his marks have been used: s.100 of the Act.

77. Use for the purposes of s. 46 must be genuine use. In La Mer Technology Inc tv-4.. Laboratoires Goemar SA [2004] Case C-258/02 at [21]-[22], the European Court of Justice explained that use as follows,

"...use of the mark may in some cases be sufficient to establish genuine use within the meaning of the Directive, even if that use is not quantitatively significant. Even minimal use can therefore be sufficient to qualify as genuine, on condition that it is deemed to be justified, in the economic sector concerned, for the purpose of preserving or creating market share for the goods or services protected by the mark.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 14 of 16

used for the purpose of marketing all the identical products or services of the proprietor or merely some of them, or evidence which the proprietor is able to provide, are among the factors which may be taken into account."

78. This action was started in 2009 but until the end of November 2009 the only evidence produced by Dr Langdell in support of trade mark use in the UK was by way of assertion in his witness statements. He says there that his annual turnover in the UK has never fallen below £100,000 and that he has consistently sold the game "Bobby Bearing" and other games for mobile phones and personal computers throughout the relevant period.

79. A number of points arise. First, there is no suggestion that these games have been advertised or promoted for sale in the UK in the relevant period. The only evidence of anyone finding and purchasing them in the UK is evidence of "trap" orders placed by the claimant for the purposes of the proceedings. Indeed when such orders were placed EIM did not even deliver the games. The only outlets through which any ofthe games could be purchased are Dr Langdell's websites which redirect to amazon.com and another website. On both websites the games are priced in dollars. Amazon shows no instance of feedback from any buyers. There is therefore nothing to show that the marks "preserve or create market share for the goods or services protected by the mark". The mere placing of the mark on the defendants' websites is not genuine use in the absence of active promotion of the website since it is insufficient to establish a market for the goods.

80. Secondly, Dr Langdell seeks to rely on the claimant's use of the mark. He cannot do this for the simple reason that he has no registered marks in relation to computer gaming magazines. They belong to the claimant alone.

81. Thirdly, Dr Langdell seeks to rely on sales of goods by others whom he claims are licensees of EIM. One matter relied upon is 20th Century Fox's movie "The tEDGE1". I would need cogent supporting evidence to convince me that this company is EIM's licensee and no such evidence has been forthcoming. In any event it is doubtful whether the name of the movie fulfils the function of a trade mark in indicating the origin of goods. Another supposed licensee is Datel, which who sells a Wii game controller called "the ;Edges" in the US and over the internet. Again there is no evidence in support of trade mark use in the UK. A third supposed licensee is NIS which sells a Playstation 3 game called "Cross tEdget". Again there is no corroborative evidence and the relevance of this product is dubious in any event since "Cross tEdget" is not one of the registered marks.

82. The defence, drafted at a time when the defendants were legally represented, did not give particulars of use. On 7th October and again on 22nd October 2010 the claimant served a request for further information asking for particulars of all uses relied on in relation to each mark including turnover figures and requesting support from accounts. The request was sent by recorded delivery to Dr Langdell's address for service in Regent Street and also to Dr Langdell's email address. No response was received and Dr Langdell claims he did not receive any such request. By contrast, the documents in Dr Langdell's list on disclosure which might relate to use were not actually provided with the covering letter purporting to enclose them. They were still not provided despite a letter from the claimant's solicitors of 19th October 2010 informing him of the omissions.

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 15 of 16

83. Just before the trial Dr Langdell served a supplemental list of documents. They include alleged sales figures in the UK for a number of the defendants' games. However no underlying records were produced and it was plainly too late to investigate the position in any event. No evidence of payments has ever been offered even though it is claimed that all payments were made through Paypal. No person who is said to have purchased a game has given evidence. It is not explained how sales could have been achieved in the absence of marketing or distributorship. I observe that although the games are offered on Amazon at $24.99 each the sale price on the document is less than $10. No explanation has been given as to why Dr Langdell has disclosed only one order ID from Amazon, although he alleges that he sold 471 copies of the game "Racers".

84. Another document shows sales of Bobby Bearing by a Polish company, Artegence. No evidence is tendered as to how such sales could have been effected in the UK. In any event, the sales shown are inconsistent with the contract that the defendant had with Artegence, which was in evidence. The contract does not require breakdown of sales by country, it requires payment of 30% gross revenue less sales tax and commission and there is no reference in the sales document to the exchange to dollars. The sales document does not in any event identify the number of units alleged to have been sold.

85. One of the documents disclosed by Dr Langdell shortly before trial was an EIM invoice and shipping notice dated 26th November 2010 addressed to Creative Distribution Ltd, a video game distributor in Croydon, for 50 copies of the Racers game. Dr Langdell offered no reason at all for not having disclosed documentation about this sale as soon as it was available. The invoice was a very recent one, bearing the date of only some 10 days before trial. However, under cross-examination, Dr Langdell was unable to recall the name of the person to whom he had dealt at Creative Distribution, whether the communication was by telephone or email, when the transaction had occurred, how Creative Distribution is said to have seen the game or what were the terms and conditions of sale. The invoice is in these circumstances insufficient proof of the sale it purports to record.

86. Importantly, Dr Langdell sought to rely on sales in the UK by his licensee Velocity Micro Inc. Apparently in response to the claimant's Part 18 request on 7th October 2010 Dr Langdell emailed the claimant's solicitors on 30th November 2010 with two emails, comprising an exchange with Randall Copland of Velocity Micro. Dr Langdell claims that he had sent hard copies of these documents to the claimant's solicitors twice by post but they were not received.

87. The first email was an alleged email from Dr Langdell to Mr Copland timed at 10.26 am on 11th June 2010, requesting UK sales figures for Velocity Micro's "tEdgel" and "Garner's tEdgel" products for the years 2006-9. The second email is the alleged response timed at 6.34 am on 14 June 2010, saying simply,

"The figure is way over $1m for each year".

88. The claimant contacted Mr Copland and he made a witness statement dated 3rd December 2010 attaching his correspondence with Dr Langdell. He said that the emails disclosed were not in the form sent and received. He attached the true copies of the emails he sent and received, explains how the disclosed emails appear to have been altered and confirms that the actual UK sales figures for the years in question were nil. Dr Langdell did not disclose the email dated 11th June that he had actually sent, nor did he disclose the email from Randall Copland in

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Future Publishing Ltd v The Edge Interactive Media Inc & Ors [2011] EWHC 1489 (C... Page 16 of 16

unredacted form which he actually received. His explanation for these omissions was totally unconvincing.

89. Having been served with Mr Copland's statement on the following working day Dr Langdell wrote to the claimant's solicitors saying that he had never alleged that Mr Copland's 14th June email was in response to his 11th June email. In cross-examination he insisted that he sent the email to Mr Copland. His explanation was that,

"...we have been let down by Velocity Micro, who said they were selling to the UK."

90. He elaborated on the Velocity Micro position by saying that he found Mr Copland's statement that he sold nothing in the UK market "surprising" as he had done some test purchases from Velocity Micro system during the years in question and had them shipped to his UK office. Again, however, there was no evidence whatsoever of this.

91. Instead, crucially, the claimant called Dr Langdell's bluff and offered to tender Mr Copland for cross-examination on his witness statement. The court explained to Dr Langdell that if he did not accept Mr Copland's evidence he would be well-advised to cross-examine him or else the court would be likely to accept his evidence as unchallenged. Dr Langdell then made the deliberate and informed choice not to take up the offer to explore his case with Mr Copland in cross-examination.

92. In all the above circumstances there is no cogent evidence that the defendants have had any presence in the UK market during the relevant period. I reject the sales figures contended for by Dr Langdell.

93. I would add that Dr Langdell contended that the claimant's allegations of passing off were inconsistent with their claims that he had not used his registered mark. However representations can still be made on websites directed into the UK in the absence ofthe conduct of a genuine business under that mark: see Euromarket Designs Inc tv. Peters I-20011 FSR 20.

Conclusion

94. The claimant therefore succeeds in establishing all claims pursued at trial.

BAILII: Copyright Policy l Disclaimers l Privacy Policy l Feedback l Donate to BAILII URL: http://www.bailikorg/ew/cases/EWHC/Ch/2011/1489.html

http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWHC/Ch/2011/1489.html&quer... 1/17/2017 Exhibit OR4 0-122-14

TRADE MARKS ACT 1994

IN THE MATTER OF APPLICATION NO 2540453 BY THE EDGE INTERACTIVE MEDIA INC. TO REGISTER THE TRADE MARK

EDGE

IN CLASSES 09 AND 41

AND

THE OPPOSITION THERETO UNDER NO 101125 BY FUTURE PUBLISHING LIMITED Pleadings and background

1. The Edge Interactive Media Inc ("EIM") applied to register the trade mark EDGE on 26 February 2010 for:

Class 09: Computer game software and video game software.

Class 41: Entertainment services about interactive computer or video games; providing information and programming regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games via electronic, wireless and computer networks; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; publication of computer game and video game magazines in electronic form via electronic, Internet, wireless and computer networks; providing news, reviews and information about computer games and videogames via electronic distribution methods including email, Internet websites, wireless and computer networks; providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online game administrators, namely, entertainment services in the nature of an online computer gaming club.

2. The application was published for opposition purposes on 30 July 2010. Future Publishing Limited ("Future") opposes the application under sections 5(1), 5(2)(a), 5(2)(b), 5(3), 5(4)(a) and 3(6) of the Trade Marks Act 1994 ("the Act"). Under section 5(1), Future relies upon the following Community Trade Mark ("CTM"):

(i) 7178973

EDGE

Class 09: Pre-recorded audio tapes, video tapes, audio cassettes, video cassettes, CD-ROMs, DVDs, compact discs, and video discs, computer memory cards or sticks, featuring entertainment related to films, video, games and music; video and audio files; computer memory cards or sticks containing pre-recorded electronic publications; computer game software; computer game software and manuals in electronic format sold as a unit; computer video game software; electronic publications; downloadable electronic publications; computer video game software and manuals in electronic format sold as a unit; interactive video game programs; interactive computer game programs; downloadable computer game software via a global computer network and wireless devices; computer game software for use on mobile and cellular phones, handheld computers, computers and other wireless devices; downloadable interactive entertainment software for playing computer games; downloadable interactive entertainment software for playing video games; digitised data; podcasts.

Class 16: Printed matter and publications, namely, magazines, newspapers, journals, pamphlets and booklets, all in the fields of business, entertainment, and education, relating to toys, games, computers, computer software, computer games, video games, board games, hand-held games, interactive media, television,

Page 2 of 63 interactive music, and video; posters; exterior packaging for software, namely, cardboard cartons; printed paperboard inserts for plastic packaging of software; paper bags; plastic bubble packs for packaging; envelopes; and paper pouches for packaging.

Class 28: Video game consoles, both handheld and free standing.

Class 41: Entertainment services, namely, providing news, information and programming (scheduling) regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games, via electronic, wireless and computer networks; publishing of printed matter relating to computer games software and computer hardware,. providing news, information and programming in the field of entertainment relating to motion picture films and science fiction over an electronic network; entertainment services, namely, providing online computer and video games accessed and played via electronic, wireless and computer networks; entertainment services, namely, providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; entertainment services, namely providing a continuing computer game and science fiction show broadcast over television, satellite, audio, and video media; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; entertainment services in the field of film and television, namely, the creation, production and distribution of films, videos, animation, and computer generated images; entertainment, namely providing a continuing show distributed over electronic media, namely global and local area computer networks, entertainment in the nature of competitions in the field of entertainment trivia, fan club services, production and distribution of motion pictures, providing news and information in the field of entertainment relating to motion picture films via global computer networks; organising, arranging and conducting shows, conferences, seminars, awards ceremonies and competitions all relating to computer games software and hardware.

Class 42: Hosting of websites; design research; illustrating services (design); industrial and commercial design services; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; computer services, namely, designing and implementing network websites, electronic commerce software applications and information technology computer network systems for others; website design services; computer aided design of video graphics; creation, editing and updating of website content; information, consultancy and advisory services, all relating to the aforesaid services.

Filed on 22 August 2008; registration procedure completed 20 February 2012.

3. This earlier mark is also relied upon under section 5(2)(a), as well as the following UK registered mark in Class 16:

1562099B

EDGE

Page 3 of 63 Printed matter, magazines, newspapers, periodicals, all relating to computer games, video games, interactive media, interactive television, interactive video, hand-held games and to related devices and goods, all pertaining to entertainment and education; all included in Class 16.

Filed 11 February 1994; registration procedure completed 11 November 1994.

4. Future claims that as the parties' marks are identical and that the goods and services are either identical or highly similar, there is a likelihood of confusion.

5. Both of the earlier marks are relied upon for the purposes of section 5(3) of the Act. In relation to the CTM, a reputation is claimed for magazines all relating to computer games, video games, interactive media, interactive video, hand-held games and to related devices and goods, all pertaining to entertainment and education. In relation to the UK mark, a reputation is claimed for magazines in the field of entertainment relating to computers, computer software, computer games, video games, hand-held games, interactive media; entertainment services, namely, providing news and information regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games, via electronic, wireless and computer networks; publishing of printed matter relating to computer games software and computer hardware.

6. Future claims that the reputation in its marks means that the relevant UK public is likely to believe that the goods and services come from the same or an economically linked undertaking. Confusion as to origin would confer an unfair advantage on EIM which is clearly seeking to ride on the coat tails of Future's reputation. Damage to repute is also claimed if the goods and services were to be of a lower quality than those offered by Future.

7. Under section 5(4)(a), Future relies upon its use of the sign EDGE. It states that EDGE magazine was first launched in the UK in 1993 and was distributed generally throughout the UK through retail outlets, including WH Smiths. The Edge website was launched in May 2000. Future claims that the sign EDGE has been used on printed magazines, provision of entertainment services, namely providing news and information regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games, via electronic, wireless and computer networks; publishing of printed matter relating to computer games software and computer hardware.

8. Future claims that use of EIM's mark would amount to passing off because of the reputation and goodwill enjoyed by Future in the sign EDGE.

9. In relation to its section 3(6) ground, Future refers to its reputation and goodwill and also claims the following:

Page 4 of 63 12, The Applicant has been aware of the Opponent and their rights in the contested mark for many years. The earlier Registration was assigned for valuable consideration to the Opponent by the Applicant under an agreement dated 15 October 2004.

13. The Applicant is at present a Defendant in High Court proceedings brought by the Opponent against the Applicant for copyright infringement, passing off and breach of contract. Those proceedings commenced before the date of filing of the opposed Application.

14. The Applicant is also the proprietor of UK Trade Mark Registrations numbers 1562099A EDGE,2147008A EDGE 3D,2147013A THE EDGE,2147022A MAGIC EDGE,2147035A EDGE NET,2147040A GAMER'S EDGE, all of which are currently the subject of revocation actions (numbers 83419, 83420, 83421, 83422, 83423, 83424)for non-use. Those revocation actions were all filed prior to the filing date of the opposed Application.

15. The Applicant, the Applicant's CEO Dr. Tim Langdell and companies connected with the Applicant are involved in disputes regarding the EDGE Trade Mark with a number of parties around the world. In one of those disputes in the US, namely Edge Games, Inc v Electronic Arts, Inc dated 1 October 2010, the US Judge, William Alsop J, indicated his belief that there was compelling evidence that the EDGE marks of the company related to the Applicant were fraudulently registered.

16. In view of points 12-15 above, it is clear that prior to the filing of the opposed Application, the Applicant was fully aware of the Opponent and their rights in the mark EDGE, having already profited from the sale of the earlier Registration to the Opponent, and the filing of the opposed Application amounts to a calculated act intended to profit the Applicant and/or disrupt the business of the Opponent. Accordingly, the Opponent submits that the Applicant is seeking to acquire registration of the mark ofthe opposed Application for purposes other than to trade in accordance with honest practices and that his conduct in filing the Application falls short of the standards of acceptable commercial behaviour. Accordingly, the Opponent requests that registration of the mark of the opposed Application be refused under the provisions of section 3(6) on the grounds that the Application has been made in bad faith.

The High Court proceedings referred to in these pleadings resulted in a decision by Mrs Justice Proudman, handed down on 13 June 2011 1.

10. EIM filed a defence and counterstatement out of time. Following a case management conference on 15 February 2012, the Registrar's Hearing Officer, Mr Edward Smith, allowed the defence to stand, as per the decision dated 23 February 2012, shown at Annex 1 to this decision.

11. I mention at this point that all evidence and correspondence in these proceedings, on behalf of EIM, has come from its Chief Executive Officer, Dr Tim Langdell. It is apparent from the documentation that he is the controlling mind of

Future Publishing Limited v. The Edge Interactive Media Inc, Edge Games Inc and Dr Timothy Langdell[2011] EWHC 1489 (Ch).

Page 5 of 63 EIM. They are, effectively, one and the same. The counterstatement denies all grounds and is shown in full at Annex 2 to this decision. EIM puts Future to proof of use of its earlier mark 1562099B.

12. Following a protracted set of proceedings, I heard oral arguments on the substantive grounds at a hearing on Monday 17 February 2014. Mr Jim Pearson, of Abel & lmray, represented Future via telephone conference. Dr Langdell represented EIM via telephone conference from the US. Dr Langdell expressed reservations as to whether I had read or taken proper notice of all the evidence filed based upon what he said were his experiences in the High Court. I record here that I have indeed read all the evidence and papers filed prior to making this decision.

Preliminary issues dealt with at the hearing

13. A week prior to the hearing, Dr Langdell made a request to cross-examine two of Future's witnesses, Simon Parkin and Dean Roskell. In a letter dated 11 February 2014, I said:

"The request is provisionally refused at this stage. Dr Langdell was allowed to file further written evidence to challenge the evidence and took that opportunity, so he has had the chance to challenge the evidence from Messrs Parkin and Roskell. Furthermore, the proximity of the request to the date of the hearing suggests that it is a delaying tactic of the kind noted by Mr Geoffrey Hobbs QC in his recent decision dated 8 January 2014, BL 0/043/14.

However, at Monday's hearing, as a preliminary point, Dr Langdell may renew his application to cross-examine if he still wishes to do so. It will be clear from this direction that Monday's main hearing will go ahead regardless of the outcome of the request for cross-examination. If I allow the request, I will agree to a further hearing in principle, but dependent on whether the evidence in question is necessary to reach a final decision on the merits of the substantive issues. I direct, under rule 62(3) of the Trade Mark Rules 2008, that all of this is on the condition a) that Dr Langdell is willing to attend a further hearing in person for the purposes of cross examination; and b) that he has complied with Tribunal Practice Notice 3/2010; in particular, he must:

• Give reasons why cross-examination of each witness is requested; • Set out the specific issues to which cross-examination would, if allowed, be directed; • Explain the relevance of those issues to the matters to be decided; • Give an estimate of the time any cross-examination is expected to take; • Copy the request to the opponent.

I will not consider any request at the hearing on Monday unless confirmation of (a) and information for (b) has been sent to the Tribunal and copied to the opponent by 12 noon UK time on Thursday 13 February 2014. In relation to point (a), Dr Langdell is required to conduct cross-examination on UK soil owing to jurisdictional issues in conducting a hearing from overseas.

Page 6 of 63 However, if he were to obtain agreement from US authorities, the position may be reconsidered. In the event that Dr Langdell renews his request for cross-examination, that I decide that cross-examination may take place and that the evidence is necessary to decide the substantive issues, Dr Langdell will be allowed one month to obtain the necessary agreement from the US authorities, should he wish to pursue this option. He must address this in his response by 12 noon Thursday 13 February either by confirming that he is willing to attend any further hearing in person in the UK for cross-examination, or by indicating that he will obtain agreement from the US authorities to conduct it from the US."

It should by understood that cross-examination is at the discretion of the Registrar, as per rule 64 of the Trade Mark Rules 2008. The registrar has to be satisfied that it is appropriate in all the circumstances."

14. Nothing was received from Dr Langdell by the deadline of 12 noon on Thursday 13 February 2014. An email was received from him later that day, at 16.49 UK time, after Mr Pearson had timeously submitted his skeleton argument for the hearing (the skeleton argument being due by 2pm). Some reasons were given for cross examination and Dr Langdell said that he would employ UK Counsel to deal with any cross examination. He apologised for the late response, but gave no real reasons for being late. Mr Roskell lives in Canada. His witness statement, to which there were no exhibits, effectively stated that he had brought together information from bloggers about 'Edge' disputes involving Dr Langdell and one or more of his companies. Some of the bloggers' comments, which were exhibited to Simon Parkin's statement, were anonymous. I took the view that cross-examination of Mr Roskell would serve no useful purpose and refused the request. In relation to Mr Parkin, I reserved a final decision on whether a further hearing will be needed for cross-examination, dependent on whether I find that I need to rely on Mr Parkin's evidence in reaching a decision on the substantive grounds. If I do not, then calling a further hearing would be disproportionate to the benefits.

15. In an email dated 7 February 2014, Future also raised issues regarding missing exhibits H, I, J and K to Dr Langdell's witness statement of 20 December 2013. Dr Langdell had made two attempts to send these exhibits by email to the Tribunal on 20 December 2013; the second attempt was successful. The email indicated that the exhibits were copied to various individuals at Abel & Imray; however, in an email dated 12 February 2014, Abel & Innray stated that they had checked the email records of the individuals and there was no trade of such emails having been received. In my letter of 11 February 2014, I said that the Tribunal would forward copies of the exhibits (which was done on 12 February 2014) so as not to compromise the hearing date. If Future considered that it had had insufficient time to consider the exhibits, I would allow a period of time for it to make written submissions about the content, if it wished. Mr Pearson said that he wanted to keep things as simple as possible and that he would deal with the exhibits at the hearing, if necessary to do so, and that he would not require further time to make written submissions.

16. Attached to Mr Pearson's skeleton argument (filed on Thursday 13 February 2014) was a witness statement made by Mr Pearson in relation to two emails filed as

Page 7 of 63 exhibit A to Dr Langdell's witness statement of 20 December 2013. Mr Pearson asked for admittance of his witness statement because he had discovered, in preparing for the hearing, that one of the emails was fabricated and the other was doctored. On the Friday (14 February 2014), Dr Langdell responded by electing, unconditionally, to remove the exhibits. Mr Pearson asked that I nevertheless admit his evidence because it was relevant to the weight of all the evidence (in the sense that it casts doubt on probity of all of Dr Langdell's evidence). Dr Langdell said that he must have a right of reply if the evidence was admitted.

17. Seeing as the two exhibits had been withdrawn, and to keep matters as simple as possible in what has been a procedurally very protracted set of proceedings, I refused to admit Mr Pearson's evidence.

Other proceedings between the parties

18. Throughout the instant proceedings, Dr Langdell has repeatedly prayed in aid his purported appeals against the decisions of Mrs Justice Proudman and of the Registrar's Hearing Officer Mr David Landau, reference BL 0/283/12. The latter appeal has recently been the subject of a written decision by Mr Geoffrey Hobbs QC, sitting as the appointed person, reference BL 0/043/14, in which he made an order for security for costs against EIM, of £12,500. The substantive appeal has not yet been heard, but it concerns two trade mark registrations belonging to Future which are not relied upon in these proceedings and which Dr Langdell sought to assign to EIM. Mr Landau rejected the assignments as falsely made. Dr Langdell repeatedly submitted that these proceedings should be stayed pending the outcome of that appeal because it concerns an agreement, called the CTA, between the parties, made in 2004. The same agreement was partly the subject of Proudman J's judgment in 2011, along with the successful revocation actions on the grounds of non-use filed by Future against all of EIM's UK trade mark registrations. Dr Langdell sought to have the current proceedings stayed pending the outcome of a purported appeal to the Court of Appeal. It transpired that the grounds of appeal related only to the revocations. In a decision dated 7 February 20122, Lewison LJ refused EIM permission to appeal Proudman J's decision. Dr Langdell sought to persuade the Tribunal that he would be successful in reversing Lewison LJ and that the issues were relevant. However, as the appeal related solely to the decision in the revocation proceedings, this was clearly wrong. The stay requests were refused.

19. I also refused to allow the proceedings to be suspended whilst EIM/Dr Langdell attempted to assign and then attack Future's registered CTM at the Office for Harmonisation of the Internal Market ("OHIM"). Dr Langdell's letter dated 24 April 2012 claimed that he had the power to withdraw the instant opposition and that the majority of CTM 7178973 had been assigned to EIM from Future, by virtue of claimed power of attorney. The Tribunal replied, attaching copies of correspondence from OHIM which rejected the validity of the said assignment. All of these actions were rejected by OHIM and there were, therefore, no grounds for altering the status of the instant opposition proceedings.

2 Case number A3/2011/2022, exhibited at JRC-5 to Joanna Clayton's first witness statement. Page 8 of 63 20. In a letter dated 8 February 2013, following a case management conference held the previous day, I said (footnotes included):

"2. In March 2012, I separated these proceedings under rule 62(1)(h) of the Trade Mark Rules 2008 ("the Rules"). I took this step because the opponent has a section 5(1)15(2)(a)3 ground based on a registered CTM which is not subject to proof of use whilst the other grounds are a section 5(2)(a) ground based on a registered UK mark which is subject to proof of its use, and grounds under sections 5(3), 5(4)(a) and 3(6) of the Act. These grounds require evidence, whilst the CTM ground did not. Both parties' marks are EDGE, so there is no doubt that they are identical. The evidence rounds started smoothly enough; the opponent filed brief submissions and the applicant filed evidence, in July 2012, under cover of an affidavit, as directed by me, because the High Court had found Dr Langdell's evidence, in another action between the parties, to have been forged. However, it then transpired that the applicant had not sent the evidence to the opponent, which meant that it had not been filed (rule 64(6)(b)). Added to that, I understand that the applicant's evidence also contained privileged material. Delays then ensued whilst this procedural hiccup was addressed, followed by a cross-application for security for costs. The security for costs issue was set down for a hearing before me on 8 November 2012 (setting a date itself was not without its issues). However, on 6 November 2012, Dr Langdell withdrew his application for security for costs and withdrew his request for a hearing to resist the Tribunal's decision to award the opponent security4 for £3,500, which was subsequently paid to the IPO.

3. In parallel with the UK proceedings, the applicant has, since March 2012, directed a series of attacks, via several different firms of trade mark attorneys, at the opponent's CTM. The applicant filed two assignment (recordal) applications (firstly via Ladas and Parry and then via Forresters) to assign the opponent's mark to itself. OHIM refused the assignment applications in June 2012. In August 2012, via Keltie, the applicant filed an application to cancel the opponent's CTM. Keltie withdrew its representation on 2 November 2012. On 22 November 2012, Mathys and Squire filed an application under Article 18 to have the CTM compulsorily transferred to the applicant and, the following day, withdrew the application for cancellation which Keltie had filed. During this period, Dr Langdell, through his claim to have power of attorney and that the applicant is, in fact, the owner of the opponent's earlier CTM, repeatedly requested that the Tribunal withdraw the opposition on his authority.

4. Unsurprisingly, Dr Langdell has pressed for a suspension of these proceedings, whilst the opponent has pressed for them to be decided from the papers on the basis of the section 5(1)/5(2)(a) CTM ground. In several letters, Dr Langdell variously referred to it being usual for the registrar to grant a suspension, that it is the applicant's right to be granted a suspension and that

3 Trade Marks Act 1994.

4 Mr Pearson referred at the CMC to the (approx.) £400,000 costs which the applicant still owes to the opponent from the court actions. Page 9 of 63 suspensions in such a circumstance are automatic. None of that is correct. As I pointed out at the CMC, suspensions and stays are at the registrar's discretion (rule 62(1)(f)). It is therefore for me to decide whether a suspension will be allowed. Dr Langdell's letter of 5 February 2013, just prior to the CMC, said:

"Even in the very unlikely event that the OHIM do not grant our Article 18 assignment, Edge would just re-file its invalidity application and have the CTM removed from the EU register. In either event, the outcome of the OHIM issues governs the outcome of the instant opposition proceedings."

5. There are two points here. The first is that it is of serious concern that Dr Langdell contemplates re-filing the cancellation action if the latest attack on the CTM is unsuccessful. The pattern of behaviour since March 2012 and this statement gives rise to a question as to whether there is harassment and abuse of process. The second point is that even if the applicant were to be successful in its latest Article 18 application, that would not dispose of the UK proceedings because there is another section 5(2)(a) ground, and also grounds under sections 5(3), 5(4)(a) and 3(6) of the Act. If the opponent were to be unsuccessful under its CTM ground, the focus would switch to the other grounds.

6. A further point emerged at the CMC. Dr Langdell said that, in the event that the applicant was successful in its Article 18 application and that the opponent's CTM was transferred to the applicant, which he considered undoubtedly to be the result, he nevertheless fully expected the opponent to retain a small part of the class 16 goods covered by the CTM. When I asked him what that small part was, he said magazines related to computer games. This is important because the CTM is supporting a section 5(2)(a) ground (in addition to section 5(1)). Section 5(2)(a) is concerned with identical marks and similar goods. The applicant has applied in classes 9 and 41 for:

Computer game software and video game software.

Entertainment services about interactive computer or video games; providing information and programming regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games via electronic, wireless and computer networks; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; publication of computer game and video game magazines in electronic form via electronic, Internet, wireless and computer networks; providing news, reviews and information about computer games and videogames via electronic distribution methods including email, Internet websites, wireless and computer networks; providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online

Page 10 of 63 game administrators, namely, entertainment services in the nature of an online computer gaming club.

7. Even if the applicant were to be successful in getting the CTM transferred to itself, if Dr Langdell's assumption that the opponent would be left with computer game magazines is correct, I would still have to assess the likelihood of confusion between the application and the opponent's CTM, registered for these limited goods. This is an argument against suspending the proceedings.

8. Dr Langdell submitted that it would be less costly to the parties and the Tribunal for the proceedings to be suspended. The first point to make here is that the Tribunal has a duty to ensure legal certainty. Dr Langdell said that there would be no prejudice to third parties, but then later said that several other entities were awaiting the outcome of the applicant's attack on the opponent's CTM. The second point to make is that if the applicant were to be successful at OHIM, the other grounds would need to be run (in addition to whatever was left of the opponent's CTM). These grounds are evidential. The section 5(2)(a), 5(3) and 5(4)(a) grounds require the opponent to file evidence of genuine use, reputation and goodwill. It is already two and a half years after the date of publication (in relation to the genuine use evidential burden) and three years after the date of application (in relation to the reputation and goodwill evidential burden). Thirdly, there is also an ironic potential prejudice to the opponent if I decide to proceed to determine the substantive merit of the opposition based solely upon the CTM (5(1)/5(2)(a)). If I found for the opponent and the applicant were to appeal my decision (based on the history of previous disputes an appeal would appear to be more than likely) and my decision to press ahead rather than suspend was to be reversed on appeal, the other grounds would then need to be decided. Such a course of action could potentially put the opponent in a worse evidential position, the further away in time the proceedings travel from the relevant dates. Mr Pearson said that this was a risk that the opponent was prepared to take.

9. I have looked at the Article 18 application filed by Mathys and Squire at OHIM and it is not clear to me how much or how little is being attacked by the applicant. Notwithstanding Dr Langdell's admission that the opponent is likely to be left with the limited class 16 goods, I am not content to proceed to determination of these proceedings solely on the basis of the CTM, which is under attack, with the scope of the attack being unclear. In view of this, and taking into account the potential evidential prejudice to the opponent, I have decided that all the grounds now will run. There will be no suspension to await the outcome of the Article 18 application. I realise that this will increase the opponent's costs. The opponent has already asked for an award above the scale. It is the applicant's prevarication and repeated changes of direction at OHIM which has led to the necessity for the other grounds to run. There will be costs implications to the applicant at the conclusion of the proceedings.

10. Dr Langdell submitted that evidence would run to "hundreds of pages". There is no reason why it should. Dr Langdell informed me that evidence in

Page 11 of 63 proceedings between the parties in the High Court had run to hundreds of pages, on both sides. This is part of the problem in the instant proceedings. The registrar's Tribunal is designed to give access to low cost, swift and efficient resolution of trade mark disputes, for all types of parties. As I said yesterday, and as will be clear from this letter, there will be no further over- loading of these proceedings with irrelevance, nit-picking and distractions away from the main event."

21. I record here that, based on what had taken place to date and current projected expenses, the Tribunal made a security for costs order against EIM for £3,500 on 14 November 2012. This was paid. Since that date, Mr Hobbs has said in his decision BL 0/043/14:

"Events as they have unfolded since EIM filed its Notice of Appeal on 21 August 2012 make it abundantly clear that EIM and Dr. Langdell are not willing to comply with costs orders made against them for the benefit of Future by courts of competent jurisdiction in the United Kingdom. On the contrary, they are determined to make it as difficult and expensive as they can for Future to enforce orders for costs that have been made in its favour. That is amply borne out by: (1) their failure to comply with Proudman J's order of 7th July 2011 in High Court claim number HC 09 CO22265 requiring them to pay £340,000 to Future on account of costs; (2) their failure to comply with Lewison LJ's order of 7th February 2012 requiring them to pay £36,500 to Future in respect of its costs of their unsuccessful application for permission to appeal and a stay of execution in relation to Proudman J's order of 7th July 2011; (3) their unwillingness to abide by the order for summary judgment made against them on 20 November 2013 by the Honorable Justice Goldstein of the Los Angeles Superior Court, providing for enforcement of Proudman J's order for payment of £340,000 on account of costs; and, (4) their application of 19th December 2013, returnable before the Los Angeles Superior Court on 29th January 2014, seeking reconsideration of the order for summary judgment made by the Honorable Justice Goldstein on 20th November 2013, or in the alternative, for a stay of enforcement of her order for summary judgment."

Format of Evidence

22. I made a direction early in the evidence rounds (on 27 March 2012) that if EIM wished to file evidence, this must be in the form of an affidavit (under Rule 62(2)(b) of the Trade Mark Rules 2008). I made this direction as a consequence of the Order of Mrs Justice Proudman, [2011] EWHC 1489 (Ch), in which she stated, at paragraph 9:

"Contempt of Court

The Claimant [Future Publishing Limited] has permission to bring proceedings against the Third Defendant [Dr Timothy Langdell] for contempt of court by reason of the Third Defendant's false statements in his witness statements dated 17 September 2010 and 29 November 2010."

Page 12 of 63 23. In considering EIM/Dr Langdell's request for leave to appeal Proudman J's judgment, Lewison LJ said:

"2. In the course of her judgment the judge found that Dr Langdell had lied in evidence and had concocted document and materials in support of his and his company's case. In particular he had concocted a computer disc and when that was exposed as a concoction he concocted another to cover his tracks."

24. Mr Hobbs, in the decision already referred to, said:

"It can be seen from the judgment delivered by Proudman J under reference [2011] EWHC 1489 (Ch.) on 13th June 2011 and from the brief assessment of it given by Lewison LJ in his judgment of 7th February 2012, that Dr. Langdell has been prepared to resort to forgery and perjury in an effort to thwart enforcement by Future of its legal rights against him and his company EIM."

25. Mr Landau, for the Registrar, found EIM's/Dr Langdell's purported assignments of Future's registrations 2552136 and 2552147 to have been fabricated.

26. EIM's evidence in these proceedings, from Dr Langdell, has been filed in affidavit form.

27. Much of EIM's/Dr Langdell's evidence and argument is based upon the agreement, known as the Concurrent Trading Agreement ("CTA"), between the parties, dated 15 October 2004. At the date on which Future opposed the application (28 October 2010), the agreement had already been terminated as of 20 August 2010, as per Proudman J's order dated 7 July 2011, paragraph 6, and paragraphs 59 to 70 of her decision handed down on 13 June 2011. The decision of the registrar's hearing officer, Mr Smith, referred to above and shown at Annexe 1 to this decision, records that he found that Future was not estopped from opposing EIM's application. Leave to appeal that interim decision prior to any appeal against this substantive decision was refused.

28. As can be seen from my letter of 8 February 2013, there is a ground which does not depend upon evidence: section 5(1) of the Act. The ground under Section 5(2)(a) is based upon a mark which had been registered for more than 5 years at the date on which EIM's application was published, so is subject to the proof of use provisions5. EIM put Future to use. Evidence was filed by Future to prove use, and in relation to its section 5(3), 5(4)(a) and 3(6) grounds. I consider it proportionate firstly to deal with the grounds under section 5(1) and 5(2)(a), since these are the more straightforward grounds. The evidence summary which follows relates to Future's use. I deal with EIM's evidence of use later in the decision. Future is required to establish that it made genuine use of its mark 1562099B in the five year period ending on the date on which EIM's application was published; i.e. from 31 July 2005 to 30 July 2010.

5 See section 6A of the Act (added by virtue of the Trade Marks (Proof of Use, etc.) Regulations) 2004 th (SI 2004/946) which came into force on 5 May 2004.

Page 13 of 63 Future's evidence of use

First witness statement of Joanna Clayton, 5 April 2013

29. Ms Clayton is Future's Head of Legal, having previously been Future's Senior Commercial Solicitor. The facts in her witness statement come from her personal knowledge or are taken from Future's records.

30. The first edition of EDGE magazine was published in October 1993. Ms Clayton states that, since that date, an edition of Edge has been published and made available to the public every four weeks, via retail outlets throughout the UK and Northern Ireland, including WH Smith. Ms Clayton exhibits back copies of Edge magazine as exhibit JRC-7 from March 2005, February 2006, February 2007, January 2008, January 2009 and January 2010. The cover price was £4, rising to £4.50 from 2007.

31. Circulation figures are given in a table, shown below. I note that these are combined figures for the UK and the Republic of Ireland:

Total Average Net circulation per issue in UK and Republic of Ireland

Release Date Period Edge Magazine Circulation per issue February 11 1 Jan 10 to 31 Dec 10 20,563 February 10 1 Jan 09 to 31 Dec 09 21,101 February 09 1 July 08 to 31 Dec 08 22,404 August 08 1 Jan 08 to 30 June 08 23,928 February 08 1 July to 31 Dec 07 24,993 August 07 1 Jan to 30 June 07 23,692 February 07 1 July to 31 Dec 06 27,507 August 06 1 Jan to 30 June 06 26,646 July 06 1 July to 31 Dec 05 26,662 August 05 1 Jan to 30 June 05 26,509 February 05 1 July to 31 Dec 04 25,283 July 04 1 Jan to 30 June 04 24,197

32. Ms Clayton puts these figures in some trade context by comparing them with the circulation figures for GamesTM magazine, which won the Games Magazine of the Year award at the Games Media Awards in 2007:

Page 14 of 63 Total Average Net circulation per issue in UK and Republic of Ireland

Release Date Period GamesTM Magazine (competitor) Circulation per issue February 11 1 Jan 10 to 31 Dec 10 14,701 February 10 1 Jan 09 to 31 Dec 09 16,656 February 09 1 Jan 08 to 31 Dec 08 18,498 August 08 1 Jan 07 to 31 Dec 07 19,400 February 07 1 Jan 06 to 31 Dec 06 18,367 April 06 1 Jan 05 to 31 Dec 05 20,257 February 05 1 Jan 04 to 31 Dec 04 18,183

33. Ms Clayton states that annual turnover was at least as high as the following figures:

2005 £1,391,000 2006 £1,381,000 2007 £1,684,000 2008 £1,611,000 2009 £1,300,000 2010 £544,000 (first half)

34. The amount spent on advertising was as follows:

2005 £45,000 2006 £62,000 2007 £86,000 2008 £90,000 2009 £71,000 2010 £54,000 (first half)

35. Ms Clayton states that, in the financial year 2008/2009, examples of the advertising and promotional activities carried out include distribution of free copies of Edge magazine at industry events, display and on-line advertising, promotional gifts for subscription sales, Edge magazine posters for gaming events, and the Edge magazine website.

36. Exhibit JRC-9 includes advertisements for Edge magazine which appeared in the May 2006 and January 2007 editions of PC GAMER magazine, and the December 2007 edition of GAMES MASTER magazine. These magazines were sold throughout the UK.

37. The Edge website edge-online.com was launched in May 2000; prints from the Internet Archive are shown in exhibit JRC-10 from September 2005, September 2006, September 2007, July 2008 and April 2009. The website carries news,

Page 15 of 63 reviews and features relating to interactive computer and video games and game software. Data relating to website visits is as follows:

Month Page Views Visits Uniques Jul-08 718,162 263,470 164,862 Aug-08 1,056,647 453,468 278,461 Sep-08 1,344,975 487,346 295,661 Oct-08 1,406,570 570,632 356,576 Nov-08 1,158,178 507,634 324,700 Dec-08 1,467,190 582,179 401,077 Jan-09 1,703,734 718,531 503,707 Feb-09 1,554,350 726,614 511,467 Mar-09 1,783,877 651,946 409,487 Apr-09 1,194,325 611,593 407,429 May-09 1,055,701 510,929 324,665 Jun-09 1,266,138 637,153 423,122 Jul-09 978,886 487,036 306,006 Aug-09 934,598 464,865 288,570 Sep-09 952,269 459,411 278,583 Oct-09 1,139,119 523,585 319,654

Nov-09 1,078,889 511,547 329,329 Dec-09 1,026,093 500,363 333,260 Jan-10 1,267,214 603,726 395,887 Feb-10 1,030,933 493,041 307,793

38. Ms Clayton states that in the more recent years, about a quarter of the visits and views were from the UK. Ms Clayton states that, in March 2009, Edge magazine celebrated its 200th issue by issuing the magazine in a selection of 200 different covers, with a print run of 200 editions per cover, which she states created considerable interest. Ms Clayton exhibits at JRC-11 copies of news articles, from 6 March 2009, from Campaign magazine online, Computer and Video Games magazine online and from a blog called Chewing Pixels, which the content in exhibit JRC-12 shows is written by a journalist called Simon Parkin, who is a columnist and critic on games for The Guardian newspaper.

39. Ms Clayton states that Edge magazine and the Edge website are regularly cited on gamers' blogs and websites; an example is shown in exhibit JRC-12 from the Chewing Pixels blog, on which Edge magazine is described as "The British videogames bible Edge magazine". A print out from the blog Eurogamer.net includes numerous postings referring to their writers' long-standing reliance on Edge magazine: "I still use Edge as the go to for reviews", "they certainly have years of kudos they can leverage to get great access to otherwise secretive corners of the industry" and "I sub to Edge and GamesTM, they're the only magazines I trust really". These are after the relevant date (dating from 2013), but they all refer to having been customers of Edge for years, e.g. "I've been buying Edge since the ... 3rd issue, I think it was? I remember the Rise of the robots on the cover. I still think

Page 16 of 63 it's the best magazine around" and "The latest Edge just dropped through my letterbox. Hard to believe I've been buying and hoarding it since 1993."

40. Ms Clayton states that Edge magazine has received numerous awards and widespread industry recognition, including:

(I) InDin: Magazine of the Year in 1993, 1997 and 2002; (ii) MCV Industry Excellence Awards: Magazine of the Year 2006 (iii) Games Media Awards: Games Magazine of the Year 2008 and 2009

41. News and press articles are included within exhibit JRC-13. One, from intentmedia.co.uk dated 8 April 2006, refers to the MCV Industry Excellence Awards 2006, in which the £2 billion UK games industry applauds the very best in the business:

"And Future's Edge Magazine finally threw off its 'ever the bridesmaid, never the bride' tag by comfortably winning Magazine Team of the year following many a fine edition."

Decision

Section 5(1)

42. Section 5(1) of the Act states:

"5. - (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

43. Dr Langdell has not denied that both parties' marks are the identical mark EDGE for identical goods and services. His defence is based upon the CTA agreement compelling Future to assign the CTM to EIM. However, for the sake of completeness, I will assess the 5(1) ground. As per the judgment of the General Court ("GC") in Gerard Meric v Office for Harmonisation in the Internal Market (OHIM) Case T-133/05, goods and services can be considered as identical when the goods and services of the earlier mark are included in a more general category, included in the specification of the trade mark application. Vice versa, if the goods or services of the application are included in a more general category included in the specification of the earlier mark, they must be identical. The respective specifications are:

Future's CTM 7178973 EIM's application

Class 09: Pre-recorded audio tapes, Class 09: Computer game software video tapes, audio cassettes, video and video game software. cassettes, CD-ROMs, DVDs, compact discs, and video discs, computer memory Class 41: Entertainment services cards or sticks, featuring entertainment about interactive computer or video related to films, video, games and music; games; providing information and

Page 17 of 63 video and audio files; computer memory programming regarding interactive cards or sticks containing pre-recorded computer game software, interactive electronic publications; computer game video game software and interactive software; computer game software and computer games and interactive video manuals in electronic format sold as a games via electronic, wireless and unit; computer video game software; computer networks; providing online electronic publications; downloadable computer and video games accessed electronic publications; computer video and played via electronic, wireless game software and manuals in electronic and computer networks; providing format sold as a unit; interactive video computer and video games accessed game programs; interactive computer and played via mobile and cellular game programs; downloadable computer phones and other wireless devices; game software via a global computer publication of computer game and network and wireless devices; computer video game magazines in electronic game software for use on mobile and form via electronic, Internet, wireless cellular phones, handheld computers, and computer networks; providing computers and other wireless devices; news, reviews and information about downloadable interactive entertainment computer games and videogames via software for playing computer games; electronic distribution methods downloadable interactive entertainment including email, Internet websites, software for playing video games; wireless and computer networks; digitised data; podcasts. providing organizations for online game administrators, namely, Class 16: Printed matter and entertainment services in the nature publications, namely, magazines, of an online computer gaming club; newspapers,journals, pamphlets and providing public forums for online booklets, all in the fields of business, game administrators, namely, entertainment, and education, relating to entertainment services in the nature toys, games, computers, computer of an online computer gaming club. software, computer games, video games, board games, hand-held games, interactive media, television, interactive music, and video; posters; exterior packaging for software, namely, cardboard cartons; printed paperboard inserts for plastic packaging of software; paper bags; plastic bubble packs for packaging; envelopes; and paper pouches for packaging.

Class 28: Video game consoles, both handheld and free standing.

Page 18 of 63 via electronic, wireless and computer networks; publishing of printed matter relating to computer games software and computer hardware; providing news, information and programming in the field of entertainment relating to motion picture films and science fiction over an electronic network; entertainment services, namely, providing online computer and video games accessed and played via electronic, wireless and computer networks; entertainment services, namely, providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; entertainment services, namely providing a continuing computer game and science fiction show broadcast over television, satellite, audio, and video media; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia materials; entertainment services in the field of film and television, namely, the creation, production and distribution of films, videos, animation, and computer generated images; entertainment, namely providing a continuing show distributed over electronic media, namely global and local area computer networks, entertainment in the nature of competitions in the field of entertainment trivia, fan club services, production and distribution of motion pictures, providing news and information in the field of entertainment relating to motion picture films via global computer networks; organising, arranging and conducting shows, conferences, seminars, awards ceremonies and competitions all relating to computer games software and hardware.

Class 42: Hosting of websites; design research; illustrating services (design); industrial and commercial design services; design, drawing and

Page 19 of 63 commissioned writing, all for the compilation of web pages on the Internet; computer services, namely, designing and implementing network websites, electronic commerce software applications and information technology computer network systems for others; website design services; computer aided design of video graphics; creation, editing and updating of website content; information, consultancy and advisory services, all relating to the aforesaid services.

44. I have emboldened the parts of the specifications which are identical:

(i) Future's computer game software is identical to EIM's computer game software;

(ii) Future's software for playing video games is identical to EIM's video game software;

(iii) Future's entertainment services, namely, providing news, information and programming (scheduling) regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games, via electronic, wireless and computer networks is identical to EIM's entertainment services about interactive computer or video games; providing information and programming regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games via electronic, wireless and computer networks;

(iv) Future's entertainment services, namely, providing online computer and video games accessed and played via electronic, wireless and computer networks is identical to EIM's providing online computer and video games accessed and played via electronic, wireless and computer networks;

(v) Future's entertainment services, namely, providing computer and video games accessed and played via mobile and cellular phones and other wireless devices is identical to EIM's providing computer and video games accessed and played via mobile and cellular phones and other wireless devices;

(vi) Future's publishing of printed matter relating to computer games software and computer hardware is identical to EIM's phones and other wireless devices; publication of computer game and video game magazines in electronic form via electronic, Internet, wireless and computer networks;

(vii) Future's entertainment services, namely, providing news, information and programming (scheduling) regarding interactive computer game software,

Page 20 of 63 interactive video game software and interactive computer games and interactive video games, via electronic, wireless and computer networks are identical to EIM's providing news, reviews and information about computer games and videogames via electronic distribution methods including email, Internet websites, wireless and computer networks;

(viii) Future's entertainment services, namely, providing online computer and video games accessed and played via electronic, wireless and computer networks; organising, arranging and conducting shows, conferences, seminars, awards ceremonies and competitions all relating to computer games software and hardware; fan club services appear to cover EIM's providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online game administrators, namely, entertainment services in the nature of an online computer gaming club and are identical.

With the possible exception of point (viii), all of EIM's goods and services are 'a dead ringer' for Future's goods and services in classes 9 and 41. The opposition succeeds under section 5(1) of the Act in relation to the whole of EIM's application. However, and despite EIM's lack of denial that the services are identical, in case I am wrong about point (viii) in relation to section 5(1), I will look at it again in the context of section 5(2)(a) of the Act.

Future's proof of use

45. In the High Court decision cited above, Proudman J said this about Future's Edge magazine:

"3. The claimant is a well-known publisher of magazines and it sells approximately 3.6m magazines per month. For present purposes its speciality is computer gaming magazines, in particular the magazine EDGE, which has been distributed in the United Kingdom since 1993. EDGE magazine has a large circulation. Its website is visited by over 400,000 visitors per month. Many jobs in the computer gaming industry are advertised in its pages, it has many corporate subscribers and it has won a number of awards over the years, including Games Magazine of the Year 2008. It is plainly a substantial enterprise engendering a substantial following and substantial respect in the gaming industry."

46. Proudman J said this in June 2011. The trial took place in December 2010. There is no material difference between what she said in 2011 and the relevant period in this case which is the five year period before 30 July 2010; for instance, Proudman J referred to use since 1993 and to the award in 2008, to which I have referred in my evidence summary. Her finding can be applied to the present case as regard's Future's proof of use. Even without the support I derive from Proudman J's decision, I would have come to the same conclusion based upon the evidence filed in these proceedings, notwithstanding the combined turnover figures for the UK and Eire. There is enough UK specific evidence which shows use, goodwill and reputation in at least magazines relating to computer games, video games, interactive media, interactive television, interactive video, hand-held games and to

Page 21 of 63 related devices and goods, all pertaining to entertainment and education. For example, Ms Clayton states that sales took place through retail outlets throughout the UK and Northern Ireland, including WH Smith; the cover prices of the back copies provided in exhibit JRC-7 are in sterling; exhibit JRC-12, from the Chewing Pixels blog, describes Edge magazine as "The British videogames bible Edge magazine"; and exhibit JRC-13 which includes the reference to Future's success at the MCV Industry Excellence Awards 2006, in which the £2 billion UK games industry applauds the very best in the business. There is more than enough evidence of use in the UK to satisfy the criteria cited by Mr Justice Arnold in Stichting BDO and others v BDO Unibank, Inc and others [2013] EWHC 418 (Ch):

"In SANT AMBROEUS Trade Mark [2010] RPC 28 at [42] Anna Carboni sitting as the Appointed Person set out the following helpful summary of the jurisprudence of the CJEU in Case C-40/01 Ansul BV v Ajax Brandbeveiliging BV [2003] ECR 1-2439, Case C-259/02 La Mer Technology Inc v Laboratories Goemar SA [2004] ECR 1-1159 and Case C-495/07 Silberquelle GmbH v Maselli-Strickmode GmbH [2009] ECR 1-2759 (to which I have added references to Case C-416/04 P Sunrider v OH/M [2006] ECR 1-4237):

"(1) Genuine use means actual use of the mark by the proprietor or a third party with authority Ansul,[35] and [37].

(2) The use must be more than merely 'token', which means in this context that it must not serve solely to preserve the rights conferred by the registration: Ansul, [36].

(3) The use must be consistent with the essential function of a trade mark, which is to guarantee the identity of the origin of the goods or services to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin: Ansul, [36]; Sunrider, [70]; Silberquelle, [17].

(4) The use must be by way of real commercial exploitation of the mark on the market for the relevant goods or services, i.e. exploitation that is aimed at maintaining or creating an outlet for the goods or services or a share in that market: Ansul, [37]-[38]; Silberquelle, [18].

(a) Example that meets this criterion: preparations to put goods or services on the market, such as advertising campaigns: Ansul, [37].

(b) Examples that do not meet this criterion: (i) internal use by the proprietor: Ansul, [37]; (ii) the distribution of promotional items as a reward for the purchase of other goods and to encourage the sale of the latter: Silberquelle, [20]-[21].

(5) All the relevant facts and circumstances must be taken into account in determining whether there is real commercial exploitation of the mark, including in particular, the nature of the goods or services at issue, the characteristics of the market concerned, the scale and

Page 22 of 63 frequency of use of the mark, whether the mark is used for the purpose of marketing all the goods and services covered by the mark or just some of them, and the evidence that the proprietor is able to provide: Ansul,[38] and [39]; La Mer, [22]-[23]; Sunrider, [70]-[71].

(6) Use of the mark need not always be quantitatively significant for it to be deemed genuine. There is no de minimis rule. Even minimal use may qualify as genuine use if it is the sort of use that is appropriate in the economic sector concerned for preserving or creating market share for the relevant goods or services. For example, use of the mark by a single client which imports the relevant goods can be sufficient to demonstrate that such use is genuine, if it appears that the import operation has a genuine commercial justification for the proprietor: Ansul, [39]; La Mer, [21], [24] and [25]; Sunrider, [72]"

47. Further, despite putting Future to proof of use in its notice of defence, EIM/Dr Langdell's counterstatement said this:

"14. The application should not be refused under section 5(3) of the Act since Applicant's use in UK commerce of the mark substantially predates that of Opponent by over a decade, and Applicant's use of the mark in the past 26 years has been for a vastly greater array of goods and services relating to computer games than the use of the mark by Opponent — which has been limited to the publication of a game magazine..."

Dr Langdell's skeleton argument said this, on page 8:

"It is well established and not disputed by the parties that Future's sole use of the mark EDGE is for a computer game magazine named "Edge" and the print and electronic versions of this magazine, together with the promotion of it."

48. This is clear acceptance by EIM/Dr Langdell of Future's use of Edge on its magazines. I further note that Dr Langdell's affidavit of 10 June 2013 refers to Future's reputation in its magazine, in paragraphs 72 and 73 (under the heading section 5(3)), which is an acceptance of Future's reputation.

49. I will approach the section 5(2)(a) ground on the basis of Future's CTM and, in relation to its earlier mark 1562099B, its use on its magazines, as these goods represent its best prospect of success. It is not necessary to make a finding in relation to the wider term 'printed matter', or in respect of newspapers or periodicals.

Section 5(2)(a)

50. Section 5(2)(a) of the Act states:

"(2) A trade mark shall not be registered if because —

(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, ...

Page 23 of 63 there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."

51. As the marks are identical, there is no need to set out the case-law relating to the comparison of marks. In terms of the other factors relevant to likelihood of confusion, I note the well-established principles from the CJEU (Court of Justice of the European Union) in Sabel BV v Puma AG [1998] RPC 199 and Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117:

(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors; Sabel BV v Puma AG,

(b) a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,

(c) there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it; Sabel BV v Puma AG,

(d) in determining whether similarity between the goods or services covered by two trade marks is sufficient to give rise to the likelihood of confusion, the distinctive character and reputation of the earlier mark must be taken into account; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc,

(e) the matter must be judged through the eyes of the average consumer for the goods/services in question; Sabel BV v Puma AG, who is deemed to be reasonably well informed and reasonably circumspect and observant.

(f) mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of Section 5(2); Sabel BV v Puma AG,

(g) further, the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; Marca Mode CV v Adidas AG and Adidas Benelux BV,

(h) but if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section; Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.

Comparison of goods and services

52. In comparing the respective specifications, all relevant factors should be considered, as per Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. where the CJEU stated at paragraph 23 of its judgment:

Page 24 of 63 "In assessing the similarity of the goods or services concerned, as the French and United Kingdom Governments and the Commission have pointed out, all the relevant factors relating to those goods or services themselves should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary."

53. `Complementary' was defined by the General Court ("GC") in Boston Scientific Ltd v Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM) Case T-325/06:

"82 It is true that goods are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking...".

54. Additionally, the criteria identified in British Sugar Plc v James Robertson & Sons Limited ("Treat') [1996] R.P.C. 281 for assessing similarity between goods and services also include an assessment of the channels of trade of the respective goods or services.

55. In Avnet Incorporated v lsoact Limited [1998] F.S.R. 16 Jacob J held that:

"In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase."

56. In YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch) at [12] Floyd J said:

"... Trade mark registrations should not be allowed such a liberal interpretation that their limits become fuzzy and imprecise: see the observations of the CJEU in Case C-307/10 The Chartered Institute of Patent Attorneys (Trademarks) (IP TRANSLATOR) [2012] ETMR 42 at [47]-[49]. Nevertheless the principle should not be taken too far. Treat was decided the way it was because the ordinary and natural, or core, meaning of 'dessert sauce' did not include jam, or because the ordinary and natural description of jam was not 'a dessert sauce'. Each involved a straining of the relevant language, which is incorrect. Where words or phrases in their ordinary and natural meaning are apt to cover the category of goods in question, there is equally no justification for straining the language unnaturally so as to produce a narrow meaning which does not cover the goods in question."

57. I have already set out the specification of the CTM. Below is a table showing the magazine part of the specification in Future's earlier mark 1562099B and the applicant's specification.

Future's 1562099B Applicant magazines relating to computer games, Class 09: Computer game software and video games, interactive media, video game software.

Page 25 of 63 interactive television, interactive video, hand-held games and to related devices Class 41: Entertainment services about and goods, all pertaining to interactive computer or video games; entertainment and education. providing information and programming regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games via electronic, wireless and computer networks; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; publication of computer game and video game magazines in electronic form via electronic, Internet, wireless and computer networks; providing news, reviews and information about computer games and videogames via electronic distribution methods including email, Internet websites, wireless and computer networks; providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online game administrators, namely, entertainment services in the nature of an online computer gaming club.

58. Future filed evidence relating to marketplace overlap between games and gaming magazines. This came from Joanna Clayton in the form of a witness statement to adduce exhibit JRC2-2. This is a printout from Future's website (as of the date of the statement, 8 October 2013) outlining details of Future's various printed magazines. The following titles are included:

• Xbox 360: The Official Magazine (UK) • PlayStation: The Official Magazine • Nintendo: The Official Magazine • Official Pokemon Magazine

59. The printout says:

"Future Games holds a unique position in the global games media market, combining the strongest games industry partnerships with an innovative multi- channel approach. We are the only games media owner with audience reach

Page 26 of 63 across print, digital editions, online, social, video, coverdiscs, mobile, on- console and events.

Future publishes official titles for Xbox, PlayStation and Nintendo and licenses these titles into further territories. In 2012 we revamped the website for Official Nintendo Magazine to coincide with the launch of Nintendo's Wii U games console, whilst OfficialPlayStationMagazine.co.uk and OXM.co.uk both recorded significant increases in traffic.

All three games consoles carry our content. On PlayStation 3 we have extended our Sony partnership to produce Access — weekly HD video content. On Xbox 360 we publish the monthly OXM Report and we publish Nintendo TV via Nintendo platforms."

60. In Sanco SA v OH/M6 the General Court indicated that goods and services may be regarded as 'complementary' and therefore similar to a degree in circumstances where the nature and purpose of the respective goods and services are very different; in that case, chickens against transport services for chickens. The GC accepted that chickens and chicken transport services are complementary because professional businesses that purchase chickens may expect the same provider to provide both chickens and specialist transportation services for chickens. I must assess whether the average consumer is liable to believe that responsibility for the goods/services lies with the same undertaking or with economically connected undertakings. As Mr Daniel Alexander QC, sitting as the appointed person, noted in Sandra Amelia Mary Elliot v LRC Holdings Limited':

"It may well be the case that wine glasses are almost always used with wine — and are, on any normal view, complementary in that sense - but it does not follow that wine and glassware are similar goods for trade mark purposes.

it is neither necessary nor sufficient for a finding of similarity that the goods in question must be used together or that they are sold together."

The complementary relationship between goods and services is but one aspect of the similarity assessment which should not be given undue weight or be applied too rigidly.

61. Future publishes the official magazines relating to the games consoles. The extract refers to game industry partnerships. Despite the difference in nature between games, games services and printed magazines, the evidence indicates that there is a complementary relationship in that there is a close connection between them, in the sense that one is indispensable or important for the use of the other in

6 T-249/11.

BL 0/255/13. Page 27 of 63 such a way that customers may think that the responsibility for those goods lies with the same or a related undertaking.

62. EIM has cover for publication of gaming magazines in electronic form. The users of games, information and services about games, and games magazines will be identical. Future's publications carry news, information, reviews etc in relation to games. There is a high level of similarity between Future's printed gaming magazines and EIM's computer games software and video game software; entertainment services about interactive computer or video games; providing information and programming regarding interactive computer game software, interactive video game software and interactive computer games and interactive video games via electronic, wireless and computer networks; providing online computer and video games accessed and played via electronic, wireless and computer networks; providing computer and video games accessed and played via mobile and cellular phones and other wireless devices; publication of computer game and video game magazines in electronic form via electronic, Internet, wireless and computer networks; providing news, reviews and information about computer games and videogames via electronic distribution methods including email, Internet websites, wireless and computer networks; providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online game administrators, namely, entertainment services in the nature of an online computer gaming club.

63. In relation to EIM's providing organizations for online game administrators, namely, entertainment services in the nature of an online computer gaming club; providing public forums for online game administrators, namely, entertainment services in the nature of an online computer gaming club, for all of the above reasons, there is a high level of similarity with Future's entertainment services, namely, providing online computer and video games accessed and played via electronic, wireless and computer networks; organising, arranging and conducting shows, conferences, seminars, awards ceremonies and competitions all relating to computer games software and hardware; entertainment services, namely providing a continuing computer game and science fiction show broadcast over television, satellite, audio, and video media; entertainment services in the field of film and television, namely, the creation, production and distribution of films, videos, animation, and computer generated images; entertainment, namely providing a continuing show distributed over electronic media, namely global and local area computer networks, entertainment in the nature of competitions in the field of entertainment trivia, fan club services, production and distribution of motion pictures, providing news and information in the field of entertainment relating to motion picture films via global computer networks;

Average consumer and purchasing process

64. The average consumer is reasonably well informed and reasonably circumspect and observant, but his level of attention is likely to vary according to the category of goods or services. Although I bear in mind that there may be an aural aspect to the purchasing process, the goods and services will be purchased primarily visually after examination of e.g. websites, magazines and games covers. On a notional view, most of the goods and services of the parties are of ordinary cost which will cause

Page 28 of 63 some degree of care to be used (e.g. new games release or payment for an online gaming service), but not the highest level of care.

Distinctiveness of the earlier mark

65. In Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel 81/8 the CJEU stated that:

"22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 WindsurfingChiemsee v Huber and Attenberger[1999] ECR 1-0000, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51)."

66. Proudman J said, in June 2011, of Future's Edge magazine:

"Many jobs in the computer gaming industry are advertised in its pages, it has many corporate subscribers and it has won a number of awards over the years, including Games Magazine of the Year 2008. It is plainly a substantial enterprise engendering a substantial following and substantial respect in the gaming industry."

The relevant date in these proceedings for assessing the distinctive character of Future's mark EDGE is the date of EIM's application, 26 February 2010. Future had already won the Games Magazine of the Year Award in 2008. By February 2010, Edge Magazine was selling substantially more copies than GamesTM Magazine9, which won the award in 200719. Already inherently distinctive to a reasonably high degree because Edge does not describe or allude to the goods or services of Future's registrations, I also find that it is entitled to claim an enhanced level of

8 Case C-342/97

9 See the table reproduced in paragraph 32 of this decision.

10 See page 5 of exhibit JRC-13.

Page 29 of 63 distinctive character for gaming magazines, as of 26 February 2010, because of the use made of the mark.

Likelihood of confusion

67. In deciding whether there is a likelihood of confusion between the marks, I must weigh the various factors I have identified. This includes the principle of interdependency, whereby a lesser degree of similarity between the goods/services may be offset by a greater degree of similarity between the trade marks, and vice versa (Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc.). In these proceedings, the marks are identical and the goods and services are identical or highly similar.

68. Dr Langdell sought to persuade me that despite Future's CTM being registered in Future's ownership on the OHIM register, it in fact belongs to EIM and that I should treat it as having been assigned to EIM, notwithstanding OHIM's failure to record the assignment. He based this upon clause 2.8 of the CTA agreement. That argument is misconceived. OHIM issued a refusal of the assignment ("recordal") application on 5 February 2013 and it became final on 5 July 2013, no appeal having been filed. Also misconceived is Dr Langdell's reliance upon the CTA agreement as preventing success by Future (and preventing its opposition). Proudman J's order of 7 July 2011 stated:

"Declaration

6. It is hereby declared that the Concurrent Trading Agreement (as defined in Annex 1 hereto) terminated with effect from 20 August 2010".

Proudman J said in her decision of 13 June 2011:

"Contract

39. In October 1993 Dr Langdell issued proceedings against the claimant for passing off, alleging that he had unregistered rights in the mark EDGE. On 11 th February 1994 Dr Langdell applied to register the trade mark EDGE in the class 16 (printed matter) category in respect of various items including gaming magazines. The action was stayed pendinc payment by Dr Langdell of security for costs but was then settled by an agreement dated 4.1 December 1996 ("the 1996 Agreement"). By that date, the claimant as well as EIM had applied to register the name EDGE in the class 16 (printed matter) category.

40. The thrust of the 1996 Agreement was that EIM would keep its registered mark and would be given the claimant's trade mark application in return for a royalty-free licence for the claimant to use the mark EDGE in relation to EDGE magazine in any form, electronic, on-line or otherwise. The claimant paid EIM the sum of £20,000. All rights and goodwill arising out of the mark EDGE were to vest in EIM. EIM was prohibited from publishing or licensing anyone else to publish a magazine substantially similar to EDGE magazine under the name EDGE or any colourably similar mark. EIM was prohibited from claiming any association or connection with EDGE magazine or with the claimant, save that in response to an unsolicited request EIM could confirm that it had licensed the mark EDGE to the claimant in relation to EDGE magazine.

41. The claimant's case is that thereafter, as EDGE magazine's success grew, Dr Langdell's behaviour became increasingly burdensome. The claimant wanted to abrogate the licensing agreement and buy all necessary trade marks from the defendants.

Page 30 of 63 42. Agreement was reached in 2004, both with EIM and with Dr Langdell. The result was a Concurrent Trading Agreement ("CTA") with EIM and a Deed with Dr Langdell. Each was paid a substantial sum of money in consideration of entering into the deeds, $250,000 to EIM and $25,000 to Dr Langdell, although the total sum was paid into Dr Langdell's bank account.

"EIM Softek and Future wish to settle the Proceedings and all actual and potential disputes between them relating to the publication by Future of EDGE Magazine upon the terms hereinafter appearing."

This contention is misconceived as it ignores the fact that the 1996 Agreement was expressly (see Recital 4 of the CTA) terminated and replaced by the CTA.

44. The primary effect of the CTA was to assign to the claimant those parts of the trade marks owned by EIM which included the word EDGE and which covered EDGE magazine. Because Class 16 includes not only magazines but also other printed matter such as posters, booklets and instruction manuals the agreements provided that EIM would assign to the claimant that part of each mark in Part 16 which covered:

"Printed matter and publications, namely magazines, newspapers, journals, columns and sections within such magazines, newspapers and journals, all in the field of business, entertainment and educations relating to computers, computer software, computer games, video games, hand-held games and other interactive media."

The Register of Trade Marks was duly amended accordingly, with a suffix "A" for EIM's marks and a suffix "B" for the claimant's marks.

45. The assignment included all rights in the agreed part of the trade marks,

"including all goodwill attaching to the use of the Agreed Part of the Trademarks in class 16 and all rights of action, powers and benefits arising from ownership of the Agreed Part..."

"Trademarks" was defined as including not only the registered marks but also "all unregistered trademark rights of EIM in those marks."

46. Under clause 2.1.2 of the CTA, EIM granted the claimant certain licensed rights, making it clear that EIM could not object to claimant using the mark EDGE in relation to electronic publications. By Clause 2.9, the claimant undertook not to use the mark EDGE outside the publication of computer games magazines, their associated marketing and promotion and the uses covered by clause 2.1.2.

47. Importantly, both agreements provided as follows:

CTA clause 2.4:

"EIM further undertakes that it shall not use or permit the use by any other person of any Trade marks in a way which is or could reasonably be confusing with Future's use of the same in accordance with this Agreement and Deed."

The Deed clause 2.1.6:

Page 31 of 63 "Not [to] use or permit the use by any other person of any of the Trademarks in a way which is or could reasonably be confusing with Future's use of the same in accordance with the [CTA].""

67. Termination of a contract by acceptance of repudiation can be effected notwithstanding the prior acquisition of rights unconditionally acquired. Accordingly the assignment to the claimant of goodwill and registered trade mark rights in the name EDGE and the payments to EIM and Dr Langdell of consideration under the agreements do not prevent termination. Each side is entitled to retain those benefits: see Chitty on Contracts (30th Edition) at 24-051 and cases therein cited.

70. I therefore find that the claimant has accepted the defendants' repudiatory breaches and validly terminated the CTA."

69. Dr Langdell's skeleton argument contains the following submission:

"25. The fact that the Court terminated the 2004 CTA as at August 20, 2010 has no bearing on these proceedings other than solely the fact that at that point Future became freed of the constraint on them not to oppose Applicant's attempts to apply to register the mark EDGE."

Of course, Future filed its opposition on 28 October 2010, after the effective date of termination of the CTA. In his interim decision of 23 February 2012, Mr Smith, the hearing officer, decided that Future's opposition was properly launched and that the CTA was no bar to Future bringing its opposition after the termination of the CTA.

70. Dr Langdell sought to persuade me that even Future's Counsel in the High Court case, Mr lain Purvis QC, agreed that EIM had licensed Future's use of EDGE irrevocably and that this prevented Future from owning a registration for EDGE in classes 9 and 41. He exhibited to his affidavit of 10 June 2013 a single page from Mr Purvis' closing submissions and a single page from the transcript of Day 8 of the proceedings before Mrs Justice Proudman, where Mr Purvis was making oral submissions. In reply, Future has filed the full transcript of Day 8 and a full copy of Mr Purvis's written closing submissions. To support his case, Dr Langdell put a highlighter pen through certain parts of paragraph 48 of Mr Purvis' written closing submissions, like this (I have used bold lettering):

Page 32 of 63 "48. The first element is a one off assignment to Future of all goodwill and registered trade mark rights in the name EDGE in consideration for the payment of £250,00011. See clause 2.1. That assignment (which includes the irrevocable and perpetual licence to use the name in respect of purely ancillary matters in clause 2.1.2) is unaffected by termination. Neither is the right of EIM to retain the money, since both the money and the assigned rights were unconditionally acquired — see the summary of the law in Chitty on Contracts at 24-051.

71. Clause 2.1 of the CTA stated:

"2. ASSIGNMENT AND GRANT OF RIGHTS

2.1 In consideration of EIM and Future hereby agreeing to terminate the Softek Agreement (including the EIM Licence) with effect from Completion, and in consideration of EIM assigning to Future all right, title an interest in the Assigned Rights with effect from Completion, and in consideration for Future as a condition of the transfer of rights herein paying to EIM the sum of $250,000 in accordance with Clause 3.1 below, EIM:

2.1.1 shall at Completion provide the duly executed Trademark Assignments set out in Schedule 2 (the "Assignments") to Future and all other documents reasonably required by Future so that Future can register the assignment to Future of all right, title and interest in the Assigned Rights with full title guarantee under the terms of this Agreement and Deed; and

2.1.2 grants Future on Completion a non-exclusive, royalty free, world-wide perpetual and irrevocable licence to use and sub-license the use of the mark and brand EDGE and those rights assigned to EIM pursuant to clause 2.6 (if any) in relation to:

(a) electronic publication versions of its Edge Magazine; (b) covermounts and other promotional items which are used to promote the Edge Magazine (including, without limitation, posters) or included with or on or inserted in the Edge Magazine or its packaging, but which are not sold commercially as separate items; (c) the packaging of the Edge Magazine and the packaging of any covermounts and any other promotional items referred to in clause 2.1.2(b); and (d) magazine branded merchandise, which are provided free of charge as part of the promotion of Edge Magazine

together known as the "Licensed Rights";

The "Assigned Rights' were defined in the CTA as "all rights, title and interest in the Agreed Part of the Trademarks (whether registered, unregistered and/or the subject of an application for registration) in class 16, in each case in whatever country including, without limitation, all goodwill attaching to the use of the Agreed Part of the Trademarks in class 16 and all rights of action, powers and benefits arising from ownership of the Agreed Part...".12

72. Dr Langdell's highlighting of certain words in Mr Purvis' paragraph distorts the meaning of what was said. It is clear from the pages in the transcript of Day 8, which Dr Langdell did not exhibit but which Future did, that Mr Purvis had submitted that

11 The CTA states $250,000. 12 As set out by Proudman J at paragraph 45 of her judgment.

Page 33 of 63 the CTA assigned to Future certain rights to EDGE in class 16 and that the ancillary matters, which were irrevocably licensed, were such things as electronic versions of the magazine, promotion of it, 'freebies' inserted in the magazine, magazine packaging and branded merchandise, not covered by the assigned part of Class 16.

73. Future's earlier registrations are considered validly registered by virtue of section 72 of the Act13 and Article 99(1) of the Community Trade Mark Regulations" and may be relied upon for the purposes of an opposition under sections 5(1) and 5(2)15 of the Act. An opposition raised under Sections 5(1) and/or 5(2) of the Act operates on the basis of the 'first to file' UK trade mark registration system, as per section 6 of the Act:

"6. - (1) In this Act an "earlier trade mark" means —

(a) a registered trade mark, international trade mark (UK), Community trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,

(b) a Community trade mark or international trade mark (EC) which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), (ba) a registered trade mark or international trade mark (UK) which-

(i) has been converted from a Community trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b)from an earlier trade mark, and

(ii) accordingly has the same claim to seniority, or

(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.

(2) References in this Act to an earlier trade mark include a trade mark in respect of which an application for registration has been made and which, if registered, would be an earlier trade mark by virtue of subsection (1)(a) or (b), subject to its being so registered.

13 I n all legal proceedings relating to a registered trade mark (including proceedings for rectification of the register) the registration of a person as proprietor of a trade mark shall be prima facie evidence of the validity of the original registration and of any subsequent assignment or other transmission of it."

14Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark: "The Community trade mark courts shall treat the Community trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity."

15 And, of course, section 5(3). Page 34 of 63 (3) A trade mark within subsection (1)(a) or (b) whose registration expires shall continue to be taken into account in determining the registrability of a later mark for a period of one year after the expiry unless the registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry:.

74. Dr Langdell submitted that EIM had rights which predate Future's. This argument is misconceived, as per the Registrar's Tribunal Practice Notice 4/2009, which states:

Trade mark opposition and invalidation proceedings - defences

Defences including a claim that the applicant for registration/registered proprietor has a registered trade mark that predates the trade mark upon which the attacker relies for grounds under sections 5(1) and 5(2) of the Act.

1. A number of counterstatements in opposition and invalidation actions have sought to introduce as a defence that the applicant for registration/registered proprietor has a registered trade mark (or trade mark application)for the same or a highly similar trade mark to that which is the subject of the proceedings that predates the earlier mark upon which the attacker relies.

2. Sections 5(1) and 5(2) of the Act turn upon whether the attacker has an earlier trade mark compared to the mark under attack, as defined by section 6 of the Act. Whether the applicant for registration/registered proprietor has another registered trade mark (or trade mark application) that predates the earlier mark upon which the attacker relies cannot affect the outcome of the case in relation to these grounds.

3. The position was explained by the Court of First Instance in PepsiCo, Inc v Office for Harmonization in the Internal Market (Trade Marks and Designs)(OHIM) T-269/02:

"24 Nor did the applicant claim, and even less prove, that it had used its earlier German mark to obtain cancellation of the intervener's mark before the competent national authorities, or even that it had commenced proceedings for that purpose.

25 In those circumstances, the Court notes that, quite irrespective of the question whether the applicant had adduced evidence of the existence of its earlier German mark before OHIM, the existence of that mark alone would not in any event have been sufficient reason for rejecting the opposition. The applicant would still have had to prove that it had been successful in having the intervener's mark cancelled by the competent national authorities.

26 The validity of a national trade mark, in this case the intervener's, may not be called in question in proceedings for registration of a Community trade mark, but only in cancellation proceedings brought in the Member State concerned (Case T 6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II 4335, paragraph 55). Moreover, although it is for OHIM to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of the national authorities."

The position with regard to defences based on use of the trade mark under attack which precedes the date of use or registration of the attacker's mark

4. The viability of such a defence was considered by Ms Anna Carboni, sitting as the appointed person, in Ion Associates Ltd v Philip Stainton and Another, BL 0-211-09. Ms Carboni rejected the defence as being wrong in law.

Page 35 of 63 5. Users of the Intellectual Property Office are therefore reminded that defences to section 5(1) or (2) grounds based on the applicant for registration/registered proprietor owning another mark which is earlier still compared to the attackers mark, or having used the trade mark before the attacker used or registered its mark are wrong in law. If the owner of the mark under attack has an earlier mark or right which could be used to oppose or invalidate the trade mark relied upon by the attacker, and the applicant for registration/registered proprietor wishes to invoke that earlier mark/right, the proper course is to oppose or apply to invalidate the attacker's mark.

Reliance on the Absence of Confusion in the Marketplace

6. Parties are also reminded that claims as to a lack of confusion in the market place will seldom have an effect on the outcome of a case under section 5(2) of the Act.

7. In Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 Laddie J held:

"22. It is frequently said by trade mark lawyers that when the proprietors mark and the defendant's sign have been used in the market place but no confusion has been caused, then there cannot exist a likelihood of confusion under Article 9.1(b) or the equivalent provision in the Trade Marks Act 1994 ("the 1994 Act"), that is to say s. 10(2). So, no confusion in the market place means no infringement of the registered trade mark. This is, however, no more than a rule of thumb. It must be borne in mind that the provisions in the legislation relating to infringement are not simply reflective of what is happening in the market. It is possible to register a mark which is not being used. Infringement in such a case must involve considering notional use of the registered mark. In such a case there can be no confusion in practice, yet it is possible for there to be a finding of infringement. Similarly, even when the proprietor of a registered mark uses it, he may well not use it throughout the whole width of the registration or he may use it on a scale which is very small compared with the sector of trade in which the mark is registered and the alleged infringers use may be very limited also. In the former situation, the court must consider notional use extended to the full width of the classification of goods or services. In the latter it must consider notional use on a scale where direct competition between the proprietor and the alleged infringer could take place."

8. (In Rousselon Freres et Cie v Horwood Homewares Limited [2008] EWHC 881 (Ch) Warren J commented:

"99. There is a dispute between Mr Arnold and Mr Vanhegan whether the question of a likelihood of confusion is an abstract question rather than whether anyone has been confused in practice. Mr Vanhegan relies on what was said by Laddie J in Compass Publishing BV v Compass Logistics Ltd [2004] RPC 41 at paragraphs 22 to 26, especially paragraph 23. Mr Arnold says that that cannot any longer be regarded as a correct statement of the law in the light of 02 Holdings Ltd v Hutchison 3G Ltd [2007] RPC 16. For my part, I do not see any reason to doubt what Laddie J says...")

9. In The European Limited v The Economist Newspaper Ltd [1998] FSR 283 Millett LJ stated:

"Absence of evidence of actual confusion is rarely significant, especially in a trade mark case where it may be due to differences extraneous to the plaintiffs registered trade mark."

The test in this case is whether there is a likelihood of confusion 'notionally', i.e. whether all the factors l have discussed throughout this decision combine to lead to a conclusion that there is, or is not, a likelihood of confusion, on the part of the average consumer, between the marks. Given that the marks are identical and cover identical and highly similar goods and services, and that Future's earlier marks are already inherently distinctive to a reasonably high degree, and that

Page 36 of 63 distinctiveness is enhanced through use, a likelihood of confusion is inevitable. The average consumer will assume that the marks belong to the same or linked undertakings.

75. Dr Langdell relied upon alleged use of EIM's mark to persuade me that there was no confusion. The relevant date is the date of EIM's application, 26 February 2010. The High Court action between the parties commenced in 2009, with Proudman J giving judgment on 13 June 2011. She revoked of all of EIM's UK registered marks16 on the grounds on non-use, stating:

"De-registration through non-use

76. The claimant contends that all of EIM's registered trade marks in the UK are invalid for non- use under s. 46 (1)(b) of the Trade Marks Act 1994, namely:

"that such use has been suspended for an uninterrupted period of five years and there are no proper reasons for non-use".

The burden of proof lies on the proprietor to show that his marks have been used: s.100 of the Act.

77. Use for the purposes of s. 46 must be genuine use. In La Mer Technology Inc v. Laboratoires Goemar SA [2004] Case C-258/02 at [21]-[22], the European Court of Justice explained that use as follows,

The question whether use is sufficient to preserve or create market share for those products or services depends on several factors and on a case-by-case assessment which is for the national court to carry out. The characteristics of those products or services, the frequency or regularity of the use of the mark, whether the mark is used for the purpose of marketing all the identical products or services of the proprietor or merely some of them, or evidence which the proprietor is able to provide, are among the factors which may be taken into account."

79. A number of points arise. First, there is no suggestion that these games have been advertised or promoted for sale in the UK in the relevant period. The only evidence of anyone finding and purchasing them in the UK is evidence of "trap" orders placed by the claimant for the purposes of the proceedings. Indeed when such orders were placed EIM did not even deliver the games. The only outlets through which any of the games could be purchased are Dr Langdell's websites which redirect to amazon.com and another website. On both websites the games are priced in dollars. Amazon shows no instance of feedback from any buyers. There is therefore nothing to show that the marks "preserve or create market share for the goods or services protected by the mark". The mere placing of the mark on the defendants' websites is

16 1562099A, 2147008A, 2147013A, 2147022A, 2147035A and 2147040A. Page 37 of 63 not genuine use in the absence of active promotion of the website since it is insufficient to establish a market for the goods.

81. Thirdly, Dr Langdell seeks to rely on sales of goods by others whom he claims are licensees of EIM. One matter relied upon is 20th Century Fox's movie "The EDGE". I would need cogent supporting evidence to convince me that this company is EIM's licensee and no such evidence has been forthcoming. In any event it is doubtful whether the name of the movie fulfils the function of a trade mark in indicating the origin of goods. Another supposed licensee is Datel, which who sells a Wii game controller called "the Edge" in the US and over the internet. Again there is no evidence in support of trade mark use in the UK. A third supposed licensee is NIS which sells a Playstation 3 game called "Cross Edge". Again there is no corroborative evidence and the relevance of this product is dubious in any event since "Cross Edge" is not one of the registered marks.

Page 38 of 63 86. Importantly, Dr Langdell sought to rely on sales in the UK by his licensee Velocity Micro Inc. Apparently in response to the claimant's Part 18 request on 7th October 2010 Dr Langdell emailed the claimant's solicitors on 30th November 2010 with two emails, comprising an exchange with Randall Copland of Velocity Micro. Dr Langdell claims that he had sent hard copies of these documents to the claimant's solicitors twice by post but they were not received.

87. The first email was an alleged email from Dr Langdell to Mr Copland timed at 10.26 am on 11 th June 2010, requesting UK sales figures for Velocity Micro's "Edge" and "Gamer's Edge" products for the years 2006-9. The second email is the alleged response timed at 6.34 am on 14 June 2010, saying simply,

"The figure is way over $1m for each year".

88. The claimant contacted Mr Copland and he made a witness statement dated 3rd December 2010 attaching his correspondence with Dr Langdell. He said that the emails disclosed were not in the form sent and received. He attached the true copies of the emails he sent and received, explains how the disclosed emails appear to have been altered and confirms that the actual UK sales figures for the years in question were nil. Dr Langdell did not disclose the email dated 11 th June that he had actually sent, nor did he disclose the email from Randall Copland in unredacted form which he actually received. His explanation for these omissions was totally unconvincing.

89. Having been served with Mr Copland's statement on the following working day Dr Langdell wrote to the claimant's solicitors saying that he had never alleged that Mr Copland's 14th June email was in response to his 11 th June email. In cross-examination he insisted that he sent the email to Mr Copland. His explanation was that,

"...we have been let down by Velocity Micro, who said they were selling to the UK."

93. I would add that Dr Langdell contended that the claimant's allegations of passing off were inconsistent with their claims that he had not used his registered mark. However representations can still be made on websites directed into the UK in the absence of the conduct of a genuine business under that mark: see Euromarket Designs Inc v. Peters f20011 FSR 20."

76. For the concurrent use argument to run, there needs to be evidence to suggest that the relevant public has shown that it distinguishes between the undertakings' goods and services. Without such evidence, it is not possible to demonstrate an absence of actual confusion. For Dr Langdell's reliance on use to even get off the ground, there needs to be evidence of EIM's use in the UK in the years running up to

Page 39 of 63 26 February 2010. Given Proudman J's findings, that seems unlikely. She found that by the end of November 2009 (only three months before the relevant date in these proceedings), the only evidence produced by Dr Langdell was assertion. The only outlets through which games could be bought were Dr Langdell's websites which redirected to Amazon.com and another website, on which the games were priced in dollars, with no feedback from buyers. Just before the High Court trial, so after the relevant date in the current proceedings, Dr Langdell served a supplemental list of documents alleging UK sales of games, but without any underlying records, such as payments. Proudman J rejected the evidence.

77. EIM/Dr Langdell has filed evidence to show UK use in these proceedings. Some of his evidence relates to the 1980s, much too long ago to be of benefit to Dr Langdell's argument. His affidavit of 13 June 2013 contains the following:

"96. In her 2011 judgment Mrs. Justice Proudman mistakenly stated that Applicant had failed to supply any evidence of websites in the UK, accessible by UK consumers, selling Applicant's goods in UK Pounds Sterling. I accept that this mistake by the judge was caused in large part because Edge had no legal representation and I was forced to try to represent the company myself before the Judge. Apparently I perhaps did not adequately bring the Judge's attention to the copious evidence in the trial binders before her of numerous UK websites selling our EDGE games in the UK in British Pounds — and specifically, proving sales in the five year period in question in the trial."

78. Dr Langdell attaches a number of prints which he states are from the Wayback Machine (exhibit TL16)from 2005, 2006, 2007, 2009 and 2010. He states that these show that at all times EIM's EDGE branded game Bobby Bearing was on sale in the UK through UK websites for mobile games Prints from edgegames.com are exhibited, which Dr Langdell states shows "extensive use" of EDGE on games and games hardware from 2005 to 2010. Proudman J dealt with 'Bobby Bearing' evidence in paragraphs 78 and 79 of her decision, reproduced above. The prints before me comprise the following:

• A page from smiliegames.com, said to be dated from 12 March 2005, which shows the Bobby Bearing game for mobile phones priced at £4.50. There is no mention of EDGE.

• A page said to be dated 24 May 2005 from phonegamesdirect.co.uk which shows Bobby Bearing, but no mention of EDGE. The developer is recorded as "Mobile Entertainment Europe". There is no price.

• A page which does not appear to be from the WayBack Machine and which bears a printing date of "9/24/2010", from funmyfon.com/uk. It is just possible to see the words "Licence Edge Games" underneath the picture of the game. There is no price except "Choose your operator to hear information of the order Vodafone, T-mobile, Orange, Three, 02 send a sms report on an number 84242 with a text GO 0015578355 Cost: 3GBP. There is "0" feedback left.

Page 40 of 63 • A page printed on "9/24/2010" which refers to Bobby Bearing, with no picture, unexpanded description and no pricing, from funfoneshop.mobplay.co.uk.

• A page showing a list of games for Nokia phone which includes Bobby Bearing, printed on "9/24/2010".

• A page from the WayBack Machine said to date from 2005 from www.the- edge.com. It is simply a screen shot of the mark EDGE.

• A page from the WayBack Machine from 2010, with a typed note stating this was the Edge website at the time of applying for the trade mark. There are US and UK flags, "Edge Games", and a picture of what appears to be a game called "Racers" "coming soon on PlayStation 3" but no more than that.

• A page which looks as though it is the artwork for what is described as a "new game by Edge launched Sept 2009", but without any evidence of sales or pricing.

• A page which is headed "Coming December 2010 to iTunes UK...from The Edge Bobby Bearing 2: Rebound''. There is no evidence of pricing.

• A similar page relating to a game called Mythora, which is described as having been launched in 2004, on sale continuously in the UK from 2005 to 2010. There is no evidence of any sales or pricing.

• A page from what looks like the iTunes store with a game for sale called EDGEBobby2, which is undated. The game is marked as costing "E0.69", in contrast to the £4.50 charged on the page I have described at the first bullet point. The page says "no ratings".

• Similar screen shots of purported games appear in exhibit G to Dr Langdell's affidavit of 20 December 2013, but with no pricing, no dating, no feedback, and no indication of being able to add them to a basket to purchase.

79. In paragraphs 98 and 99 of his affidavit, Dr Langdell gives figures for visits to the edgegames.com website:

Month Page Views January 2005 431,564

Page 41 of 63 July 2005 321,078 March 2006 525,011 September 2006 441,969 April 2007 341,099 May 2008 498,252 February 2009 593,121 November 2009 419,534 January 2010 521,197

80. Dr Langdell sates that around 25% of the page views to this website were from the UK and Northern Ireland. Ms Clayton, for Future, put in evidencel'about Dr Langdell's figures, particularly noting that the figures are not very different to Future's own (I note that she also said that a quarter of the visits and views to Future's website were from the UK). Ms Clayton states that her colleague Nina Day (Assistant Company Secretary & Legal Business Manager at Future) conducted some research into the matter to see whether an independent source could be found to provide comparative data as between Future's website and EIM's website. Ms Day looked at information from the Alexa website18 which holds records of the popularity of websites. Alexa gives details of website traffic, ranking websites using a combination of estimated average daily unique visits and estimated page number views over a three month period. The data is current rather than historic, but gives an indication. The Alexa data shows that EIM's websites have been and still are too small to register any information about them, in contrast to the entries for Future's website, which do show data.

81. Dr Langdell states in paragraph 99 of his affidavit:

"We also kept records of visits to our UK edgegames.co.uk website — however, I note that the WayBack Machine failed to capture this website in the earlier years but attached in Exhibit TL16 is also proof that we registered the domain name edgegames.co.uk in January 2000 and I hereby represent we did have that website live to UK consumers at all times from 2005 to 2009, to the best of my recollection, even though archive.org failed to capture the site."

82. Ms Clayton exhibits at JRC2-3 some screen shots taken from the WayBack Machine from EIM's/Dr Langdell's website edgegames.co.uk on 29 November 2009, which she states is the date of the earlier archived page, 13 April 2010 and 14 August 2010. It is clear from the prints that they are holding pages with no content.

83. Dr Langdell gives some figures for 2005 which he believes come partly directly from EIM's websites, partly from numerous UK websites selling EIM's mobile games and through EIM's European marketing and sales partner Artegence19. The highest

17 Witness statement dated 8 October 2013. 18 Exhibit JRC2-3 19 Proudman J refers to Artegence in paragraph 84 of her decision. Page 42 of 63 monthly figure is £863. Dr Langdell does not give UK figures for any other years, but describes them as "modest but consistent". In exhibit G, there is a page which purports to be an amazon.co.uk invoice to someone in Devon for a single copy of the Racers game on 25 May 2010 (after the relevant date for assessing likelihood of confusion).

84. Dr Langdell states that the EDGE branded game Bobby Bearing has "won numerous awards", but this appears to be in the early 1990s (exhibit TL17).

85. None of this evidence gets EIM/Dr Langdell anywhere with the argument about concurrent use/lack of confusion. Much of it is resonant of the findings of Proudman J, but even without the support of her judgment, there is nothing which points to use. The website data has been challenged, in my view successfully, by Future. The items in the evidence do not corroborate each other or the assertions in the affidavits. The evidence does not assist EIM's defence.

86. The end result is that there is a likelihood of confusion. In addition to Future's full success under section 5(1), the opposition also succeeds in full under section 5(2)(a) of the Act.

87. Owing to strength of the section 5(1) and 5(2)(a) grounds, for economy of process, I do not propose to address the other grounds of opposition or the evidence pertaining thereto. In particular, the request to cross-examine Mr Parkin is now moot and refused. I doubt that it would be been particularly enlightening owing to the hearsay/anonymous nature of some of the Chaos Edge website content; and because Dr Langdell wished to cross-examine Mr Parkin on his Eurogamer article including in relation to clear journalistic hyperbole, such as "[i]n this moment the seeds of a thousand lawsuits were sown"20.

88. The day after the hearing, Dr Langdell sent an email to the Tribunal to deal with two points which he said Mr Pearson had unfairly made in his submissions in reply. The first was that Mr Pearson alleged bad faith by the application having been made in the light of the UK registrations being revoked, which Dr Langdell wished to deny; and the second was that Dr Langdell wished to record that EIM requires the application in addition to the CTM, if he is successful in getting OHIM to record the CTM as being in EIM's ownership. I do not need to deal with either of these points.

89. Eight days after the hearing, Dr Langdell sent a further email to the Tribunal, requesting summary judgement on two separate bases.

90. In a nutshell, the first basis for the summary judgment request is that Dr Langdell claims that Future is estopped from opposing EIM's application owing to abuse of process:

"5. The instant application matured to advertisement on July 30th 2010, substantially before Opponent amended its Claim before the High Court in August 2010, and substantially before the trial commenced in December

20 Dr Langdell devoted nearly 3 pages in his evidence and 3 pages in his skeleton argument to challenging that hyperbole. Page 43 of 63 2010. Certainly, well before the time of the trial Opponent had indicated to the UK IPO that it intended to oppose Applicant's application.

7. As stated by Lord Bingham in Johnson v. Gore Wood & Co ([2000] UKHL 65; [2002] 2 AC 1), "The underlying public interest is ... that there should be finality in litigation and that a party should not be twice vexed in the same matter." Clearly it is obvious now that this dispute between Opponent and Applicant over whether Applicant may rightly have registration of this trademark herein applied for, is part of the general dispute between the parties that was heard at trial in December 2010. As such, Opponent had an obligation in law to include any dispute of or objection to Applicant being permitted registration of the instant mark in the 2010 proceedings before Mrs. Justice Proudman. By failing to include its contention that Applicant should not have registration of this mark in the 2010 proceedings, Opponent thus waived its right to ever challenge Applicant's right to own registration of this mark, and is forever estopped from opposing this registration or challenging it. Applicant has a right in UK not to be vexed twice by this attack by Opponent — since clearly Opponent knew about this trademark application well before the trial in December 2010, and indeed even indicated that it intended to oppose the registration prior to trial, thus Opponent was compelled to either raise this issue at trial (by way of further amendment of its Claim in August 2010, which it specifically failed to do), or be forever estopped from opposing this application."

91. I can deal with this briefly. At the most basic of levels, the argument is misconceived and EIM's/Dr Langdell's request fails. The issue could not have been raised at trial because the Registrar of Trade Marks has sole first instance jurisdiction in UK trade mark opposition proceedings, by virtue of section 38 of the Act21, in contrast to revocation proceedings (see section 46(4)) and invalidation proceedings (see section 47(3)) in which applications to revoke or invalidate trade marks can be made either to the Registrar or to the Court.

92. The other basis for Dr Langdell's request for summary judgment is entitled "Dismissal on the grounds a Licensee cannot hold a registration, only a Licensor can" and is expressed as follows:

"9. It was highlighted at the hearing on February 17, 2014 that Opponent's own counsel at trial in December 2010 admitted and accepted on behalf of Opponent that the license which Opponent purchased from Applicant in October 2004 (detailed in clause 2.1.2 of the 2004 Agreement) by virtue of being acquired unconditionally, and by virtue of being styled as "perpetual and irrevocable" therefore survived termination of the contract and therefore still exists to this day. Again, this is Opponent's own counsel's admission and assertion on the record (see Document 55, Exhibit "TL13" of the bundle used at the hearing).

21 See the Court of Appeal's decision in Special Effects Ltd v L'Oreal SA [2007] ETMR 51, where this point is noted by Lloyd LJ in paragraph 72. Page 44 of 63 10. At the hearing it was suggested at one point that Applicant had taken wording out of context by highlighting the fact that Opponent's counsel stated that the license is still owned by Opponent and that it survives contract termination. However, this is clearly not true since reading the entire quote by Mr Purvis (Counsel for Opponent) shows that he clear [sic] was stating this even though he was bundling the license rights as what was purchased from Applicant by Opponent along with what Purvis called the Assigned rights. The fact he saw the license as bundled with the assignment purchase does not change one iota the fact that Purvis, on record, committed on behalf of Opponent for all time to the fact that the license survived termination is in effect to this day.

11. It is a basic fact of UK trademark law that where there is a Licensee/Licensor relationship, then only the Licensor may own the registration of the mark under license. Consequently, these proceedings must be dismissed in Applicant's favour since due to the license between the parties whereby Opponent licenses all right in classes 9 and 41 to use the mark EDGE in UK commerce from Applicant, therefore only Applicant has the right (and indisputedly does have the right) to own registration of the mark EDGE in classes 9 and 41, and indisputedly Opponent has no right to registration in these classes, and thus has no grounds for opposition in this very key sense. The fact that Opponent "appears" to own a CTM for the mark that covers these classes and appears to also cover the UK territory is thus clearly in error as the Tribunal must accept since by UK law Opponent may not own registration of the mark EDGE in classes 9 and 41 (and, as proved elsewhere, in any event Applicant is the true owner of the CTM since it acquired ownership by virtue of unconditional transfer of rights per clause 2.8 of the CTA, and that was acquired prior to termination and thus survived termination)."

93. I do not detect any new arguments here that were not raised prior to and at the hearing. I have already dealt with this point at paragraph 68 et seq. Proudman J's judgment and order are clear: Future retains the assigned class 16 rights and the licensed right, which cannot be prevented by EIM, to use the mark in relation to the ancillaries and the electronic version of the magazine; EIM retains the money Future paid for these assigned and licensed rights. These retentions were specifically referred to by Proudman J in paragraph 67 of her decision, prior to her determination that, other than these rights, the CTA was terminated (as of 20 August 2010). Termination means the end of obligations. Future's CTM is an earlier right as per section 6 of the Act and its opposition is validly made.

Outcome

94. The opposition succeeds in full under sections 5(1) and 5(2)(a) of the Act. EIM's application 2540453 is refused for all goods and services.

Page 45 of 63 Costs

95. Future has been wholly successful in the opposition, which it was entitled to bring. Future is entitled to an award of costs. Both sides asked for costs off the scale22 and I invited written submissions on this basis, to be received by Monday 3 March 2014. I allowed a further week for each side to reply to the other's submissions. Future supplied me with submissions in time and a detailed breakdown of the time spent on each action required in the opposition, together with an hourly attorney rate of £215. The ex-VAT total amount which Future has spent on this opposition comes to (at the date of the submissions) £55,848.86. I have been able to match the sequence of events in Future's itemisation with the documentation on the Registry's own official files. I received no submissions from EIM/Dr Langdell, either in relation to his own request for off-scale costs, or in response to Future's submissions. At the hearing, Dr Langdell submitted that the opposition was vexatious or frivolous. I do not agree. EIM is not entitled to any costs or any costs set-off.

96. Although the Trade Marks Tribunal operates under its own set of rules23, it looks to the Civil Procedure Rules for support and guidance, where appropriate; in particular, the Overriding Objective at 1.1 and 1.324:

"1.1

(1) These Rules are a new procedural code with the overriding objective of enabling the court to deal with cases justly and at proportionate cost.

(2) Dealing with a case justly and at proportionate cost includes, so far as is practicable —

(a) ensuring that the parties are on an equal footing;

(b) saving expense;

(i) to the amount of money involved;

(ii) to the importance of the case;

(iii) to the complexity of the issues; and

(iv) to the financial position of each party;

(d) ensuring that it is dealt with expeditiously and fairly;

(e) allotting to it an appropriate share of the court's resources, while taking into account the need to allot resources to other cases; and

22 The scale of costs operated by the Registrar is set out in Tribunal Practice Notice 4/2007.

23 The Trade Marks Rules 2008.

24 l read out some of the Overriding Objective at the beginning of the hearing on 17 February 2014 and, in a letter dated 10 July 2013, EIM's/Dr Langdell's attention was drawn specifically to 1.1(2)(f). Page 46 of 63 (f) enforcing compliance with rules, practice directions and orders.

Duty of the parties

1.3

The parties are required to help the court to further the overriding objective."

97. A sense of the procedurally convoluted and protracted nature of these proceedings can be gained from my decision. The scale figures are the norm in a normal case, designed to apportion costs on a contributory (rather than compensatory) basis. The Registrar has the ability to award costs off the scale, approaching full compensation, to deal proportionately with wider breaches of rules, delaying tactics or other unreasonable behaviour25. The Courts have long recognised this discretion26, provided it is exercised judicially. Actions which cause the other side to waste costs may amount to unreasonable behaviour.

98. The deluge of paperwork and the procedural twists and turns in this case have added appreciably to Future's costs, far beyond what would normally be expected in an opposition and far beyond what has been necessary to determine this opposition, which could have been determined, ultimately, upon the same basis some eighteen months ago. Parties to proceedings before the Registrar have a duty to ensure that the part they play is in keeping with the overriding objective. Parties should not burden each other or the Registrar with unnecessary volume and complication of paperwork. There has been a significant amount of lengthy letters and attachments filed by EIM/Dr Langdell; many of them otiose, many of them repetitious, but all of which needed looking at. Parties must cooperate with each other and the Registrar when requesting hearings and responding to the Tribunal's attempts to arrange hearings and case management conferences.

99. I consider the requisite level of cooperation from EIM/Dr Langdell to have been notable in its absence, despite repeated directions from me and from other officers of the Tribunal. I bear in mind that Dr Langdell's repeated assertions that he had an appeal pending before the Court of Appeal, and an application for judicial review, meant that the Tribunal's officers were required to consider whether this opposition should be suspended. Further investigations revealed that Proudman J had only allowed the possibility of appeal from the revocation part of her decision, which does not have any bearing on these proceedings, and that the Court of Appeal denied EIM the right to appeal the revocation part of her decision. This was an attempt to pull the wool over the eyes of the Tribunal. Dr Langdell persisted in maintaining that the matter was not closed and that EIM would be permitted to appeal; in the meantime, Dr Langdell accused the Registry of acting ultra vires in revoking EIM's trade marks. This all caused delay and work for the Tribunal but, more importantly, it caused work and cost for Future. This part of the dispute took up about 12 hours of professional time. I award Future £2580 for work caused by EIM/Dr Langdell's actions on this issue.

25 Tribunal Practice Notices 2/2000 and 4/2007. 26 Rizla Ltd's Application [1993] RPC 365. Page 47 of 63 100. Dr Langdell's arguments about estoppel have surfaced throughout these proceedings, even since Mr Smith's case management decision and his refusal to grant interim leave to appeal, and were still being raised even after the substantive hearing before me had taken place. Highly unusually, there were two occasions when EIM/Dr Langdell wrote to the Tribunal and attempted to withdraw Future's opposition, on the grounds of power of attorney and the purported assignments at OHIM. The latter attempts took up approximately 5 hours (that I can see from the itemisation sheets) of Abel & lmray's professional time. I award Future £1075 for this work.

101. Future submits:

"The time spent and costs incurred in dealing with the present Opposition are vastly higher than would typically be the case in relation to a standard opposition against registration of a single UK trade mark. Various factors have contributed to the increased cost, including:

• Opposition being filed during pendency of parallel UK court proceedings. • The inclusion of the grounds of bad faith and passing off. Both grounds needed to be pursued to conclusion in view of attacks made by EIM on the CTM owned by Future. • The poor behaviour of EIM leading to increased time and cost on our part: o correspondence going astray or not being sent or not being copied to us, o seeking to change dates of hearings and or/defer proceedings, o volume of material submitted, and the number and length of letters/submissions filed, and o history of dishonest and/or aggressive behaviour, resulting in greater time needing to be spent in analysing any documents submitted by EIM. • Disruptive behaviour and a propensity, on repeated occasions, to submit all arguments and explore all avenues of action, no matter how tenuous or irrelevant (including doing so disregarding earlier Case Management Decisions or in the face of no real prospect of success), including by way of example: o repeated arguments that Future was prevented (or "estopped")from filing the Opposition by virtue of the now-terminated "CTA", o attempts to withdraw the Opposition as if empowered to do so by Future. o oral presentation being unnecessarily lengthy, o desire to appeal/contest all decisions and case management directions, o EIM's insistence on exercising its right to a hearing at every opportunity, some of which being subsequently withdrawn (security for costs hearing for example), and o late-filed submissions including written submissions being filed after a Hearing.

Page 48 of 63 • Basis of opposition insofar as Future's CTM is concerned being complicated by virtue of a sequence of attacks by EIM (whether seeking to assign away from Future or seeking cancellation). • Our being led to believe that at least some of the evidence submitted by EIM had been fabricated.

We repeat our request that an award of costs is made off the scale in Future's favour. As mentioned in the Hearing of 17 February 2014, Future has very low expectations on the likely success of recovering any such costs (over and above the payment made by EIM by way of security in these proceedings of £3,500), having had no success to date in recovering the amount that Mrs J Proudman ordered be paid on account pending a full costs enquiry by the UK court. Not a penny has been paid by EIM to Future in response to that Order (of the High Court of the UK), despite enforcement proceedings having been initiated in the US.

We ask however, in the event that the Hearing Officer makes an award of costs in Future's favour that is off-the-scale (and greater than the £3,500 already paid to the IPO by EIM as security), that the resulting Decision makes a direction that any appeal lodged by EIM against the Decision of the IPO must be subject to payment into the IPO's bank account of an amount that increases the balance already in that account to an amount that is at least as great as the costs so awarded."

102. I referred to the attacks on the CTM in my case management letter of 8 February 2013, reproduced in paragraph 20 of this decision, including Dr Langdell's assertion that in the light of the failed invalidation attempt, and if the subsequent assignment attempts also failed, he would "just re-file" the invalidity application. The attacks on the CTM gave rise to Dr Langdell's repeated requests that the proceedings be stayed (in addition to requests to stay pending the non-existent appeal in the English courts). The stay requests caused copious correspondence and resulted in the case management conference before me on 7 February 2013 (which Dr Langdell alleged was unnecessary). Dr Langdell was unsuccessful in his application for a stay (as evidenced by my letter). More correspondence ensued in relation to the CMC after it had taken place, including a request from EIM/Dr Langdell for leave to appeal. Looking at Future's itemisation of time spent on these proceedings, approximately 19 hours was spent on the CMC. I award £4128 in relation to the CMC and the stay requests which caused it.

103. Also contained in my letter is a reference to the security for costs hearing. Future made an application for security which was granted. EIM/Dr Langdell objected and a hearing was appointed for 18 October 2012. On 8 October 2012, Dr Langdell sent an eight-page letter making a cross-application for security against Future. On 10 October 2012, Dr Langdell wrote to say that he could not attend the hearing on 18 October due to a long-standing commitment and stated that he could not attend a hearing in the two weeks after 18 October 2012 either; i.e. until 1 November 2012. Dr Langdell proposed the date for the hearing should be Thursday 8 November 2012. The Tribunal moved the date to 7 November 2012, because the

Page 49 of 63 request for 8 November 2012 could not be accommodated. Abel & lmray had already indicated that, to minimise costs, it would not attend the hearing, but instead filed written submissions, on 8 October 2012. Abel & lmray wrote again to confirm this and asked that the hearing was not delayed any further. More emails from Dr Langdell ensued, including one which stated that he could not attend on 7 November 2012. On 6 November 2012, Dr Langdell wrote to say that EIM withdrew its application for security and also withdrew its request for a hearing. I see from Future's itemisation of actions that this episode cost it at least 3 hours work. I award Future £645 for this work.

104. In paragraphs 47 and 48 of this decision, I noted that, despite having put Future to the trouble and expense of filing proof of use of its UK mark, the counterstatement referred to Future's use on its magazines and Dr Langdell's skeleton argument said:

It was unreasonable for EIM/Dr Langdell to require Future to prove use on its magazines. EIM/Dr Langdell clearly knew of the use; this was the reason for the 2004 agreement. I consider it appropriate to award Future the costs of having to produce evidence to prove use on its magazines, particularly since I had originally separated the proceedings to deal with the grounds based on the CTM, so as to avoid the necessity for evidence in relation to the UK registration. From the breakdown, I see that the time spent on this activity was about 29 hours. I will award Future its costs of compiling the evidence, which comes to £6,235.

105. It is right to acknowledge the work caused to Future by EIM's/Dr Langdell's repeated failure to copy correspondence, assertions that documents had been sent when they were not received, both of which caused frequent enquiries to be made to the Registry; dealing with EIM's/Dr Langdell's post-substantive hearing correspondence and post-substantive hearing application for summary judgment; the unsuccessful stay request of June/July 2013 pending a decision from the Appointed Person (in relation to Mr Landau's decision, referred to in paragraphs 21 and 24 of this decision); and the belated request for cross-examination. Applying a broad brush, I award Future £2000 for the extra burdens placed upon it by these issues, which I consider to have been obstructive and unreasonable.

106. It is appropriate to award on-scale costs for the preparation of the notice of opposition, together with reimbursement of the opposition fee. EIM/s counterstatement was unusually lengthy for proceedings before this Tribunal (see Annexe 2). For consideration of this I will make an award at the top of the scale. I award Future the opposition fee of £200 plus £600 for filing the notice of opposition and considering the defence, which comes to: £800. In relation to considering EIM's evidence, I will award Future on-scale costs of £2000. I award Future on-scale costs of £800 in relation to preparation and attendance at the substantive hearing.

Page 50 of 63 107. Some of Future's costs are part and parcel of participating in an opposition; I do not suggest that compensation is appropriate for every item on the list submitted. There is a wide spectrum of complexity in oppositions brought before the Tribunal, and the scale allows for this. I also consider that Abel & Imray endeavoured throughout the proceedings to reduce Future's unnecessary costs; as early as February 2012, Abel & lmray's letters contained something along these lines: "In order to prevent any further unnecessary costs being incurred by our client, we intend not to engage in any further correspondence concerning this matter. However, in relation to the specific issues I have outlined above, I consider that they fall outside of what a party would reasonably expect to have to face when it commences an action. The scale is there to signpost to a party the likely costs it will face or expect to receive in a normal case. It is right, since these issues fall outside of the normal case and represent a pattern of behaviour which is unreasonable, to compensate Future for unreasonable costs.

108. Although EIM/Dr Langdell is self-represented, the content of Dr Langdell's letters, submissions and appearances at previous Registry and Court hearings show that his grasp of legal issues is not that of a novice. I am, therefore, not inclined to regard self-representation as an ameliorating factor.

109. The sum of all the individual awards amounts to £20,263.

110. In Future's submissions on costs, it said:

"We ask however, in the event that the Hearing Officer makes an award of costs in Future's favour that is off-the-scale (and greater than the £3,500 already paid to the IPO by EIM as security), that the resulting Decision makes a direction that any appeal lodged by EIM against the Decision of the IPO must be subject to payment into the IPO's bank account of an amount that increases the balance already in that account to an amount that is at least as great as the costs so awarded."

EIM/Dr Langdell has not responded to this submission. Taking into account previous history between the parties in respect of non-payment of costs, including the comments of Mr Hobbs QC in BL 0/043/14, this appears to me to be a reasonable request on Future's part. EIM/Dr Langdell has been given an opportunity to respond to it and has been silent on the matter. The amount of security ordered by Mr Hobbs in the pending appeal, which centres on the CTA agreement, was £12,500, additional to the £1000 already ordered by the Registrar: a total of £13,500. This amount was ordered in relation to the costs of the appeal. This seems to me to be comparable to the case before me. If EIM wishes to appeal my decision, I direct under rule 68(1) of the Trade Marks Rules 2008 that it may do so only if it gives security for costs so that the amount increases to £20,263 plus an additional £13,500 for the costs of the appeal. The amount of security which must be given in the event of EIM lodging an appeal is £30,263 and must be paid into the account at the Intellectual Property Office which already holds the £3,500.

Page 51 of 63 111. In the absence of an appeal, I order The Edge Interactive Media Inc to pay Future Publishing Limited the sum of £20,263. This sum is to be paid within seven days of the expiry of the appeal period.

Dated this 18th day of March 2014

Judi Pike For the Registrar, the Comptroller-General

Page 52 of 63 Annexe 1: Mr Smith's decision of 23 February 2012

*TV: INTELLECTUAL PROPERTY OFFICE

leiront tropem emit 'Fmk NI:111,s Itegi.try Abel & Imray Carderlto:41 20 Red Lion Street Newpolt London South H•alcc WC1R 4PQ NPIO KQQ Suilehbaurd: 01633 1114000 Fax: 01633 81117.$ ~~~~~~~~~~~~~~222250 Our ref Opp 101125 Your ref CPB/DMC/15623 Date: 23rd February 2012

Please quote our complete reference on all correspondence

Dear Mr Pearson,

Trade Mark Application No: 2540453 Applicant: The Edge Interactive Media,Inc

Opposition: 101125 Opponent: Future Publishing Ltd ('Future')

1. I refer to the above mentioned proceedings and to the case management conference ('CMC') held via telephone conference on 15th February 2012. The applicant was not legally represented; instead Dr Langdell spoke on its behalf. John Pearson of Abel & Imray represented the opponent. Also present were Mr Tim Lingard, Solicitor Advocate who had represented Future in High Court proceedings, Mr Mark Millar, Company Secretary of Future and Ms Danielle Cooksley, also of Abel & Imray. At the CMC I reserved my directions and decision and now give them, along with further directions as to these proceedings.

Late filedTM8 and counterstatement.

2, At the CMC I invited comments in respect of two possible legal bases under which I may allow the late filed TM8 and counterstatement into proceedings:- rule 76 (delay or failure of communications), and rule 18(2)(direction not to treat the application as abandoned) of the Trade Marks Rules 2008 ('TMR').

3. Dr Langdell has provided a witness statement dated 25th July 2011 which states he posted and faxed the relevant documents on 9th February 2011, with the deadline being le February 2011. Dr Langdell was not cross- examined on his witness statement, and given the legal bases under which I give my directions below, neither do I consider that would have been appropriate in any event.

4. Mr Pearson nonetheless invited me to take into account Dr Langdell's previous history with regard to service of documents specifically, and

Page 53 of 63 • 1,:t:;V: INTELLECTUAL PROPERTY OFFICE

truthfulness generally.1

5. In his witness statement, and as regards the fax transmission, Dr Langdell has exhibited an accompanying letter which is dated 9th February 2011, including the words "Via Facsimile and Airmail" and, handwritten, the words "Sent OK Feb 9,11". Whilst the Facsimile Confirmation Sheet, also exhibited, does not clearly show receipt by the registry, and nor is there any other evidence that the registry received the fax and, finally, despite the fact the registry has riot been able to trace the original or any record of it, I nevertheless accept the fax was sent when Dr Langdell said it was, in his witness statement, and it simply failed to reach us.

6. As far as the posting by airmail is concerned, this too was not received by the registry and has not been subsequently traced.

7. It is not, then, a case of'delay in the post, but of complete and inexplicable failure of both communication services, facsimile and airmail. However, again, I accept the witness statement of Dr Langdell, together with the exhibited postal certificate, as being true. I have no evidence to the contrary, in particular, as I have said, the registry has been Linable to trace the originals.

8. On that basis I give notice and hereby direct under rule 76 TMR that, due to failure of both the facsimile transmission and the airmail postage, the period for filing the TM8 and counterstatement is extended to the date the documents were actually received by the registry on 4ffi March 2011.

9. As I have said, at the CMC, I also mentioned the possibility that in these circumstances a potentially more general power and direction under 18(2), that I would not treat the application as abandoned, may also corne into play. I stress this is plainly not intended as a 'general discretion' to extend an otherwise inextensible time limit, but it is a power which recognises what has been termed,'extenuating circurnstances2. Such circumstances may, for example, be the failure to receive, and therefore act upon, a notice of opposition. To my mind this has potentially broader application than delay or failure of communications covered specifically by rule 76 TMR.

10. Mr Pearson was opposed to any such direction under rule 18(2), saying his clients were considerably prejudiced by any non-abandonment of the application. Regrettably (for them), this application had not been caught by the decision in the High Court by Mrs Justice Proudman and as such, they were left with burden (including in costs) of opposing it. But beyond that 'prejudice', he did not highlight any specific action or inaction on his client's part which had been undertaken in reliance upon EIM's failure to file the Form

1 In. eg recent proceedings before the I ligh Court(Mrs Justice Proudinaul. permission in been given to bring contempt of court proceedings against Dr Lunt2dell on the basis of Elise statements. 2 These words are used in, cg Bl.. 0-035-11 KIX, n decision or the Appointed Person (para 9).

late!inthad Pmpany Oitce in an epou0ng name , tile Patent Mee viVA , 3\1.90V.t.ti.

Page 54 of 63 .•••- 1!*:.!: INTELLECTUAL PROPERi Y OFFICE

TM8 and counterstatement in time.

11.For his part Dr Langdell said he too would be prejudiced by any abandonment and would, in consequence, simply refile the same application.

12. Bearing in mind, in particular, the fatal circumstances of non-receipt of the documents; the overall length of the delay (the misplaced TM8 and counterstatement were filed on 4th March 2011, whereas the deadline was 15th February 2011); the prompt remedy effected by Dr Langdell once he became aware of the problem; the fact the opponents have not been specifically prejudiced by the delay and must also have been aware a defence was likely, and finally; the very real prospect that a fresh application will simply be filed in the event I bring these proceedings to an end, then, and as an altemative to my direction under rule 76, I direct also under rule 18(2) that the application not be deemed abandoned.

The Opponent's right to oppose in light of the Concurrent Trading Agreement('CTA') dated October 1en 2004 and the parties' relationship.

13.As I understand Mr Pearson's primary position, regardless of the status of the CTA or any other contractual agreement between the parties which may or may not subsist, the registrar simply has no jurisdiction to construe any such agreement, or as a consequence to find that it has no right to oppose. Such matters are private as between the parties and must, accordingly, submit only to jurisdictions responsible for matters of contract.

14. At the CMC, Mr Pearson did not support his proposition with case law3. In, for example, BL 0-289-09 OMEGA.CO.UK, a decision of the Appointed Person at pares 58-77, a co-existence agreement is construed with the object of determining whether an opponent is prevented from opposing an application. In the event, the question of 'estoppel' did not arise since, properly construed, the Appointed Person found that the relevant agreement in that case did not prevent the opponent from opposing.

15.1n this regard, plainly, and as implied in the OMEGA case, by use of the word 'consent' in section 5(5) of the Act, the legislators (including those at Community level, given equivalent provisions) had in mind that a private agreement (or anything else which may amount to 'consent') between the parties overrides any possible 'public' interest in avoiding likelihood of confusion.

16.An applicant in an opposition may, as a consequence, raise a pleading of 'consent' which would then have to be determined by the registrar by, if necessary, proper construction of any agreement. There is, however, no

3 Although in later correspondence he drew my attention to the ease of lit. 0304.0,1 KICT/GUARD, before the Appointed Person, but this case does not support his proposition as a private agreemett is construed on behalf of the registrar with a view to the determination of the existence of an estoppel(in revocation proceedings).

inteitoc(oell Propegy()Mee is an operat;tig ea:ne e the Paten)09 -s.-R

Page 55 of 63 INTELLECTUAL PROPERTY OFFICE

express pleading of 'consent' in this case. Instead, Dr Langdell says the opponents cannot oppose since they are contractually obliged not to. As I understand it, this argument amounts to one of 'promissory (or another brand of) estoppel'4. The words 'promissory estoppel' were not expressly mentioned at the CMC, but it is my understanding from the pleadings and at the CMC that the basis of Dr Langdell's estoppel claim resides only in the CTA, and not in any other aspect or element of the parties' relationship' which may give rise to an estoppel.

17.In my view, Dr Langdell is entitled to make such a pleading in proceedings before the registrar, and I am not jurisdictionally unable to decide the question, on what amounts to a pleading of estoppel. This is consistent with the approach of the Appointed Person in, eg the OMEGA case and the LISTERPOWER case referred to in my footnote.

18.The question however arises, in this case, as to what 'contractual agreement' exactly between the parties is there to be properly construed ? By Judgment and Order of the High Court dated 7Ih July 2011 in Claim HCO9 CO2265, the CTA was declared 'terminated with effect from 20th August 2010' by Mrs Justice Proudman. The opposition against this application was lodged on 28m October 2010.

19. I have also been supplied with a copy of an Order dated 7th February 2012, whereby Lord Justice Lewison of the Court of Appeal refused a stay of execution of Mrs Justice Proudman's Order of 7th July 2011 and also refused permission to appeal. This Order cannot be appealed to the Supreme Court. I have also been furnished with an e-mail from a Mark Brown, dated 10th February 2012, in Case Progression Group A in the Royal Courts of Justice, in response to two e-mails from Dr Langdell dated 9Ih February 2012. The e- mail says that as far as Dr Langdell's application for a judicial review is concerned, the Court of Appeal does not have jurisdiction to consider the application, that the stay of execution of Mrs Justice Proudman's Order has now lapsed, and the e-mail concludes by saying, "Our file on this matter is now closed".

20. Despite this, Dr Langdell disputes that all avenues to overturn Mrs Justice Proudman's Order are exhausted. He says the Civil Procedure Rules(CPR') 52.15 allow for an application for permission to bring judicial review although he says, in a subsequent e-mail to me dated 161h February 2012, he "understands that this course may not be open to us". He also says there is a possibility, under rule 52.17 CPR, he can pursue an application to 'reopen the final appeal' based on what he claims to be fresh and decisive evidence.

21.There is also the question of FIM's (and others') separate claim against Future. This was lodged in the High Court a day before Mrs Justice

Such an argument around `promissory estoppel' was dealt with by the regisuat in, eg BI, 0033-5 LISTERPOIVER, although tho facts were different than in this case and instead. involved a letter of consent from which the opponents sought to resile. Whilst the facts are different, at issue here is the reistrar's 01st-fiction.

Intellectual PtoPeny °Mee t. an ovela:inu name o' the ?Weil Vf.Ca

Page 56 of 63 •• et* 11:40 e• • 't • • le INTELLECTUAL PROPERTY OFFICE

Proudman's Order and seeks, inter alia, 'rescinding', as distinct from termination, of the CTA. As I understand the status of this claim, it is left 'hanging' at the moment with the theoretical possibility that, since service was acknowledged by Future but no defence was timely filed, EIM may file a motion for summary judgment based on default. If granted, Mrs Justice Proudinan's Order (including, as regards the CTA) will be overturned says Dr Langdell. For its part, Future disputes that the claim was properly served in any event and therefore it did not file a defence. It also says, and has asked the High Court to be placed on record, that if judgment in default is sought that it will immediately apply for security for costs and if that is provided, to apply also to have this claim struck out for abuse of process.

22.In the face of a copy of the Court of Appeal's Order that permission to appeal is refused, any theoretical possibility that the Court may reopen or overturn Mrs Proudman's declaration that the CTA is terminated provides altogether too vague and uncertain a basis upon which to treat the contractual obligations under the CTA, which Future were under, as remaining, for my purposes, undetermined by the court.5

23. Nor, finally, do I agree with Dr Langdell's submission that even if the CTA is terminated, the prior 'perpetual licence' between the parties dated 1996, in some undefined and inexplicable way,'survives the CTA'. There is simply no legal basis for this. This was, itself, terminated on execution of the CTA.

24.Thus, as far as I am concerned, in light of Mrs Justice Proudman's Order and the Order of the Court of Appeal, there is simply no contractual agreement between the parties and relevant at the time of opposition, for me to construe in any event.

25. Consequently, I reject the claim by EIM that these proceedings should be stayed pending the outcome of all possible avenues to disturb Mrs Justice Proudinan's Order t also reject the claim by EIM, insofar only as the CTA is concerned, that Future has no right to oppose, or is otherwise estopped from opposing the application. The opposition is therefore properly launched and should continue before the registrar6

Further proceedings and directions

26. My finding above plainly impacts upon the content of the counterstatement in particular, but prior to giving any directions in that regard, I invite Future to

Obviously, this is not to deny EIM the right to notify the registrar of action before the Court which may reopen Mrs Justice. Proudman's Order. By `action% i expressly donor however include the mete possibility of seeking delimit judgment in EIM*s claim, or any other mere theoretical possibility. 6 I regard this as a (fully reasoned) interim decision (in contrast to the directions given its relation to the late filed Form TM8 and counterstatement) under rule 70(21 IMP.and it can accordingly only be appealed independently of any final decision with leave. If lenve to appeal is to be sought I ask that this be put in writing within 7 days of this letter and copied to the other side which has o further 7 days in ulliCh to comment. I will then decide the matter.

IPIeltectum Pmr,orty Offtco m on 5tMI:6119 MAO of the Patent Oftce rivea tit)V.UN

Page 57 of 63 • 411••• e,• 42 ♦ • • * INTELLECTUAL • • • • PROPERTY OFFICE

address the question whether these proceedings would benefit from a separation of the grounds of opposition. Specifically. whether in the light of the status of its earlier marks (unregistered at present) before OHIM, it considers its section 5(4) ground may be best resolved now, as a separate ground, prior to registration of its earlier marks.

27. A period of two weeks from the date of this fetter7 is allowed for reply, whereupon t will allow Dr Langdell to respond before giving further directions. do not anticipate any need for an oral hearing in this matter.

Costs

28.1 place on record Mr Pearson's request for 'off the scale' costs should Future prevail in these proceedings. l am making no determination of costs at this time in relation to the matters before me. I would just observe that

A letter on exactly the same lines and of the same date is being sent to the other side.

Yours sincerely,

Edward Smith Assistant Principal Hearing Officer For the Registrar, the Comptroller General

7 I appreciate this period runs concurrently with the period 1 have set for seeking leave to appeal.

Intellectual Pcoper,y tYi is :in c..ethetinc, nethe of the Pffieth lMf- VAV.V;(,1

Page 58 of 63 Annexe 2: the counterstatement

19R-62 97:00P FROM: 6268144334 TO:011441633811175 P.5

TRADE MARKS ACT 1994

UK Trade Mark Application No. 2540453 EDGE in the name of The Edge Interactive Media Inc

And

Opposition thereto by Future Publishing Limited

Counterstatement

1. Applicant is owner of UK Trade Mark Registration No. 1562099A(EDGE) as well as a series ofother UK Trade Mark Registrations Nos. 2147013A(THE EDGE), 2147008A(EDGE 3D), 2147022A(MAGIC EDGE),2147035A (EDGE NET), 2147040A(GAMER'S EDGE) as well as the current application for EDGE in classes 9 and 41.

2. Opponent has a contractual agreement dated October 15, 2004 with Applicant prohibiting Opponent from opposing any trademark applications made by Applicant in the UK for the mark EDGE. Opponent is thus contractually bared from filing this Opposition and it is thus moot and should not be considered.

3. The 2004 contractual agreement between the Opponent and Applicant restricts Opponent's ownership ofthe mark EDGE to a limited subset of Class 16 printed matter rights(computer game magazines). Further, this 2004 agreement expressly prohibits the Opponent from using the mark EDGE for any purposes in classes 41 or 09 other than to use the mark for a very limited range of purposes such as the electronic publication of their print computer game magazine, however according to the 2004 agreement all of Opponent's use ofthe EDGE mark for such purposes is strictly solely under license from Applicant, with all right, title, interest and goodwill arising from such use of the EDGE mark by Opponent in UK commerce vesting in Applicant (not in Opponent).

4. Under the 2004 agreement between the parties, all trademark applications that Opponent does for the mark EDGE that include goods and services other than in the limited subset of class 16 permitted to Opponent are by contract applied for jointly on behalf of both the Opponent and Applicant. Opponent's cited European Community Trade Mark Application No. 007178973 for the mark EDGE is just such an application since it is for a broad range of goods and services, nearly all of which are those Opponent agreed are to be owned solely by Application per the 2004 agreement. Consequently, when this Community Trade Mark matures to registration, the 2004 agreement compels Opponent to assign all of it to Applicant other than the subset of class 16 that deals with

Page 59 of 63 '1AR-6 al 07:00P FROM: 6268444334 TO:011991633811175 P.6

computer game magazines in printed matter form. Hence while Opponent cites this Community Trade Mark Application as if it is against us and against our instant application, in fact that application is in real terms mostly our application, not Opponent's. They therefore cannot cite it against us in opposing the instant application.

5. Applicant has been using the marks EDGE and THE EDGE, and a family of EDGE formative marks, in UK commerce since or about 1984 for goods and services relating to computer and video games and sundry other goods and services. Applicant's use of these EDGE marks in UK commerce, and indeed Applicant's ownership of its common law and registered trademark rights in EDGE and THE EDGE substantially predate any rights of Opponent, which as we say above are limited to just computer game magazines in class 16.

6. Applicant owns the UK Trade Mark Registration No. 2147013A for the mark THE EDGE for essentially the same goods and services as we have applied for in the instant application (computer games and online services relating to computer games). Since in UK trademark law the word the is ignored when comparing marks for similarity or likelihood of confusion, Applicant thus already essentially owns the instant mark"EDGE" since it owns the mark"THE EDGE" in classes 09 and 41 for essentially the same goods and services, and/or for goods and services highly similar to those in the instant application.

7. Opponent thus has no grounds for opposing the instant application since it is contractually forbidden to file any such opposition. The agreement between the parties also governs the trading habits ofthe two parties and calls upon Opponent to trade such that they will never use the mark EDGE for any of the goods and services listed in the instant application, other than those(such as electronic publication of magazines or similar) where use by Opponent is solely under license from Applicant, all right, title, interest and goodwill arising from all of Opponents such use vesting in Applicant.

8. There can be no likelihood of confusion, then, since by the 2004 agreement the parties are obliged to trade such that there is no confusion. And in any event the concept of confusion is not relevant here since Applicant uses the mark EDGE for computer game and video game software and has done so continuously in UK commerce since or about 1984. By contrast, Opponent has never used the mark EDGE for such goods and the 2004 agreement prohibits Opponent from ever doing so. As to the class 41 rights, insofar as they relate to electronic publication of game news, game magazines, etc, then while Opponent has made such use in UK commerce, they have only ever done so under license from Applicant since the first ever use by Opponent up to and including the current day (and in perpetuity in the future, according to the 2004 agreement). The rest ofthe class 41 goods and services refer to goods and services that Applicant has made use of the mark EDGE in respect to, or has a bone fide intention to do make such use, whereas the Opponent has never used the mark EDGE for such goods and services, and is contractually barred from ever doing so by the 2004 agreement with Applicant.

Page 60 of 63 1AR-61 ,11 07:01P FROM: 6268444334 TO:011111633811175 P.7

9. In the alternate Opponent would has no valid grounds for opposing the instant application since Applicant has priority of use ofthe marks EDGE and THE EDGE in UK commerce dating back to 1984, with all such use relating to computer and video games being continuous and genuine at all times for the past 26 years.

10. The application should thus not be refused in respect to the alleged identical goods under provisions of Section 5(1) of the Trade Marks Act 1994("the Act") since Applicant has priority of ownership ofthe mark EDGE and the essentially identical mark THE EDGE in UK commerce. There is no basis for refusing the application under these provisions.

11. Similarly, for the reasons stated above, the application should not be refused under provisions of section 5(2)(a) ofthe Act.

12. While Opponent may have some goodwill in respect to the mark EDGE for the very limited subset of class 16 rights of printed matter game magazines, Opponent does not own any ofthe rest ofthe goodwill it lists in paragraph 8 of its Statement of Grounds, since any such use it has made for other goods and services of the mark EDGE in UK commerce have been strictly under license from Applicant, with all goodwill arising from such use vesting in Applicant, not in Opponent. In the alternate, such use that is not covered by the license agreement between the two parties stands as a breach of Applicant's trademark rights, and as such the Opponent cannot claim goodwill arising from use that was made in infringement of another company's rights.

13. The parties have a 2004 agreement that governs the trading of the parties such as to avoid any real possibility of confusion in the minds of any UK consumers, and thus there is no valid grounds for refusing the instant application based on any allegation by Opponent that confusion might arise. Certainly, in the 17 years of the agreement between the parties to-date (since the 2004 agreement back dates Opponents use under license from Applicant to their first ever use ofthe mark EDGE in 1993), there has been no evidence of any confusion in the minds of the UK consuming public between Applicant's use of the mark EDGE and Opponent's use. Were there such confusion, it would be a breach by Opponent and thus not a basis for Opponent to validly oppose this application.

14. The application should not be refused under section 5(3) of the Act since Applicant's use in UK commerce of the mark substantially predates that of Opponent by over a decade, and Applicant's use ofthe mark in the past 26 years has been for a vastly greater array of goods and services relating to computer games than the use ofthe mark by Opponent — which has been limited to the publication ofa game magazine, all electronic reproduction of which has been solely under license from Applicant. There can be no question, then, of Applicant taking unfair advantage, or etc, as alleged by Opponent in paragraph 9 of its Statement of Grounds.

15. Applicant has been selling its goods and offering its services all related to the mark EDGE and the essentially identical mark THE EDGE continuously for over 26 years. And this use substantially predates any use by Opponent. It is thus a nonsense for

Page 61 of 63 IAR-6--1.1 07:02P FROM: 6268444334 TO:011441633811175 P.8

Opponent to suggest that any use by Applicant would tarnish the reputation associated with Opponent's use of the mark, but in any case there is no restriction on Applicant in the agreement between the parties that would confine Applicant to only producing certain goods or services of a certain high or low quality. This ground for opposition or refusal is thus not relevant and not valid, and the application should not be refused under section 5(3)of the Act per paragraph 10 ofthe Opponents Statement of Grounds.

16. The suggestion that Applicant's use could amount to passing off is absurd. Applicant sued Opponent in the UK High Court in 1994, accusing Opponent of passing off on Applicant and accusing Opponent of infringing Applicants registered and common law trademark rights in the mark EDGE. Those 1990s proceedings were terminated with a 1996 settlement between the parties, which settlement was entirely in Applicant's favor. It is thus absurd for Opponent to suggest 14 years following the settlement that now use by Applicant could ever been seriously considered as passing off on Opponent. Accordingly, the application should not be refused under section 5(4)(a) of the Act.

17. The statement in paragraph 12 of the Opponents Statement of Grounds makes no sense. Of course Applicant is aware that it assigned very tiny portion of its UK registered trademark rights to Opponent, and is also aware that it refused to assign any of Applicant's other registered rights or common law rights in the marks EDGE or THE EDGE to Opponent. Opponent is also aware that there is no contesting of the mark between the parties since all dispute over the mark was settled in 1996(with that settlement baring either party from commencing any new dispute over the mark in future, ever), and the 2004 agreement governs all use of the mark EDGE in UK commerce by the parties such that there has been no dispute between the parties and, by the temis of the 2004 agreement, cannot be a dispute over the mark EDGE between the parties. This 2004 agreement makes very clear that the goods and services in the instant application can only be registered in the name of the Applicant, thus there is no question of any contested mark here, or any dispute that could permit Opponent to have any valid grounds for opposing the instant application.

18. While Applicant remains confident that the High Court proceedings fill find that there is no merit in Opponent's claims regarding copyright infringement, passing-off or breach of contract, even were any of those claims to go against Applicant that would still not impact this instant opposition at all. All of Opponent's claims against Applicant for copyright infringement do not bear on the question of who is the real owner of the trademark rights in the mark EDGE,and that issue is not in dispute between the parties, with Opponent continuing to accept Applicant's priority of rights in the mark. Similarly, the passing-off allegations do not have bearing on this application either, since they too do not go to whether Applicant owns its claimed rights in classes 09 and 41 to the mark, and no decision by the High Court in this regard could impact the instant application. Last, the breach of contract referred to by Opponent also could not lead to any decision by the High Court that could impact Applicant's rightful ownership — and priority of ownership — of the mark for all the goods and services in the instant application.

Page 62 of 63 IAR-61 .11 07:02P FROM: 6268444331 TO:0114141633811175 P.9

19. The statement in paragraph 14 of Opponent's Statement of Grounds is false, and they knew it to be false when they wrote it. The revocation actions they refer to for our various registered UK EDGE marks were withdrawn in October 2010, well before Opponent filed its Statement of Grounds. Thus while it is true those revocations were filed prior to the filing date of the instant application, that fact is moot given all the revocations were withdrawn with Applicant's UK rights in the EDGE marks being affirmed by the settlement with that party that had filed those revocations.

20. Opponent's statement in paragraph 15 of its Statement of Grounds is deliberately misleading, irrelevant and stated to defame Applicant. The US proceedings referred to by Opponent were with the party referenced in 19 above, and the comments made by the judge were solely in respect to certain US trademark applications and registrations. No such suggestions or statements were made about Applicant's UK trademark registrations or applications, and it is outrageous that the Opponent should try to blur and confuse the two issues. Further, it is a stated in the US proceedings that the judge fully acknowledged that(since he had only considered Electronic Arts version of events and preliminary evidence, and had not yet heard Applicant's version of events or seen Applicant's counter-evidence) the decision on such issues might be completely the different at trial. The judge thus confirmed that his initial view regarding any fraud might well be completely changed at trial when Applicant had had the opportunity to respond to the allegations. As it happens, the matter settled and there was no trial, but the observations made by the judge were in fact entirely a mistake caused by the deliberately misleading false presentations made by Electronic Arts that confused the judge. In any event, no one, certainly not the Opponent, has ever suggested that any of Applicant's UK marks were ever fraudulently obtained, and we note that Opponent does not take dare to make that false accusation here.

21. As noted above, Applicant's use of and rights in the mark EDGE substantially predate any rights and use by Opponent, and thus the argument presented in their paragraph 16 is also without merit. Applicant is seeking registration solely to trade in accordance with honest practices and there is no sense in which Applicant's conduct in filing the application falls short of any standards acceptable for commercial behaviour. There are thus no valid grounds for the application to be refused under the provisions of section 3(6) ofthe Art and the application has certainly not been made in bad faith.

22. Applicant thus respectfully requests that the Opposition be denied in its entirety, the mark be permitted to go forward to registration, and Applicant requests and award of costs in its favour.

Page 63 of 63 Exhibit ORS 0/283/12

IN THE MATTER OF AN APPLICATION BY THE EDGE INTERACTIVE MEDIA, INC FOR THE RECORDAL OF PARTIAL ASSIGNMENT OF TRADE MARK REGISTRATION NOS 2552136 AND 2552147 1) This is an unusual case as it relates to a dispute before the Intellectual Property Office (IPO) in relation to the proposed assignment of trade marks. It is not unusual for the IPO to be involved in a dispute after assignment, where a party seeks rectification of the register.

2) In rule 77 of the Trade Marks Rules 2008 (the rules) proceedings are defined in the following terms:

—procedings before the registrar" means any dispute between two or more parties relating to a matter before the registrar in connection with a trade mark."

This decision relates to a dispute between a putative assignee and the registered proprietor of the trade marks and so must be considered to be proceedings before the registrar.

3) The dispute is between Future Publishing Limited (Future) and The Edge Interactive Media (EIM). Dr Timothy Langdell is the controlling mind of EIM and Edge Games Inc and represented EIM at a hearing by telephone conference which took place on 19 July 2012. Future was represented by Mr Jim Pearson of Abel & lmray.

4) Key to the issues before the Intellectual Property Office is the judgment of Proudman J of 13 June 2011 in Future Publishing Limited v The Edge Interactive Media Inc, Edge Games Inc and Dr Timothy Langdell [2011] EWHC 1489 (Ch) and the subsequent order of Proudman J of 7 July 2011. In the judgment, Proudman J set out the history of the relationship between the parties:

-3-9. In October 1993 Dr Langdell issued proceedings against the claimant for passing off, alleging that he had unregistered rights in the mark EDGE. On 11 th February 1994 Dr Langdell applied to register the trade mark EDGE in the class 16 (printed matter) category in respect of various items including gaming magazines. The action was stayed pending payment by Dr Langdell of security for costs but was then settled by an agreement dated 4th December 1996 ("the 1996 Agreement"). By that date, the claimant as well as EIM had applied to register the name EDGE in the class 16 (printed matter) category.

Page 2 of 16 under the name EDGE or any colourably similar mark. EIM was prohibited from claiming any association or connection with EDGE magazine or with the claimant, save that in response to an unsolicited request EIM could confirm that it had licensed the mark EDGE to the claimant in relation to EDGE magazine.

42. Agreement was reached in 2004, both with EIM and with Dr Langdell. The result was a Concurrent Trading Agreement ("CTA") with EIM and a Deed with Dr Langdell. Each was paid a substantial sum of money in consideration of entering into the deeds, $250,000 to EIM and $25,000 to Dr Langdell, although the total sum was paid into Dr Langdell's bank account.

"EIM Softek and Future wish to settle the Proceedings and all actual and potential disputes between them relating to the publication by Future of EDGE Magazine upon the terms hereinafter appearing."

This contention is misconceived as it ignores the fact that the 1996 Agreement was expressly (see Recital 4 of the CTA)terminated and replaced by the CTA.

"Printed matter and publications, namely magazines, newspapers, journals, columns and sections within such magazines, newspapers and journals, all in the field of business, entertainment and educations relating to computers, computer software, computer games, video games, hand-held games and other interactive media."

The Register of Trade Marks was duly amended accordingly, with a suffix "A" for EIM's marks and a suffix "B" for the claimant's marks.

Page 3 of 16 45. The assignment included all rights in the agreed part of the trade marks,

"including all goodwill attaching to the use of the Agreed Part of the Trademarks in class 16 and all rights of action, powers and benefits arising from ownership of the Agreed Part..."

"Trademarks" was defined as including not only the registered marks but also "all unregistered trademark rights of EIM in those marks."

46. Under clause 2.1.2 of the CTA, EIM granted the claimant certain licensed rights, making it clear that EIM could not object to the claimant using the mark EDGE in relation to electronic publications. By Clause 2.9, the claimant undertook not to use the mark EDGE outside the publication of computer games magazines, their associated marketing and promotion and the uses covered by clause 2.1.2."

5) Dr Langdell's case rests on clause 2.8 of the CTA which states:

—Sbject to Clauses 2.6 and 2.7, Future further undertakes that it shall not without prior written consent from EIM at any time on or after Completion register or apply to register in any country or otherwise use any trademark which is the same as or similar to the Trademarks (or any one of them) in respect of goods or services other than those detailed in the Assigned Rights or as permitted pursuant to clause 2.1.2. In the event that Future shall register or apply to register in any country any such trademark in breach of this Clause 2.8, Future shall forthwith and without prejudice to any other rights of EIM under this Agreement and Deed assign all right, title and interest in such trademark(s) in respect of those goods and services, to EIM (at EIM's reasonable cost) on the same terms as those set out in this Agreement and Deed, save that no fee shall be payable by EIM to Future in respect thereof. To guarantee compliance by Future with their obligations under this Clause 2.8, Future irrevocably appoints EIM, with further power to delegate its powers to any director or other duly authorised officer of EIM, to be their true and lawful attorney and to do and perform any acts and to execute any documents necessary or desirable in connection with this Clause 2.8 and Future hereby undertakes to ratify whatever EIM shall do or cause to be done under this power of attorney. Save however, Future shall be free of the restraints on it imposed by Clause 2.6, Clause 2.7 and this Clause 2.8 in the event that EIM should cease use of the mark and brand EDGE for a continuous period of five years or more or becomes insolvent or ceases trading."

Page 4 of 16 6) Section 25(1) of the Trade Marks Act 1994 (the Act) states:

—25- (1) On application being made to the registrar by-

(a) a person claiming to be entitled to an interest in or under a registered trade mark by virtue of registrable transaction, or

(b) any other person claiming to be affected by such a transaction, the prescribed particulars of the transaction shall be entered in the register.

(2) The following are registrable transactions-

(a) an assignment of a registered trade mark or any right in it;"

Rule 49 states:

—49-(1) An application to register particulars of a transaction to which section 25 applies or to give notice to the registrar of particulars of a transaction to which section 27(3) applies shall be made—

(a) relating to an assignment or transaction other than a transaction referred to in subparagraphs (b) to (d) below, on Form TM16;

(b) relating to a grant of a licence, on Form TM50;

(d) relating to the grant, amendment or termination of any security interest, on Form TM24; and

(e) relating to the making by personal representatives of an assent or to an order of a court or other competent authority, on Form TM24.

(2) An application under paragraph (1) shall—

(a) where the transaction is an assignment, be signed by or on behalf of the parties to the assignment;

(b) where the transaction falls within sub-paragraphs (b), (c) or (d) of paragraph (1), be signed

by or on behalf of the grantor of the licence or security interest, or be accompanied by such documentary evidence as suffices to establish the transaction.

(3) Where an application to give notice to the registrar has been made of particulars relating to an application for registration of a trade mark, upon registration of the trade mark, the registrar shall enter those particulars in the register." Page 5 of 16 Consequently, an assignment is a transaction and for an assignment to be recorded there has to have been a transaction ie an action.

7) On 5 July 2010 Future Publishing Limited filed applications to register the trade marks EDGE and EDGE 8) The applications were published for opposition purposes on 1 October 2010 and the registration procedures were completed on 25 November 2011 in respect of the following goods and services:

Class 09:

Downloadable electronic publications; downloadable electronic publications relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; printed publications in electronically readable form; printed publications in electronically readable form relating to on-computer, on- console and online gaming, computer games software, computer hardware and related accessories; recorded media containing pre-recorded electronic publications; recorded media containing pre-recorded electronic publications relating to on- computer, on-console and online gaming, computer games software, computer hardware and related accessories; computer console games; video game programs; computer games software, computer hardware; computer games software downloadable from the Internet; sound, music, image, video and game data files obtainable by stream access for computers, communications apparatus, and mobile telephones; software applications for use on games equipment or devices, mobile telephones, personal digital assistants (PDAs), or mobile computing devices; downloadable audio and video files; downloadable audio and video files featuring gaming-related content, computer games software, computer hardware and related accessories; parts, fitting and accessories in class 9 for the aforementioned goods.

Class 16:

Printed matter, printed publications and magazines all relating to on-computer, on- console and online gaming, computer games software, computer hardware and related accessories; printed matter; printed publications; magazines.

Class 35:

Advertising, promotional and marketing services for others; providing business and marketing information; computerised electronic on-line retail store services connected with the sale of on-computer, on-console and online gaming goods,

Page 6 of 16 computer games software, computer hardware, and related accessories; business advice and information relating to on-line retail store services.

Class 38:

Telecommunications services; network transmission of sound, data or images; broadcasting services; audio and video broadcasting services over the Internet, audio and video broadcasting services via electronic communications networks; broadcasting of media, sound, data or images relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; broadcasting of audiovisual content via stream, download, or other means to wired or wireless devices; podcasting services; enhanced transmission of audio and/or visual content and transmission of really simple syndication (RSS) feeds via a global computer network or other electronic or digital communications network or device; transmission of audio and/or visual content and transmission of really simple syndication (RSS) feeds concerning on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; providing on-line chat room services for transmission of messages among computer users; providing on-line chat room services for transmission of information concerning on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; providing access to on-line electronic bulletin boards; providing access to on-line electronic bulletin boards for transmission of messages among computer users concerning on- computer, on-console and online gaming, computer games software, computer hardware and related accessories; providing Internet access to online blogs, discussion groups, chat rooms and electronic bulletin boards; providing access to an internet discussion website; transmission of news and information via the Internet; transmission of news and information via the Internet relating to on-computer, on- console and online gaming, computer games software, computer hardware and related accessories.

Class 41:

Organising, arranging and conducting shows, conferences, seminars, awards ceremonies and competitions all relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; entertainment services; information relating to entertainment, provided on-line from a computer database or the Internet; information relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories, provided on-line from a computer database or the Internet; providing on-line electronic publications (non-downloadable); publication of magazines, books and journals on-line; publication of magazines; publication of printed matter relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; on-line gaming services; video game services; Page 7 of 16 electronic games services or on-line gaming services provided on-line from a computer database or the Internet; providing a website featuring an array of video gaming-themed merchandise, video recordings, video stream recordings, interactive video highlight selections, on-line computer games, video games, interactive video games, action skill games, trivia games, and video gaming news; streaming audio and video content relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; entertainment in the form of television programmes; production of television programmes and other audio-visual media; television entertainment services relating to on-computer, on- console and online gaming, computer games software, computer hardware and related accessories; production of television programmes relating to on-computer, on-console and online gaming, computer games software, computer hardware and related accessories; information and advisory services relating to the aforesaid services.

9) On 2 July 2010 solicitors acting for Future wrote to EIM. The letter included the following:

—6r the avoidance of doubt, we hereby put you on notice that your client's breaches of the CTA complained of in the Particulars of Claim amount to a repudiation thereof and with effect from today's date our client accepts that repudiation and treats the CTA as discharged."

10) On 7 February 2011 an email was received by the IPO from Dr Langdell in which he stated that EIM had filed oppositions to the registration of the trade marks on 26 November 2010. He attached copies of the forms TM7 which he had claimed that he had filed. (Forms TM7As, warning of an intention to oppose had been received by the IPO.) In relation to Community trade mark no 7178973 upon which EIM relied, he had written:

—Plese see the attached Statement of Grounds (this mark is contractually owned by The Edge Interactive Media Inc under agreement with Future Publishing Ltd — except for —(knputer Games Magazines" in Class 16. Even though Future is shown as the owner of the CTM database, EIM is the true owner of most of the application as per the agreement between Future and EIM).II

11) There is no mention on the form TM7 or the statement of grounds of the assignment of the trade marks to EIM. In his e-mail Dr Langdell wrote:

-We remain very concerned that our oppositions be processed since we own the exact same mark for the same goods and have long standing registrations for these EDGE marks."

Page 8 of 16 The IPO responded on 7 February 2011 requesting fax transmission records and proof of posting.

12) On 11 February 2011 the IPO wrote to Dr Langdell again requesting fax transmission records and proof of posting. No response was received to this request.

13) On 13 June 2011 Proudman J issued a judgment in Future Publishing Limited v The Edge Interactive Media Inc, Edge Games Inc and Dr Timothy Langdell [2011] EWHC 1489 (Ch). In this judgment she found:

-6-3. In deciding that the defendants' breaches were fundamental, I take into account the following matters. First, the breaches are of critically important terms of the CTA and the Deed. They are breaches of the terms regulating the ongoing obligations of the parties. Clause 2.4 of the CTA balances the restrictions on the claimant's use of the EDGE logo in areas in which EIM had no interest by protecting the claimant's independent goodwill in the area allocated to it. As Scrutton LJ said in Gibaud v. Great Eastern Rly [1921] 2 KB 426 at 435,

67. Termination of a contract by acceptance of repudiation can be effected notwithstanding the prior acquisition of rights unconditionally acquired. Accordingly the assignment to the claimant of goodwill and registered trade mark rights in the name EDGE and the payments to EIM and Dr Langdell of consideration under the agreements do not prevent termination. Each side is entitled to retain those benefits: see Chitty on Contracts(30 th Edition) at 24- 051 and cases therein cited.

Page 9 of 16 69. However this was a case in which the breaches were persisted in by the defendants. In those circumstances the fact that the claimant continued to press for performance should not preclude it from treating itself as discharged from its obligations under the contract. The claimant is not discharging on account of the original repudiation and trying to go back on an election to affirm. It is instead treating the contract as being at an end on account of the continuing repudiation reflected in the other party's behaviour: see Chitty (above) at 24-004 and cases therein cited.

70. I therefore find that the claimant has accepted the defendants' repudiatory breaches and validly terminated the CTA."

14) On 7 July 2011 Proudman J issued an order in relation to the dispute between Future and Dr Langdell. In this order she held, inter alia:

—St is hereby declared that the Concurrent Trading Agreement (as defined in Annex 1 hereto) terminated with effect from 20 August 2010."

—7The Claimant [Future] has permission to bring proceedings against the Third Defendant [Dr Langdell] for contempt of court by reason of the Third Defendant's false statements in his witness statements dated 17 September 2010 and 29 November 2010."

—13The Defendants' applications for a stay of execution of judgment, permission to bring proceedings for contempt of court and permission to appeal the judgment of 13 June and this Order are dismissed."

15) On 12 December 2011 the IPO received a letter from Dr Langdell. In this letter he wrote that he has sent proof of the timeous filing of the oppositions. In the letter he wrote:

—11wever, as we mentioned in prior correspondence, the Applicant Future is barred from filing these two applications by the written contract they have with us that forbids them from doing so Since we shall be asking the UK High Court to order Future to withdraw the applications, should the IPO not be minded to reject the applications based on the contract then we ask that that the applications be STAYED pending the outcome of the UK High Court matter."

16) On 19 December 2011, Dr Langdell was advised by the IPO that the proof requested by the IPO had not been received. He was advised that the applications had been registered and that his only option was to seek their invalidation.

17) On 7 February 2012 Lewison LJ refused leave to appeal against the judgment of Proudman J. In his judgment Lewison LJ, at paragraph 7, stated:

Page 10 of 16 —Seond, in support of the claim that there had been genuine use, Dr Langdell placed doctored and forged emails before the court and then declined to cross-examine the witness who gave evidence to the effect that the emails had been doctored."

In his order Lewison LJ ordered:

—fie applications for a stay of execution and for permission to appeal be refused."

18) On 7 March 2012 a form TM16 was received by the IPO seeking the assignment of the registrations to EIM in respect of all goods and services in classes 9, 35, 38 and 41 and part of the goods of class 16. The form was signed by Dr Langdell. In support of the assignments he attached a copy of the CTA (which had been repudiated). He also attached a letter in which he stated:

—fils assignment is filed in accord with clause 2.8 of the 2004 Agreement between Future and ourselves."

In the letter there is no reference to a deed of assignment.

19) On 22 March 2012 the IPO wrote to Future to ask for its comments on the proposed assignments.

20) On 27 March 2012 Future advised that a copy of the application for assignment had not been received from EIM.

21) On 29 March 2012 Future wrote to the IPO in which it referred to the repudiation of the CTA. It denied that EIM or Dr Langdell had the power to assign its trade marks.

22) In a letter dated 4 April 2012 Dr Langdell claimed that EIM possesses an irrevocable power of attorney granted to it by Future in July 2010 (sic). Dr Langdell based this claim on his interpretation of clause 2.8 of the CTA. Dr Langdell wrote that the appeal process in relation to the judgment of Proudman J had not been exhausted as EIM was in the process of filing a rule 52.17 (of the Civil Procedure Rules) application to reopen the proceedings.

23) In a letter of 27 April 2012 Dr Langdell wrote:

—Bilthat is moot in this instance since Edge Interactive became the legal owners of the instant Trademark Applications Nos 2552136 and 2552147 in July 2010, a month before the date of the High Court Order states the Agreement is to terminate in August 2010."

Page 11 of 16 Attached to the letter was a deed of assignment bearing the date of 30 July 2010. The deed of assignment has been signed by Dr Langdell as assignee and assignor. The basis of his position as assignor is paragraph 2.8 of the CTA.

24) On 17 July 2012 Dr Langdell attached to his skeleton argument for the hearing a copy of a letter that he states was sent to Future Publishing Limited . The letter bears the date of 30 July 2010. The letter states that Dr Langdell is invoking 2.8 of the CTA to assign the applications to EIM for all goods other than printed game magazines in class 16. The rear of the letter bears a certificate of mailing created and signed by a Cheri Langdell; it claims that the letter was sent to Future. Future denies receiving any such letter. Dr Langdell also attached an affidavit signed on 16 July 2012. In the affidavit he states that on 30 July 2010 he —hivoked the irrevocable power of attorney granted to Assignee to execute any document necessary to cure Future's breach of Clause 2.8. Accordingly on July 30, 2010 I signed the DEED OF TRADEMARK ASSIGNMENT (-the Assignment") exhibited hereto, executing the document on behalf of the Assignee as its CEO, and also on behalf of Future under the power of attorney granted to me by Clause 2.8 of the Contract." The deed of assignment is not attached. However, he does attach a deed of assignment that he effected on 17 July 2012; in which he is assignee and assignor again. Future denies receiving the letter that Dr Langdell states was sent to it on 30 July 2010.

The effect of the order of Proudman J

25) Dr Langdell has argued that the order of Proudman J cannot be put into effect as he intends to make an application for leave to appeal under rule 52.17 of the Civil Procedure Rules (CPR):

—5217 (1) The Court of Appeal or the High Court will not reopen a final determination of any appeal unless —

(a)it is necessary to do so in order to avoid real injustice;

(b)the circumstances are exceptional and make it appropriate to reopen the appeal; and

(2) In paragraphs (1), (3), (4) and (6), —meal" includes an application for permission to appeal.

(3) This rule does not apply to appeals to a county court.

(4) Permission is needed to make an application under this rule to reopen a final determination of an appeal even in cases where under rule 52.3(1) permission was not needed for the original appeal.

Page 12 of 16 (5) There is no right to an oral hearing of an application for permission unless, exceptionally, the judge so directs.

(6) The judge will not grant permission without directing the application to be served on the other party to the original appeal and giving him an opportunity to make representations.

(7) There is no right of appeal or review from the decision of the judge on the application for permission, which is final.

(8) The procedure for making an application for permission is set out in the practice direction.

26) Rule 52.7 of the CPR states:

52.7 Unless —

(a) the appeal court or the lower court orders otherwise; or

(b) the appeal is from the Immigration Appeal Tribunal,

an appeal shall not operate as a stay of any order or decision of the lower court.

27) The orders of Proudman J and Lewison LJ specifically refused request for a stay. Consequently, Dr Langdell's intention of seeking leave to appeal under rule 52.17 does not have the effect of staying the order of Proudman J. Dr Langdell also made reference to paragraphs 3 to 5 of the order of Proudman J. These relate to the revocation of trade marks owned by EIM and so are not pertinent to these proceedings.

The deed of assignment of 30 July 2010

28) In his skeleton argument Dr Langdell refers to EIM threatening oppositions to Future's applications. He claims that EIM filed threats to oppose but was advised by trade mark counsel that it should let the oppositions —apse" and then file an assignment with the IPO. It is difficult to square this with Dr Langdell's claims to the IPO that he had filed oppositions and his requests to know what had happened to these oppositions. On 12 December 2011 Dr Langdell was still claiming that he had filed timeous oppositions, there had been no reference to the assignment of the trade marks. The first reference to an assignment was on 7 March 2012, a month after Lewison LJ had refused leave to appeal. In his correspondence with the IPO Dr Langdell attached a copy of the CTA but made no reference to the repudiation of the CTA.

Page 13 of 16 29) Prior to 27 April 2012, Dr Langdell had made no reference to a deed of assignment. No deed of assignment was attached to form TM16.

30) In his correspondence with the IPO Dr Langdell made it clear that he wanted to oppose the registrations of the trade marks. He claimed that he had opposed the registrations. It is difficult to understand, whatever the claims of Dr Langdell, why EIM would oppose trade marks which it already owned. If there was a deed of assignment it would have been a far simpler matter to file it with the appropriate form. The reasonable inference is that, at the time that Dr Langdell was communicating with the IPO re the alleged oppositions, the trade marks had not been the subject of assignment.

31) Taking into account the chronology of events and the findings of the courts in relation to false statements in Dr Langdell's witness statements dated 17 September 2010 and 29 November 2010 and doctored and forged emails, it is found that no deed of assignment was effected by Dr Langdell on 30 July 2010. No proof of posting from a postal service was supplied with the latter dated 30 July 2010. It is noted that when the IPO requested proof of postage and fax transmission re the claimed oppositions, this was not supplied. The letter of 30 July 2010 has appeared like a rabbit out of a hat. It is also found that the letter with the date of 30 July 2010 was not created on that date. It is found that as of the date of the repudiation of the agreement, 20 August 2010, no assignment had been executed.

Effective date of repudiation

32) Mr Pearson argued that the date of repudiation was 2 July 2010, the date that the solicitors for Future wrote to EIM claiming that it had repudiated the agreement. Proudman J clearly stated in her order when the CTA ceased to have effect:

—Its hereby declared that the Concurrent Trading Agreement (as defined in Annex 1 hereto) terminated with effect from 20 August 2010."

Application of clause 2.8 of the CTA

33) It is not in dispute that the goods and services of the registrations fall outwith the assigned rights of the CTA. At the time of the filing of the applications for registration the CTA was still in effect. Clause 2.8 does not automatically assign trade marks, it gives the power to assign rights. There has to be an actual assignment. For there to be an assignment there has to be a transaction, an action; the right to effect an action cannot be conflated with the actual exercise of a right. Dr Langdell argues that the termination of the CTA does not affect the power of attorney as it is irrevocable. In support of this he relies upon section 4 of the Powers of Attorney Act 1971:

Page 14 of 16 -Powers of attorney given as security.

(1) Where a power of attorney is expressed to be irrevocable and is given to secu re—

(a) a proprietary interest of the donee of the power; or

(b) the performance of an obligation owed to the donee,

then, so long as the donee has that interest or the obligation remains undischarged, the power shall not be revoked—

(i) by the donor without the consent of the donee; or

(ii) by the death, incapacity or bankruptcy of the donor or, if the donor is a body corporate, by its winding up or dissolution.

(2) A power of attorney given to secure a proprietary interest may be given to the person entitled to the interest and persons deriving title under him to that interest, and those persons shall be duly constituted donees of the power for all purposes of the power but without prejudice to any right to appoint substitutes given by the power.

(3) This section applies to powers of attorney whenever created."

34) The power of attorney is only effective —atong as the donee has that interest or the obligation remains undischarged, the power shall not be revoked". With the termination of the agreement the donee, ie EIM, no longer had the requisite interest; it no longer had any interest. Equally, Future no longer owed it any obligation Consequently, as of 20 August 2010 EIM no longer had a power of attorney, it was revoked by the termination of the agreement.

35) Outwith the specific terms of Powers of Attorney Act 1971, the termination of the CTA was total. The order of Proudman J did not allow for part of it to have effect. The interpretation that Dr Langdell gives to the power of attorney would mean that despite the termination of the agreement, part of the agreement is still in force; this is inimical. The termination of the agreement terminates it in its entirety.

36) Consequently, when EIM effected its second deed of assignment it did not have power of attorney and so the second deed of assignment has no validity. Conclusion

37) Dr Langdell raised issues of estoppel and the continuance of the rights that EIM had up to the date of the termination of the agreement. However, the matter is simple. Did EIM between the 5 July 2010 and 19 August 2010 assign the trade marks of Future to itself? The answer is no, no credence is given to the purported

Page 15 of 16 deed of assignment. From 20 August 2010 does EIM continue to have the power of attorney as per clause 2.8 of the CTA? The answer is no. Consequently, the application for the assignment of the trade marks is refused.

Dated the 25th of July 2012

David Landau

For the Registrar the Comptroller-General

Page 16 of 16 Exhibit OR6 0-241-14

1 UK INTELLECTUAL PROPERTY OFFICE The Rolls Building, 2 7 Rolls Buildings, Fetter Lane, 3 London, EC4A 1NL.

4 Wednesday, 28th May, 2014

5 Before:

6 MR. GEOFFREY HOBBS Q.C. (sitting as the Appointed Person) 7

8 In the Matter of the Trade Marks Act 1994 9 -and- 10 In the Matter of a Request by EDGE INTERACTIVE MEDIA INC 11 ("EIM") for Recordal of Partial Assignment of UK Trade Mark Application Nos. 2552136 and 2552147 in the name of 12 FUTURE PUBLISHING LIMITED ("FUTURE")

14 (Appeal from Decision No. 0/283/12 of Mr. David Landau, acting on behalf of the Registrar, dated 25th July 2012) 15

16 (Transcript of the Shorthand Notes of Marten Walsh Cherer 17 Ltd., 1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London, WC2A 1HP. 18 Tel No: 020-7067 2900. Fax No: 020-7831 6864. email: [email protected]. www.martenwalshcherer.com) 19

20 MR. ROBERT DEACON (instructed by Edge Interactive 21 Media Inc.) appeared for the Appellant.

22 MR. J.G. PEARSON (Abel & Imray) appeared for the Respondent.

24 DECISION (As approved by the Appointed Person) 25 1 THE APPOINTED PERSON: On 5 July 2010, Future Publishing Limited

2 applied under no. 2552136 to register the word EDGE

3 graphically represented in a slightly stylised form as a trade

4 mark for use in relation to a wide variety of goods and

5 services in Classes 9, 16, 25, 35, 38 and 41. Also on 5

6 July 2010, it applied under no. 2552147 to register the word

7 EDGE graphically represented without any stylisation as a

8 trade mark for use in relation to the same wide variety of

9 goods and services in those classes. Both applications

10 proceeded to registration on 25 November 2011.

11 At the time of filing, Future Publishing Limited was in

12 dispute with the Edge Interactive Media Inc. over the

13 implementation and operation of the provisions of a Concurrent

14 Trading Agreement and Deed of Trademark Assignment made

15 between them on, and with effect from, 15 October 2004.

16 Future Publishing was contending that the 2004 Agreement had

17 come to an end on 2 July 2010, the day on which it had

18 written to Edge Interactive stating, "For the avoidance of

19 doubt, we hereby put you on notice that your client's breaches

20 of the CTA complained of in the Particulars of Claim amount to

21 a repudiation thereof and with effect from today's date our

22 client accepts that repudiation and treats the CTA as

23 discharged."

24 Edge Interactive was disputing that allegation and all

25 other allegations that Future Publishing was making against it

2 1 in connection with, and arising out of, the operation of the

2 2004 Agreement. They litigated their dispute in the Chancery

3 Division of the High Court in London and the litigation

4 culminated in a judgment delivered by Proudman J on 13 June

5 2011 under reference [2011] EWHC 1489 (Ch), which can be found

6 reported at [2011] ETMR 50.

7 Future Publishing succeeded in establishing all of the

8 claims it pursued at trial. As part of a comprehensive order

9 for relief made on 7 July 2011, it was declared that the

10 2004 Agreement had 'terminated with effect from 20th August

11 2010'. The judgment and order of the court became final on

12 7 February 2012 on refusal of Edge Interactive's application

13 to the Court of Appeal for permission to appeal. The

14 declaration made by Proudman J was and remains equivalent

15 to a mutually binding admission by Future Publishing and Edge

16 Interactive, from which neither of them can resile, to the

17 effect that the 2004 Agreement came to an end on 20 August

18 2010. That is all the more so in circumstances where

19 Proudman J considered and rejected an application by Future

20 Publishing on 15 January 2013 for amendment of her order

21 dated 7 July 2011 so as to declare that the 2014 Agreement

22 had terminated on 2 July 2010, rather than 20 August 2010.

23 Following the refusal of its application for permission

24 to appeal to the Court of Appeal, Edge Interactive filed an

25 application at the Trade Marks Registry on 7 March 2012 for

3 1 the recordal of an assignment-in-part of trade mark

2 registrations 2552136 and 2552147 then standing in the name of

3 Future Publishing. The Form TM16 was filed by Dr. (now Rev.

4 Dr.) Tim Langdell on behalf of Edge Interactive. It identified

5 Edge Interactive as 'the assignee' for the purposes of rule

6 48(a)(i)of the Trade Marks Rules 2008. It identified 5 July

7 2010 (the filing date of the applications which had matured

8 into the subject registrations) as 'the date of the assignment'

9 for the purposes of rule 48(a)(ii).

10 As stated in the notes to Form TM16, the form is not

11 itself a substitute for the assignment document or other proof

12 of the transaction to which the request for recordal relates.

13 When notified by the Registry of the filing of the Form TM16,

14 Future Publishing objected to it on the basis that there had

15 been, and could be, no assignment susceptible of recordal in

16 favour of Edge Interactive. Thereafter, the application for

17 recordal proceeded as a contested inter partes proceeding

18 between Edge Interactive and Future Publishing.

19 In order for the application for recordal to succeed,

20 Edge Interactive had to be able to produce a valid and

21 effective assignment transferring to it in writing the

22 property it claimed to have acquired on 5th July 2010 in

23 accordance with the requirements of sections 24(3) and 27(1)

24 of the Trade Marks Act 1994. It appeared from the Form TM16

25 and the letter of 5 March 2012 which accompanied it that

4 1 Edge Interactive was relying solely upon clause 2.8 of the

2 2004 Agreement as being sufficient in and of itself to effect

3 the necessary assignment in writing in accordance with the

4 requirements of those sections of the Act.

5 Subsequently, on 27 July 2012, Edge Interactive wrote to

6 the Registry enclosing a Deed of Assignment bearing the date

7 30 July 2010 which Dr. Langdell had signed both on behalf of

8 Future Publishing as assignor and on behalf of Edge Interactive

9 as assignee. On 17 July 2012, Dr. Langdell filed a skeleton

10 argument for use in the Registry proceedings. He

11 attached an affidavit made on 16 July 2012 in which he

12 claimed to have executed the Deed of Assignment on 30 July

13 2010 in the exercise of the rights conferred upon Edge

14 Interactive by clause 2.8 of the 2004 Agreement. Although he

15 referred in his affidavit to the assignment of 30 July 2010

16 as being 'exhibited hereto', what he actually exhibited was a

17 further Deed of Assignment dated 17 July 2012.

18 The application for recordal was refused for the reasons

19 given by Mr. David Landau, on behalf of the Registrar of Trade

20 Marks, in a written decision issued under reference

21 BL 0/283/12 on 25 July 2012. In summary, the hearing

22 officer found, firstly, that clause 2.8 of the 2004 Agreement

23 was not sufficient in and of itself to effect an assignment of

24 the rights that Edge Interactive claimed to have acquired in

25 accordance with the requirements of the Act; secondly, that

5 1 Dr. Langdell's evidence and assertions with regard to the

2 execution of a Deed of Assignment on 30 July 2010, or indeed

3 at any time prior to 20 August 2010, were false; and, thirdly,

4 that it ceased to be possible for Edge Interactive to invoke

5 the provisions of clause 2.8 of the 2004 Agreement once it had

6 ended, as declared by the order of Proudman J, on 20 August

7 2010.

8 Edge Interactive appealed to an Appointed Person under

9 section 76 of the Trade Marks Act 1994 contending that the

10 hearing officer's decision was wrong in all three

11 of the respects I have identified. Future Publishing

12 filed a respondent's notice contending that the hearing

13 officer's decision should additionally, or alternatively, be

14 upheld on the basis that the 2004 Agreement terminated on 2

15 July 2010 in accordance with the notification of acceptance of

16 repudiatory breach which Future Publishing sent to Edge

17 Interactive on that date.

18 I can deal briefly with the point raised in the

19 respondent's notice. It is not open to Future Publishing or

20 Edge Interactive to contend that the 2004 Agreement terminated

21 on any date other than 20 August 2010. 20 August 2010 is,

22 for present purposes, conclusively determined by the final

23 order of Proudman J to have been the date of termination.

24 During the pendency of the appeal, there has been much

25 to-ing and fro-ing as to what was and was not being contended

6 1 by Edge Interactive in support of its appeal. The end result

2 of successive proposed amendments to the grounds of appeal is

3 that Edge Interactive no longer challenges the second of the

4 hearing officer's three findings, that is to say, there is no

5 issue as to the correctness of the hearing officer's

6 determination that Dr. Langdell's evidence and assertions with

7 regard to the execution of a Deed of Assignment prior to 20

8 August 2010 were false. It continues to challenge the first

9 and third of the hearing officer's findings. However, the

10 third of his three findings does not arise for determination

11 if the first of his three findings was correct, as I think it

12 was.

13 Clause 2.8 of the 2004 Agreement provided as follows:

14 "Subject to Clauses 2.6 and 2.7, Future further undertakes

15 that it shall not without prior written consent from EIM at

16 any time on or after Completion register or apply to register

17 in any country or otherwise use any trademark which is the

18 same as or similar to the Trademarks (or any one of them) in

19 respect of goods or services other than those detailed in the

20 Assigned Rights or as permitted pursuant to clause 2.1.2. In

21 the event that Future shall register or apply to register in

22 any country any such trademark in breach of this Clause 2.8,

23 Future shall forthwith and without prejudice to any other

24 rights of EIM under this Agreement and Deed assign all right,

25 title and interest in such trademark(s) in respect of those 1 goods and services, to EIM (at EIM's reasonable cost) on the

2 same terms as those set out in this Agreement and Deed, save

3 that no fee shall be payable by EIM to Future in respect

4 thereof. To guarantee compliance by Future with their

5 obligations under Clause 2.8, Future irrevocably appoints EIM,

6 with further power to delegate its powers to any director or

7 other duly authorised officer of EIM, to be their true and

8 lawful attorney and to do and perform any acts and to execute

9 any documents necessary or desirable in connection with this

10 Clause 2.8 and Future hereby undertakes to ratify whatever EIM

11 shall do or cause to be done under this power of attorney.

12 Save however, Future shall be free of the restraints on it

13 imposed by Clause 2.6, Clause 2.7 and this Clause 2.8 in the

14 event that EIM should cease use of the mark and brand EDGE for

15 a continuous period of five years or more or becomes insolvent

16 or ceases trading."

17 The regime established by clause 2.8 appears to me to be

18 quite clear. The clause begins with a restriction on Future

19 Publishing's freedom of action with regard to the registration

20 and filing of applications for registration of trade marks.

21 It then provides that if Future Publishing breaches that

22 restriction, it, Future Publishing, shall forthwith assign the

23 entirety of its right, title and interest in and to the

24 impermissible registrations and applications for registration

25 to Edge Interactive. It further provides Edge Interactive

8 1 with a power of attorney which it can, if it wishes, exercise

2 by way of self-help so as to effect the transfer of the

3 registrations and applications for registration to which it is

4 entitled under the antecedent provisions of the clause.

5 Finally, it places an obligation on Future Publishing to

6 ratify whatever Edge Interactive may lawfully have done in the

7 exercise of its rights under the power of attorney.

8 Unless and until the power of attorney was exercised by

9 Edge Interactive so as to effect the required transfer, the

10 registrations and applications for registration acquired by

11 Future Publishing in breach of the restriction at the front

12 end of clause 2.8 remained in the name of Future Publishing, but

13 subject to Edge Interactive's contractual right to acquire

14 them. That, in effect, left Future Publishing holding the

15 legal title to the relevant property on trust for Edge

16 Interactive until such time as Edge Interactive had either

17 sought and obtained an order for specific performance of the

18 obligation to transfer or validly exercised its power of

19 attorney.

20 So, when the Form TM16 is considered from that

21 perspective, it is apparent that on the specified date of 5

22 July 2010 Edge Interactive had no more than an equitable

23 interest in the then pending trade mark applications 2552136 and

24 2552147, with Future Publishing continuing to hold the legal

25 title thereto. No assignment of those applications (or the

9 1 resulting registrations) susceptible of notification to the

2 Registrar existed on 5 July 2010. Moreover, the notification

3 to the Registrar effected by means of the Form TM16 filed on 7

4 March 2012 was notification of a trust arrangement in place on

5 5 July 2010 and therefore notice of something by which the

6 Registrar 'shall not be affected' in accordance with section

7 26(1) of the 1994 Act. For these reasons, I consider that the

8 hearing officer was right to refuse the Form TM16 on the first

9 of the bases he identified in his decision. The third of the

10 three bases he identified is not clear-cut from a legal and

11 factual point of view. It is not necessary for me to consider

12 it on this appeal and I think it is better, in the circumstances

13 of the present case, for me not to do so. In the result, the

14 appeal is dismissed.

10 Exhibit OR7 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 1 of 15 PagelD# 384

IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA NOV -7 MB RICHMOND DIVISION CLERK,I U.S. DISTRICT COURT VA RICHMOND, vol VELOCITY MICRO,INC.,

Plaintiff,

THE EDGE INTERACTIVE MEDIA,INC., Civil Action Number 3:08cv135 Defendant/Cross Plaintiff /Third Party Plaintiff

BEST BUY,INC.,

Third Party Defendant.

MEMORANDUM OPINION

THIS MATTER is before the Court on Plaintiffs three Motions:(1) Motion to

Dismiss Defendant's Counterclaim (Doc. No. 19);(2) Motion for Reconsideration of the

Court's Order Denying Default(Doc. No. 21); and(3) Motion for Sanctions(Doc. No.

24). For the reasons below,this Court DENIES Plaintiffs Motion to Dismiss and

Motion for Reconsideration, and GRANTS the Plaintiffs Motion for Sanctions.

I. Background

On February 29, 2008, Plaintiff Velocity Micro, Inc.("Velocity") filed a

Complaint against The EDGE Interactive Media, Inc.("Edge Interactive) alleging trademark infringement, false designation of origin and description of fact, false advertising, unfair competition, and fraud on the U.S. Patent and Trademark Office. At the time Plaintiffs Complaint was filed, Edge Interactive was listed as a suspended

1 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 2 of 15 PagelD# 385 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 3 of 15 PagelD# 386

California corporation.' On March 5, 2008, Plaintiff amended their Complaint. The

Amended Complaint was served on Tim Langdell, Edge Interactive's Registered Agent,

on April 12, 2008. In response to numerous communications made by Jack Phillips,

Vice President of Edge Interactive, contesting service of process and seeking extensions

oftime to Answer,this Court granted Edge Interactive four extensions oftime to file a

responsive pleading.' The final extension was granted on July 31, 2008. Pursuant to the

July 31st Order, Edge Interactive was to obtain local counsel and submit a responsive

pleading by August 21, 2008, or risk default.

Within the Court's allotted time, Edge Interactive, referring to itself as Edge

Interactive a/k/a Edge Games,Inc., filed an Answer,together with a Counterclaim, and

a Third Party Complaint against Best Buy, Inc., a distributor of Velocity's computers

("August 21st Answer and Counterclaim"). Because Defendant filed a timely Answer,

Velocity's Motion for Entry of Default was denied. On September 10, 2008, Velocity

entered a Motion to Dismiss Defendant's Counterclaim and a Motion for

Reconsideration of the Court's Order Denying the Entry of Default stating that "as a

suspended California corporation, Edge Interactive a/k/a Edge Games cannot obtain

counsel nor can it participate in [any] legal proceeding." (Pl.'s Mem.in Supp. of Mot. to

Dismiss 2.) Unbeknownst to the Court, on September 17, 2008, Velocity sent a Rule 11

'Edge Interactive is a California corporation. (Answer ¶ 2.) According to the State of California's Franchise Tax Board, Edge Interactive was suspended effective April 2004. (Pl.'s Mem. in Supp. of Mot. to Dismiss, Ex. 8.) A Certificate of Revivor was not issued to the company prior to June 16, 2008. (Id.) 2 In total, with the Court's four extensions, the Defendant was given an extra 15o days over the applicable rules to file a responsive pleading.

2 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 4 of 15 PagelD# 387

Safe-Harbor Notice to Edge Interactive, Edge Games,and their Counsel, Jeffrey H.

Greger, demanding the withdraw of the August 21st Answer and Counterclaim, under threat of sanctions. Plaintiffs Safe-Harbor Notice alleged that both Defendant and their

Counsel "made repeated misrepresentations to the Court to gain an improper advantage in this litigation." (Pl.'s Mem.in Opp. to Mot.to Withdraw and in Supp. of Mot. for

Sanctions 10.)

On September 18, 2008,six days before a Response was due to Plaintiffs Motion to Dismiss and only one day after receiving Velocity's Safe-Harbor Notice, Mr. Greger moved this Court for Leave to Withdraw and for an Extension of Time. Velocity countered with a Memorandum in Opposition to Withdrawal and a Request for

Sanctions. While Mr. Greger's Motion was pending,the Court was informed that Edge

Interactive was issued a Certificate of Revivor from the California Franchise Tax Board, which restored Edge Interactive's status as a valid California corporation and further retroactively validated prior legal transactions. After due consideration, this Court granted Mr. Greger's Motion to Withdraw and denied his Motion for an Extension of

Time. Further, on September 24, 2008, after learning of Edge Interactive's Certificate of

Revivor, Velocity moved to withdraw sanctions against Attorney Greger. However,

Velocity has not withdrawn their Motion for Sanctions against Edge Interactive.

H. Motion to Dismiss Defendant's Counterclaim,and Motion for Reconsideration of Order Denying Default

As a procedural matter, a federal court may enter default against a defendant who has failed to plead or otherwise defend themselves, if that failure is shown by affidavit or otherwise. Fed. R. Civ. P. 55(a). Accordingly, failure to timely file an Answer to a

3 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 5 of 15 PagelD# 388

Complaint may subject the defendant to default. Under the federal rules, a defendant must file an Answer within 20 days of being served with a summons and complaint.

Fed. R. Civ. P. 12(a)(1)(A). This filing period may be extended by the Court, with or without Motion. Fed. R. Civ. P. 6(b). However, a suspended California corporation may not participate in any litigation activities, including filing an Answer to a Complaint. See

Fed. R. Civ. P. 17(13)(noting that the Idapacity to sue or be sued is determined .. . for a corporation, by the law under which it was organized"); Palm Valley Homeowners Ass'n v. Design Mtc., 85 Cal. App. 4th 553,561 (Cal. App. 4th Dist. 2000)(stating that a suspended California corporation is unable to participate in litigation activities, and further noting that this rule is designed to advance California's legitimate interest in

"persuad[ing] its corporate citizens to pay their taxes.. . [and] comply with basic filing requirements, requirements that are fundamental to holding a corporation accountable for its actions").

In the present matter, Velocity requests the Court notice that no valid Answer or

Counterclaim has been made, and therefore grant their Motions for Default and

Dismissal. In support of their Motions, Velocity offers two alternative arguments. First,

Velocity argues that the August list Answer and Counterclaim was made by Edge

Interactive, who at the time of filing was a suspended California corporation unable to participate in litigation, ergo, the filings were invalid and default and dismissal are proper. (Pl.'s Mem.in Supp. of Mot. to Dismiss and Mot. for Reconsideration 6-9.)

Alternatively, Velocity argues that Edge Games,a purported separate legal entity, filed the August 21st Answer and Counterclaim and, as such, no Answer has been filed by Edge Interactive, therefore default is warranted. (Motions Hr'g, Oct. 27, 2008.)

4 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 6 of 15 PagelD# 389

As a threshold matter, this Court will address the substance of Velocity's second argument—who filed the August 21st Answer and Counterclaim? Clearly labeled in the filings caption, Mr. Greger's signature block, and in various statements throughout the

Answer and Counterclaim is the fact that the filing was made on behalf of"The Edge

Interactive Media, Inc. a/k/a Edge Games,Inc." and that"Edge Interactive, Inc. is also

known as Edge Games." (Def.'s Answer ill 1-3.) Based on these facts, Edge Interactive filed the Answer and Counterclaim.

While the Court is aware of contradictory statements made by Mr. Greger

regarding the relationship between Edge Interactive and Edge Games, and ultimately

regarding who actually filed the August 21st Answer and Counterclaim, this Court finds

these conflicting statements were misrepresentations made on behalf of Edge

Interactive as part of their concerted effort to mislead this Court and gain an unfair

advantage in litigation. This Court further finds that Edge Games is not a party to this

litigation, as it has never formally joined or intervened, and that Edge Games has no

legal interest in the matter, as any assignment of interest made by Edge Interactive to

Edge Games while the company was suspended is void ab initio.3 As such, Edge Games

did not, and could not, file a valid Answer and Counterclaim in this matter.

3 Edge Interactive was suspended from April 2004 to September 2008 and knew or should have known that they had no capacity to assign their trademark interests to Edge Games during this time. See Blackathorne Publishing. Inc. v. Black, Nos. 97-55656,97- 56058, 2000 U.S. App. LEXIS 1401, at *5(9th Cir. Jan. 28, 2000)(holding that Plaintiffs did not obtain ownership via assignment where the trademark holder was a suspended California corporation and therefore ineligible to conduct business); see also Timberline. Inc. v. Jaisinghani, 54 Cal. App. 4th 1361, 1365-66(Cal. App. 2d Dist. 1997) (stating a suspended corporation is disqualified from exercising any right, power, or privilege, including prosecuting or defending an action, or appealing a judgment).

5 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 7 of 15 PagelD# 390

In terms of Velocity's primary argument—that Edge Interactive was suspended at the time of the filing and therefore could not participate in litigation—the Court agrees in part. Plaintiffs Motions were valid on the date of their filing, and would have likely resulted in the Court granting default and dismissal. However,on September 22, 2008,

Edge Interactive was granted a Certificate of Revivor. (Greger's Supp. Mem.in Support of Mot. to Withdraw 2.) Under California law, a Certificate of Revivor retroactively validates otherwise invalid proceedings undertook by a suspended corporation. Benton v. County of Napa, 226 Cal. App. 3d 1485, 1490 (Cal. App. ist Dist. 1991)(stating that a company.who "pays its taxes and obtains a Certificate of Revivor during the pendency of an action .. . may be allowed to carry on litigation, even to the extent of validating otherwise invalid prior proceedings"). Because Edge Interactive's Certificate of Revivor retroactively validated the Defendant's August 21st Answer and Counterclaim, Plaintiffs arguments for default and dismissal are denied. Accordingly, Defendant's Motion to

Dismiss Defendant's Counterclaim and Motion for Reconsideration are DENIED.4

4 Defendant's arguments in opposition to Plaintiff's Motions to Dismiss and Reconsider Default are not helpful. The Defendant argues that both Motions should be denied by citing inapplicable law. First, Defendant cites a California Court of Appeals case to state that a trial court has "abused its discretion where it either failed to grant a continuance to permit a suspended corporate defendant time to revive the corporation, or where it issued a default judgment even after the defendant had obtained a certificate of revivor." (Def.'s Opp. to Mot.for Reconsideration and Mot. to Dismiss 3.) While California law governs the effect of Edge Interactive's suspension, California law does not govern this Court's authority to enter a default judgment or grant a continuance. See Hanna v. Plummer, 380 U.S.460, 465 (1965) (holding, consistent with Erie R. Co. v. Tompkins, 304 U.S. 64 (1938), and the Rules Enabling Act, 28 U.S.C. § 2072,that federal courts are to apply federal procedural law and state substantive law); Oldahoma Natural Gas Co. v. Oklahoma, 273 U.S. 257, 259-60(1929) (holding a corporation's capacity to sue is not procedural or "controlled by the rules of the court in which the litigation pends. . . [but] concerns the fundamental law ofthe corporation enacted by the State which brought the corporation into being"); Maternally Yours v. Your Maternity Shop, 234 F.2d 538,540 6 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 8 of 15 PagelD# 391

IV. Sanctions Against Edge Interactive

This Court has both statutory and inherent authority to impose sanctions, including attorneys' fees, against attorneys who abuse the judicial process in bad faith.

See 28 U.S.C. § 1927("Any attorney or other person admitted to conduct cases in any

court of the United States .. . who so multiplies the proceedings in any case

unreasonably and vexatiously, may be required to satisfy personally the excess costs,

expenses, and attorney's fees reasonably incurred because of such conduct."). This

power is inherent in all courts and reaches conduct before the court and conduct beyond

the court's confines, because the underlying concern that gives rise to the contempt

power is not merely the disruption of court proceedings, but disobedience to the orders

ofthe judiciary. Chambers v. NASCO. Inc., 501 U.S. 32,44 (1991).

In the present case, Velocity contends that sanctions are warranted because Mr.

Phillips, Vice President of Edge Interactive, has made untruthful statements to the Court

regarding service of process and Mr. Langdell's relationship to Edge Interactive.

Velocity's filings further request Rule ii sanctions against Mr. Greger based on his

misrepresentations of the relationship between Edge Interactive and Edge Games.

While Velocity has withdrawn their request for sanctions against Mr. Greger, this Court

n.1(2d Cir. 1956)(noting that the Erie doctrine applies regardless of the ground for federal jurisdiction). Second, the Defendant argues that granting default judgment could result in inconsistentjudgments among related parties, assumedly implying the related parties are Edge Interactive and Edge Games. (Def.'s Opp. to Mot.for Reconsideration and Mot. to Dismiss 4-5(citing Jefferson v. Briner, Inc., 461 F. Supp. 2d 430,434 (E.D. Va. 2006), which holds that where multiple defendants are jointly liable and the non- answering party's claims are related to the answering defendant's, default is improper as it would result in inconsistentjudgments).) However, this case and argument is not applicable as the only party in issue is Edge Interactive, Edge Games has not been joined, and Edge Games and Edge Interactive cannot be jointly liable.

7 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 9 of 15 PagelD# 392

finds that Edge Interactive's conscious strategy to mislead the Court and delay these proceedings encompassed Mr. Phillips's and Mr. Greger's misrepresentations. This

Court therefore holds Edge Interactive responsible for all misrepresentations made by

Phillips and Greger; the company will be sanctioned accordingly.

The Court specifically finds three misrepresentations that necessitate sanctions.

First, Mr. Phillips informed the Court that Edge Interactive had not been served in this matter and, as a result, requested additional time to file a responsive pleading. (See

Phillips Decl. ¶¶ 7-8, June 19, 2008 (stating that neither he "nor anyone else employed by[Edge Interactive} has received a copy of the complaint in this matter"); Phillips Decl.

II 4, July 21, 2008(noting that"Edge Interactive has never received any documents or papers in respect to this matter .. and thus there is no way that Edge Interactive could file responsive pleadings in this matter even if it does retain local counsel as there has been nothing received by Edge Interactive").) These representations were made to the

Court by phone and in two declarations, signed under penalty of perjury. (See Phillips

Decl. ¶ 14, 7, July 21, 2008(referencing a telephone conversation with the Court wherein Mr. Phillips states that Edge Interactive has never received any documents in this matter); see also Phillips Decl., June 19, 2008; Phillips Decl., July 21, 2008.) On the basis of these representations, the Court granted an additional extension of time to obtain local counsel and file a responsive pleading. (Ct's June 2, 2008 Order.)

In conjunction, Defendant represented that Mr. Langdell resigned from the company as its employee and agent for service of process prior to being served in this matter, and that Mr. Langdell has not received any communication related to this matter. (See Phillips Decl. 111 5-6, July 21, 2008(stating that"Tim Langdell's

8 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 10 of 15 PagelD# 393

resignation pre-dated any action by Velocity Micro," that Velocity "was clearly notified

of Tim Langdell's resignation from this corporation as its employee and as its agent for

service," and that Mr. Langdell has "not received any communication relating to this

matter"); Pl.'s Mem.in Supp. of Mot. to Dismiss and Entry of Default, Ex. 10.

(producing a copy of a returned Eastern District of Virginia envelope addressed to Tim

Langdell at Edge Interactive with the handwritten words "Gone Away Return to Sender"

printed on its face).) This, in part, was the reason for the Court's third and fourth

extensions of time. (See Ct's July 14, 2008 Order; Aug. 1, 2008 Order.)

These representations were subsequently proven to be false. Edge Interactive

stated in their August 21st Answer and Counterclaim that Mr. Langdell "has been

affiliated with The Edge Interactive Media Incorporated at all times pertinent to this

dispute and has overseen the day-to-day operations of. . . Edge Interactive;" thus

contradicting the statement that Mr. Langdell resigned from the company prior to

Velocity's filing of the Complaint. (Compare Countercl. ¶ go (confirming Mr. Langdell's

ongoing affiliation with Edge Interactive), with Phillips Decl. ¶ 6, July 21, 2008

(declaring that Mr. Langdell resigned from the corporation prior to the lawsuit).)

Further, Mr. Langdell was publicly listed as Edge Interactive's Registered Agent

for Service of Process with California's Secretary of State as late as June 11, 2008. (Pl.'s

Mem.in Supp. of Request for Entry of Default, Ex. 2.) While Edge Interactive claims

that Mr. Langdell resigned as Registered Agent on February 21, 2008, prior to being

served in this matter,' the proffered resignation form (RA-loo)clearly states that the

5 Mr. Robert Brooke, attorney for Velocity, declares that "on April 12, 2008,legal service was made in person upon Tim Langdell . a copy of the Affidavit of Service was filed with the Court on May 14, 2008." (Brooke's Decl. 113, July 1, 2008.)

9 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 11 of 15 PagelD# 394

document was not filed with California's Secretary of State until May 30, 2008, after

Mr. Langdell was served with a summons and Complaint. (Pl.'s Mem.in Supp. of Mot. to Dismiss and Entry of Default, Ex. lo.; see also Executed Summons, May 14, 2008.)

Moreover, as the RA-loo form states, Mr. Langdell's resignation became effective after the document was filed, not merely after signing. See State of California Secretary of

State Resignation of Agent Form RA-100,Instructions (stating that "upon filing Form

RA-ioo,the authority ofthe agent for service of process to act in that capacity will cease and the Secretary of State will give written notice of the resignation to the entity").

Therefore, because Mr. Langdell was Edge Interactive's Registered Agent for Service of

Process on April 12, 2008, the date he was served with a summons and Complaint,the

Defendant's claims regarding lack of service of process, resignation of Mr. Langdell from

Edge Interactive, and further claims that the Defendant has not received any communication related to this matter were clearly false.'

Edge Interactive's final misrepresentation was regarding the relationship between

Edge Games and Edge Interactive, and was made by the company's previous counsel,

Mr. Greger. In his Motion to Withdraw as Counsel, Mr. Greger states that his August

21st Answer and Counterclaim was "made on behalf of Edge Games,Inc. and not Edge

Mr. Phillips further stated in his July 21st Declaration that Edge Interactive's failure to open the Complaint or any Order of the Court places this matter "beyond dispute that Edge Interactive has yet to be served with this matter." (Phillips Dec1.11116-7, July 21, 2008.) This argument further illustrates Mr. Phillips's and Edge Interactive's flagrant disregard ofthe rules of court and concerted effort to mock procedural safeguards in order to avoid default and obtain an unfair advantage in the litigation. Moreover, this narrow view fails to comport with the obligations undertook by a corporation's Registered Agent for Service of Process whereby they agree that delivery to their Agent constitutes service, and further fails to explain why Edge Interactive did not ultimately challenge service of process when it made its August 2ist Answer and Counterclaim.

10 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 12 of 15 PagelD# 395

Interactive Media,Inc., notwithstanding a lack of clarity between the two distinct legal

entities." (Greger's Mot. to Withdraw 4.) These statements directly contradict the filing.

(See Answer 111-3(averring that the filing was made on behalf of"The Edge Interactive

Media,Inc. a/k/a Edge Games, Inc." and that Edge Interactive and Edge Games were

the same company.") These misrepresentations regarding the relationship of the two

companies, made under penalty of perjury, served to further delay these proceedings,

mislead the Court, and detract from the Court's ultimate aim of allowing the parties to

resolve the matter on its merits. The Court finds that these misrepresentations, while

made by Counsel, are directly attributable to Edge Interactive as part of their deliberate

strategy to obfuscate and mislead this Court in order to delay the Court's determination

of default. In their defense against sanctions, Edge Interactive focuses exclusively on

this misrepresentation.

Edge Interactive asserts that Velocity contributed to the confusion in this case by

asserting claims as to Edge Interactive when they knew that Edge Games had lawfully

been assigned the underlying trademarks. (Def.'s Mem. in Opp. to Pl's Mot. for

Sanctions 2.) Further, the Defendant asserts that Velocity did not consent to Edge

Interactive's request to correct its erroneous Answer and Counterclaim,'an act the

company claims is contrary to the purpose of the Rule 11 Safe-Harbor provision. (Id. at

3-4.) However,these contentions are misplaced because Edge Interactive, as a

suspended corporation, could not lawfully assign the trademarks in interest to Edge

7 In Defendant's most recent Motion for an Extension of Time to File a Response, Edge Interactive asked this Court to allow them to file a Motion to Substitute, Intervene, and/or Join Edge Games, Inc. into this litigation. (Def.'s Mem.in Supp. of Mot. for Extension of Time 1.) This Court summarily denied Defendant's Motion.

11 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 13 of 15 PagelD# 396

Games. Further, even though the Rule 11 Safe-Harbor provision allows 21 days for a party to correct their erroneous filings, Edge Interactive contacted Velocity over 3o days after the Safe-Harbor Notice was given. As such, Edge Interactive's defense is no defense and the company will be sanctioned accordingly.

IV. Conclusion

The Defendant's deliberate efforts to mislead this Court and obtain an advantage in litigation has resulted in unnecessary procedural delays. Nevertheless,this Court granted Defendant Edge Interactive four extensions of time to file a responsive pleading in this matter. For the reasons set forth above, this Court holds that Edge Interactive filed a valid Answer within the allotted time, and therefore Plaintiff's Motion for

Reconsideration of the Court's Order Denying Default is DENIED. Similarly, Plaintiffs

Motion to Dismiss the Counterclaim is DENIED,as Plaintiffs only contention is that the

Counterclaim was not valid because Edge Interactive was a suspended company, unable to participate in litigation.

This Court further holds that Edge Interactive's numerous misrepresentations were part of the company's conscious strategy to mislead the Court and unfairly delay these proceedings until they obtained a Certificate of Revivor. Accordingly, the Court

GRANTS Plaintiffs Motion for Sanctions. Further, Plaintiff is hereby ORDERED to file affidavits outlining, with specificity, any attorneys' fees or other relevant costs and fees incurred as a result of Defendant's misrepresentations and the Court's granting of multiple extensions. This information should be submitted to the Court within ten (10) days of the date of this Order.

It is SO ORDERED.

12 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 14 of 15 PagelD# 397

ja71;a:373encer,„„.../s/ Chief United States District Judge

4-1\.. Entered this 7 day of November 2008

13 Case 3:08-cv-00135-JRS Document 40 Filed 11/07/08 Page 15 of 15 PagelD# 398

• =me, .31 ;191110., lohiaia