Banham Patent Locks Limited v Danny Rogers (t/a Rogers and Sons)

This is the application of the claimant ( Banham ) for judgment in default of a defence, and/or strike out of the defendant’s defence (if there is one) and/or summary judgment. Banham’s claim is for patent infringement, breach of undertakings in relation to the alleged patent infringement and trade mark infringement. In essence, the claim alleges that Banham’s patented keys were unlawfully cut by the business operated by the defendant ( Mr Rogers ), and that Mr Rogers’ business advertised the fact that it did so, in terms amounting to a trade mark infringement. The application was issued on the basis that Mr Rogers has, according to Banham, not filed anything which looks like or which purports to be a defence. Banham also says that although Mr Rogers has sent a series of emails to it in response to the claim, none of those emails identified anything which could give rise to a real prospect of defending the claim.

The application is supported by a witness statement dated 19 December 2025 filed by Caroline Hart, a solicitor at Mewburn Ellis, Banham’s solicitors. Alongside that application Banham has also filed a procedural application seeking permission to amend the particulars of claim. That application was filed in relation to one typographical error in one paragraph, and in the course of the hearing today, two further minor amendments have been identified. Banham was represented at the hearing by Ms Collett.

Mr Rogers, appearing as a litigant in person, maintains that the claim is unmeritorious and that he should be entitled to defend it. While he candidly says that he does not understand everything that the claimants have said and is unfamiliar with court procedure, he contends that he did file a defence to the proceedings at some point, and he says that the infringing keys relied on by Banham were not cut by his employees. He therefore effectively says that Banham’s evidence to the contrary has been fabricated by Banham and/or its investigators. In relation to the allegation of trade mark infringement, Mr Rogers says that there was at no point anything other than a legitimate advertisement of the fact that his business cut earlier models of Banham’s keys which are not protected by any patent.

Banham is a provider of premium lock and key products for domestic and commercial use and is the registered proprietor of various patents relating to lock systems. For present purposes it relies on two patents: GB 2488783 ( GB ’783 ) with a filing date of 7 March 2011, and EP 2497882 ( EP ’882 ), with a filing date of 1 March 2012. Both patents have at all material times been, and are still, in force.

The keys covered by those patents are referred to by Banham as its Mark III keys, and the consequence of the patent protection is that those keys cannot be duplicated or cut by anyone other than Banham. Earlier models of the Banham keys for which the patents have now expired can, however, be cut by locksmiths without any patent infringement. These include key designs referred to by Banham as its Mark I and Mark II keys.

Banham is also the registered proprietor of various trade marks, including for present purposes UK0002301556A and UK00902968923, both with the word mark BANHAM, registered in respect of, among other things, “ keys, parts and fittings for the aforesaid goods ” in Class 6 with effect from (respectively) 27 May 2002 and 21 November 2002”. For present purposes there is no material difference between these trade marks. Both of those trade marks have also at all material times been, and are still, in force.

Mr Rogers is an individual trading as a sole trader under the name of J Rogers & Sons, ( Rogers & Sons ), which is a family-run shoe repair and key cutting business. Rogers & Sons operates four businesses in and around London. The two branches in issue for the purposes of these proceedings are the Putney branch at Unit 20, The Exchange Shopping Centre, Putney, SW15 1TW and the Liverpool Street branch at 30 Liverpool Street, London, EC2M 7PD.

In 2023, Banham discovered that Rogers & Sons was cutting and selling copies of its Mark III keys. Its solicitors, Mewburn Ellis, sent a letter before claim to Mr Rogers, who on 5 December 2024 signed an undertaking which read as follows:

“In consideration of your refraining from bringing legal action against us for infringement of European Patent EP (UK) 2497882B1 and UK patent number GB2488783B (‘the Patents’) by reason of us making, disposing of and/or offering to dispose of the Infringing Key, which infringes the Patents, I undertake, whether acting by ourselves, our directors, officers, employees or any of them howsoever, as follows:

to immediately stop making, disposing of or offering to dispose of the Mark III Key, or any other products which infringe the Patents. This includes the removal of any posters or other marketing materials advertising the copying of the Mark III key;

to not now or in the future infringe the Patents;

within thirty (30) days of the date of this letter to destroy and dispose of all inventory that is required and used only to make the Infringing Key (including key blanks)” .

On 28 May 2025 Banham sent investigators, the Mintz Group ( Mintz ), to visit the Putney and Liverpool Street branches of Rogers & Sons to attempt to obtain copies of what were Mark III keys. The findings of the investigators are set out in a report dated 30 May 2025 (the Mintz report ). The Mintz report says that staff at both branches readily cut copies of those keys. Mintz also identified a poster displayed at the Putney branch (the blue poster ) which advertised the cutting of Banham keys. Separately Banham (or its solicitors) did a Google search in which it discovered an advert from Rogers & Sons for its business, which referred to the cutting of Banham keys.

Mewburn Ellis therefore sent Mr Rogers a further letter before claim on 19 September 2025. That resulted in correspondence between the parties, in which Mr Rogers repeatedly denied cutting Mark III keys and claimed that the keys cut in the test purchases set out in the Mintz report were Mark II keys (which were not patent protected) and not Mark III keys. Mewburn Ellis responded with high resolution images of the two keys maintaining that they were indeed Mark III keys.

Mr Rogers’ subsequent emails did not address that point, but instead became increasingly intemperate, accusing Banham/Mewburn Ellis of harassment and incompetence. Mewburn Ellis sent responses that were professional and courteous, responding to Mr Rogers’ questions and encouraging Mr Rogers to obtain legal advice. While some of Mr Rogers’ emails did refer to taking legal advice, he did not provide Banham or its solicitors with the address of any solicitor for further correspondence. Correspondence therefore continued to be conducted between Mewburn Ellis and Mr Rogers in person.

No resolution of the matter was reached in that correspondence, so Banham issued its claim on 15 October 2025. Mindful that Mr Rogers was still by then apparently acting as a litigant in person, the letter from Mewburn Ellis enclosing the claim explained clearly the procedure for Mr Rogers to file and serve his acknowledgement of service, and thereafter the procedure for him to file any defence and/or counterclaim. Those explanations were repeated in subsequent correspondence following queries raised by Mr Rogers.

The claim alleges patent infringement, breach of the undertakings of 5 December 2024 and infringement of the two BANHAM word marks.

As regards the patent infringement claim, Banham relies on at least claims 1, 2, 3 and 4 of EP ’882, and claims 1, 2 and 3 of GB ’783. The GB ’783 claims read:

“1. A key for use with a key-operable lock, said key comprising:

a handle; and

The key according to claim 1 wherein two sets of transverse cut-outs are provided.

The key according to claim 2 wherein a first set of transverse cut-outs is axially spaced along the length of the shaft from a second set of transverse cut-outs.”

EP ’882 claims 1–4 are in substantially the same terms as claims 1–3 of GB ’783. Banham describes in those a key that meets the requirements of these claims as a Mark III key.

In short terms, claim 1 specifies that the key has a series of recess pairs aligned on the opposite main faces of the key. Mr Rogers has referred to these in his correspondence as “dimples”. Critically, however, a further feature described in the claims is that the Mark III key has two pairs of cut-outs, or “notches”, with each pair of notches aligned on the opposite side edges of the key, and with the two pairs “axially spaced” such that the notches are a distance from each other along the length of the key. The patent claims do not, however, specify what that distance should be, and that distance may therefore vary from key to key.

It is important to note the difference between a Mark III key, which is covered by the EP ’882 and GB ’783 claims, and the earlier Mark II key. A Mark II key has dimples but only a single pair of notches on the side of the keys. That pair of notches is located just below the head of the key, and there are key blanks with that pair of notches pre-cut. There is no dispute that Mark II keys can be reproduced by key cutters other than Banham without any infringement of Banham’s patents. What the key cutter has to do for a Mark II key is to reproduce the dimples along the main surface of the key. The Mark III key as described above has a second pair of notches along the shaft of the key. In order to cut a Mark III key, therefore, what needs to be reproduced is both the set of dimples and the second pair of notches, wherever that lies along the shaft of the key.

Banham’s claim is that the keys obtained by its investigators at the Liverpool Street and Putney branches of Rogers & Sons were indeed Mark III keys that corresponded to the claims of the two patents, and were therefore infringements contrary to s. 60(1) of the Patents Act 1977 .

The breach of undertakings is alleged both on the basis of the two keys provided by the Liverpool Street and Putney branches of Rogers & Sons, and on the basis of the Banham poster displayed at the Putney branch. In addition, in its pleaded claim Banham said that the undertakings were breached by the fact that Rogers & Sons kept inventory that was used to make infringing keys, although at the hearing today Ms Collett said that she was content not to pursue that allegation.

Finally, trade mark infringement is alleged on the basis that (i) Mr Rogers has purchased and sponsored adverts on Google which read “key cutting, all types of key cutting, including security, multi-lock, Banham, household, office keys and more”, and (ii) the Putney branch displayed the blue poster with the phrase “BANHAMS COPIED”, and an image of what is alleged to be the Mark III key.

On 3 November 2025 Mr Rogers filed an acknowledgement of service indicating an intention to defend all of the claim (albeit that he did not serve that on Banham). Mr Rogers’ defence was accordingly due on 1 December 2025.

It appears, however, that Mr Rogers did not file a defence or a document purporting to be a defence. While Mr Rogers maintains that he did file a defence, there is no such document either on the court file or on the files of Mewburn Ellis. Indeed, if Mewburn Ellis had received such a document, there would have been no reason for them to ask (as they did on 5 December 2025) whether Mr Rogers needed an extension of time to file a defence. Mr Rogers has, moreover, not produced any defence document at the hearing today, and was not able to say anything other than that he thought he had filed it with his acknowledgement of service.

I also note that Mr Rogers’ correspondence with Mewburn Ellis did not refer to any defence having been filed either with or around the time of the acknowledgement of service. His 5 December 2025 email following the offer of an extension of time to file a defence said rather that “I’ve served you enough of a defence to put your claim to bed …” (emphasis added). That language is inconsistent with the suggestion that Mr Rogers had already served a specific document regarded as a “defence” some time previously; rather, it implies that Mr Rogers considered that his “defence” was set out in some way in his correspondence. An email on 17 January 2026 also said that “I’ve sent you my last defence. Read into that you want”, again not suggesting that a defence had been sent long ago, with or around the time of the acknowledgement of service.

On 16 October 2025, i.e. the day after Banham filed its claim, Mr Rogers sent Ms Hart an email saying that he would be counterclaiming for fraud and harassment, a threat which was repeated in emails to Ms Hart and others at Mewburn Ellis on 23 and 29 October 2025.

On 30 October 2025, Mr Rogers forwarded to Liam Batty, then a trainee solicitor at Mewburn Ellis assisting Ms Hart with the claim, an email message from “Gary Oliphant” of “Independent Key Services Ltd”, purporting to confirm that a photograph sent by Mr Rogers (which was not provided) was a photograph of the “MK2 Banham LSS1 blank”. Another email to Mr Batty on the same day said: “Get a pen and point out on our blanks … the 4 side notches”.

On 31 October 2025 Mr Rogers sent Mr Batty a photograph of his own Mark III Banham key, together with a picture of what he said was a Mark II blank key, with the commentary: “Note no 2 extra square notches? Surely you can see this?”.

On 1 November 2025 Mr Rogers emailed Mr Batty saying:

“Just wanted a private conversation me and you

“You ‘hope to qualify’?

The deadline for a defence having passed without any defence having been filed, Mewburn Ellis asked Mr Rogers on 5 December 2025 whether he needed an extension of time to file his defence. Mr Rogers responded on the same day with an expletive-laden email:

“I’ve served enough of a defence to put your claim to bed in under minute I’ve given you dates I can make the court to explain to someone

Meanwhile, on 17 January 2026, Mr Rogers sent an email to Ms Hart saying:

“I’ve sent you my last defence

On 6 February 2026 Mr Rogers emailed Ms Hart:

“just know I Know how much of your argument is fake evidence and fraud

As a side issue, Mr Rogers pointed out that there was an inaccuracy on the first page of the particulars of claim, with the date of Mr Rogers’ undertaking rendered as 5 December 2025 in §3 of the summary of the claim, when the correct date was in fact 5 December 2024. Mewburn Ellis’ request for Mr Rogers to consent to an amendment to correct that very minor error met with a blunt refusal, hence the second application before me for permission to amend in that regard.

In addition to the correspondence set out above, on 30 December 2025 Mr Rogers filed with the court a single-page document entitled “Witness Statement”, dated by him 22 December 2025, in which he repeated his contention that the keys cut by him were cut on Mark II blanks which had two notches, rather than the four notches specified in Banham’s Mark III patent. That document was not ever sent to Banham or its solicitors, and they were therefore not aware of the document until the court provided it to them ahead of today’s hearing.

In a short further document sent to the court for the purposes of today’s hearing, Mr Rogers repeated his argument that his business only used Mark II blanks with two notches.

Before turning to the applications before me, it is necessary to make a preliminary comment about the correspondence between Mr Rogers and Mewburn Ellis that I have just outlined. It is much to the credit of Mewburn Ellis that their responses to Mr Rogers’ emails were both measured and courteous at all times. Ms Collett has, however, expressed understandable concern at the content and tone of Mr Rogers’ emails to her instructing solicitors.

I regret to say that I regard the way in which Mr Rogers conducted that correspondence as wholly unacceptable. Rather than making any serious attempt to engage with the issues in the claim, Mr Rogers seems to have thought it appropriate to send abusive and threatening emails to Mewburn Ellis, including particularly unpleasant emails to both Ms Hart, and Mr Batty who was then a trainee in the firm (although he has since qualified).

Solicitors are officers of the court. They have extensive professional obligations requiring them to act with independence and integrity, in the interests of justice. They are entitled to carry out those obligations without becoming the subject of abuse and threats of any kind, let alone threats that are made in directly personal terms. It is, unfortunately, increasingly easy to find out about someone’s private life through a simple internet search. But that does not make that a legitimate subject of comment in correspondence between a litigant and the solicitors on the other side to proceedings in which that litigant is involved.

There was, in the present case, no reason whatsoever for Mr Rogers to make any reference to Mr Batty’s qualifications or his personal life, and the threatening terms of those comments, as well as his threats to Ms Hart, are matters of very serious concern.

Mr Rogers has made repeated apologies today to the court for his conduct, explaining that his emails were sent during a period of considerable stress for him. It is apparent that he had some difficulty understanding the claim with which he was faced. It is appropriate to record Mr Rogers’ very different attitude in court today, at which Mr Rogers presented as a courteous litigant. However, it is important to emphasise that the fact that Mr Rogers is a litigant in person who may have found it difficult to engage properly with the proceedings with which he was faced does not in any way justify or excuse the manner in which he conducted his correspondence with Mewburn Ellis.

Turning to the applications before the court, it is convenient to start with the application for permission to amend the particulars of claim. By the end of the hearing, there were three amendments sought. The first is the minor typographical error as to the date of Mr Rogers’ undertakings in the summary of the claim, which I have already noted. The second is a correction to §20 of the particulars, correcting the word “claimant” to the word “defendant”. The third is the deletion of §29(c) of the particulars, which refers to the retention by Mr Rogers of equipment used to produce infringing keys.

Those amendments were no longer opposed by Mr Rogers at the hearing today. The first two are minor amendments. The third is a substantive amendment, but does not materially impact on the substance of the claim, and there is no reason why those amendments should not be granted. I therefore grant permission to amend.

Banham’s substantive applications are brought on three alternative bases. The first is an application for default judgment for failure to file a defence. The second is an application for strike out of the defence (if there is one) on the grounds of abuse of process. The third is an application for summary judgment on the claim or strike out of the defence (if there is one) on the grounds that there is no reasonable basis for defending the claim. At the hearing, Ms Collett confirmed that the focus of her case was on the summary judgment application, although she did maintain the alternative applications if necessary.

It is most logical to start with the question of whether Mr Rogers has filed a defence and whether, if not, it would be appropriate to grant judgment in default of a defence.

CPR r. 12.1 defines “default judgment” as judgment without trial where a defendant:

“(a) has failed to file an acknowledgment of service; or

has failed to file a defence or any document intended to be a defence.”

Under CPR r. 23.3(2):

“Judgment in default of defence (or any document intended to be a defence) may be obtained only—

where an acknowledgement of service has been filed but, at the date on which judgment is entered, a defence has not been filed;

CPR r. 6.17(2) provides that:

“Where the claimant serves the claim form, the claimant –

may not obtain judgment in default under Part 12 unless a certificate of service has been filed.”

The certificate of service in this case was filed on 21 October 2025, six days after the claim was issued.

The requirements for a defence are set out in CPR r. 16.5. This provides, in particular, that the defendant must deal with every allegation in the particulars of claim, stating which of the allegations are denied, which allegations they are unable to admit or deny, but which they require the claimant to prove, and which allegations are admitted: r. 16.5(1). Where the defendant denies an allegation, they must state their reasons for doing so: r. 16.5(2).

CPR r. 22.1 provides that a statement of case must be verified by a statement of truth. Under r. 22.2, if a party fails to verify their statement of case by a statement of truth, the party may not rely on the statement of case as evidence of any of the matters set out in it, and the court may strike out that statement of case.

There is no exception in those rules for litigants in person. Indeed, as Lord Sumption noted in Barton v Wright Hassall [2018] UKSC 12 , §18, a litigant’s lack of representation will not usually justify applying a lower standard of compliance with rules of the court. The overriding objective requires the court so far as practicable to enforce compliance with the rules, and the rules do not in any relevant respect distinguish between represented and unrepresented parties. §18 of that judgment concludes with the observation that “Unless the rules and practice directions are particularly inaccessible or obscure, it is reasonable to expect a litigant in person to familiarise himself with the rules which apply to any step which he is about to take.”

There is nothing obscure or inaccessible about the requirements of CPR r. 16.5 and r. 22. Those provisions set out clear and unambiguous requirements regarding the content of a defence. Mr Rogers has not filed anything that comes close to complying with those requirements.

Nor, in my judgment, has Mr Rogers filed “any document intended to be a defence” for the purposes of CPR rr. 12.1 and 12.3(2). While the White Book commentary at §12.1.1 suggests that the words “or any document intended to be a defence” indicates that a defendant need not comply with the strict requirements of (for example) r. 16.5 and r. 22.1 in order to avoid a default judgment, those words cannot, in my judgment, be interpreted to encompass any document whatsoever in which the defendant has put forward an argument rebutting some aspect of the claim.

Still less can the court or the parties be expected to go through all of the communications that a defendant has sent, to piece together anything that might be regarded as a response to the claim or some part of it. What is required at the very least is that the defendant has filed a document that is intended to be their defence, even if that document does not comply to the letter with the requirements of, in particular, r. 16.5 and r. 22.1.

In this case Mr Rogers himself has only identified one document which he says was intended to be his defence, which is the document that he says that he filed on or around the same time as filing his acknowledgement of service. I have already found that there was no such document. Accordingly, the only document which Mr Rogers contends was intended to be his defence simply does not exist.

Nothing in the other documents filed by Mr Rogers can sensibly be described as a document intended to be a defence. At the most, Mr Rogers’ position has been set out piecemeal in various emails and other miscellaneous documents, none of which is described as a defence, none of which could in substance be regarded as anything approximating a defence, and none of which in fact Mr Rogers says today should be regarded as his defence. As Ms Collett has put it, nothing before the court enables the court sensibly to proceed to a trial of the substance of the dispute, or even to identify what precisely the dispute between the parties is.

In my judgment, therefore, Banham would be entitled to judgment in default of a defence.

If I were to be wrong about the issue of default judgment, the next question would be whether any defence, or any document intended to be a defence, should in any event be struck out on the grounds of abuse of process.

CPR r. 3.4(2) provides that:

“The court may strike out a statement of case if it appears to the court –

that the statement of case is an abuse of the court’s process or is otherwise likely to obstruct the just disposal of the proceedings;

that there has been a failure to comply with a rule, practice direction or court order; …”

Even if it were (contrary to my conclusions above) possible to piece together Mr Rogers’ miscellaneous emails and other submissions to regard those as being a defence, they would in my judgment be liable to be struck out on essentially the same grounds as set out above.

Ultimately, however, Ms Collett’s primary submission was that irrespective of whether there might be some basis for regarding any of Mr Rogers’ correspondence and/or submissions as amounting to a defence, and even if any such document(s) were not liable to be struck out as an abuse of process, summary judgment should nevertheless be given in Banham’s favour (or the defence, if any, should be struck out) on the grounds that what has been said so far by Mr Rogers discloses no reasonable grounds for defending the claim.

The court’s power to strike out on that basis is set out in CPR r. 3.4(2)(a), which provides that the court may strike out a statement of case if it appears to the court that the statement of case “discloses no grounds for bringing or defending the claim”. In respect of summary judgment, CPR r. 24.3 provides that:

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

it considers that the party has no real prospect of succeeding on the claim, defence or issue; and

there is no other compelling reason why the case or issue should be disposed of at trial.”

The test for both is well established and was set out by Lewison J in Easyair v Opal Telecom [2009] EWHC 339 (Ch) , §15, as follows:

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

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

In reaching its conclusion the court must not conduct a “mini-trial”: Swain v Hillman ;

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

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

Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without the fuller investigation into the facts at trial than is possible or permissible on summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact at the time of the application, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case: Doncaster Pharmaceuticals Group Ltd v Bolton Pharmaceutical Co 100 Ltd [2007] FSR 3 ;

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

Ms Collett also relied on the comments of Nicklin J in Amersi v Lesley [2023] EWHC 1368 KB, and in particular at §142(7) where the judge said:

“The Court may, after taking into account the possibility of further evidence being available at trial, and without conducting a ‘mini-trial’, still evaluate the evidence before it and, in an appropriate case, conclude that it should ‘draw a line’ and bring an end to the action.”

That is the course which Ms Collett urges on me today, and is a course which I consider appropriate to adopt.

Starting with the patent infringement claim, Mr Rogers’ emails and written submissions made (in essence) two objections to the claim. First, he contended that the keys obtained by Banham’s investigators were Mark II and not Mark III keys. Secondly, he claimed that the keys cut by his business were not and could not be infringing Mark III keys, because they were cut on what he referred to as “Mark II” key blanks which had only one pair of notches. Neither of those objections are sustainable.

As to the first point, Mewburn Ellis sent Mr Rogers high resolution photographs of the allegedly infringing keys obtained by its investigators, which show that in both cases the keys cut did indeed have a second pair of notches further down the shaft. In addition, at the hearing today I been shown the physical keys themselves – i.e. both the original keys presented for copying, and the copies that were made – and the working locks into which those keys fitted. As far as I can see, these are indeed the keys shown in the photographs provided by Banham’s solicitors to Mr Rogers. It is undeniable, contrary to Mr Rogers’ submissions in his correspondence, that the keys which are relied upon by Banham have two pairs of notches and fit the working Banham locks to which they are intended to correspond. They are therefore Mark III keys rather than Mark II keys

Mr Rogers inspected the keys and locks at this hearing. Having done so, he did not pursue a submission that the keys were Mark II keys rather than infringing Mark III keys.

As to the second point, this seems to rest on a misunderstanding of Banham’s claim. The claim is not that the use of any particular key blank was an infringement of the relevant patents. The patents are said to have been infringed by cutting the relevant key blank into Mark III keys. Since the claims of the patent do not specify a location for the second pair of notches on a Mark III key, that location will differ from key to key. A Mark III key can therefore be cut from exactly the same key blank that is used to produce a Mark II key, the difference between the two being that in the case of the Mark III key what is added in the cutting process is not only the required dimples but also the second pair of notches.

Again, having heard Ms Collett’s submissions on this point, Mr Rogers did not at the hearing pursue a submission that the use of “Mark II” key blanks avoided any patent infringement. Instead, Mr Rogers made a different submission, which was that the allegedly infringing keys were not and could not have been made or cut at his stores because his employees were told never to cut Mark III keys, and were trained on the differences between the keys. He added that he had spoken to his employees, who were adamant that they had not cut Mark III keys. Mr Rogers therefore essentially disputed the veracity of the Mintz report.

This point was not made at any time before the hearing today, notwithstanding Mr Rogers’ extensive correspondence with Mewburn Ellis both before and after service of the claim. There is, moreover, no evidence supporting this submission in any of the material before me. Mr Rogers has not put forward any evidence from the relevant employees, or even identified who would give that evidence. Nor has Mr Rogers provided any evidence as to the training processes undergone by those employees or the policies within his business as to the cutting of Mark III keys (if such policies do indeed exist).

Having carefully considered all of the evidence before me, and all of the points advanced by Mr Rogers in his correspondence with Banham, there is in my judgment no realistic prospect of Mr Rogers successfully defending this aspect of the claim. It is absolutely clear that the keys obtained by Banham’s investigators, Mintz, were indeed infringements of Banham’s patent, and Mr Rogers did not seriously pursue an argument to the contrary at the hearing. His only remaining contention was the allegation that Mintz effectively fabricated its investigation report. If that was his case, however, there has been every opportunity for him to have raised this point before, and to have provided some basis for this assertion, but he has not done so. There are no grounds, in any of the material before me, to doubt the veracity of the Mintz investigation report, and I have not seen anything today which suggests that any further evidence will indeed become available at the hearing which might cast doubt on that.

Banham’s breach of undertaking claim is put on two bases. The first is the fact of the patent infringement, with which I have dealt already, and the second is what I have referred to as the blue poster.

In relation to the patent infringement itself, Mr Rogers had nothing more to say other than to repeat the points made in relation to the main patent infringement allegation, which I have rejected.

In relation to the blue poster, Mr Rogers said that this was a generic poster which did not specifically identify a Banham Mark III key. I reject that submission. The poster, on inspection, depicts a key with dimples and the two pairs of notches on it which are the hallmark of a Mark III key as opposed to a Mark II key. There is nothing else that Mr Rogers has referred to which could provide any defence to that claim for breach of undertaking.

Finally, as regards the trade mark infringement claim, I do not reach any finding as to the Google advert alleged by Banham. There seems to be some doubt as to whether this was, as pleaded, a sponsored advert or simply a reference to an old website. However, the other basis on which trade mark infringement is put is the blue poster. As I have already found, that poster undeniably contains a picture of a Banham Mark III key with two pairs of notches. Around that image are the words, in capital letters, “BANHAMS COPIED”. Banham contends that this is a use of a sign either identical to, or highly similar to, its “BANHAM” word marks, used for identical goods and services (i.e. the cutting of Banham keys) contrary to ss. 10(1) and/or 10(2)(b) of the Trade Marks Act 1994 .

Mr Rogers has said that his shops can and do cut Banham Mark I and II keys without any breach of the patent. He therefore argued that the blue poster was entitled to advertise that fact.

That raises the question of whether Mr Rogers can advance a defence of honest commercial use pursuant to s. 11(2)(c) of the Trade Marks Act, which provides that:

“A registered trade mark is not infringed by –

the use of the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of the trade mark, in particular where that use is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

Ms Collett drew my attention to this provision, but said that it could not apply in circumstances where the blue poster was being used to advertise a service that was not limited to the lawful copying of Banham Mark I and II keys, but which also extended (as I have found) to the unlawful copying of Mark III keys. In such a case, she said, the use of Banham’s word marks cannot be established as being “in accordance with honest commercial practices”. That submission is, in my judgment, well-founded. Mr Rogers had no answer to it, other than his claim at the hearing that his staff did not copy Mark III keys, which I have rejected for the reasons give above.

For all of these reasons, I am satisfied that Mr Rogers has no real prospect of defending the claim. Neither his correspondence nor his written or oral submissions disclose any sustainable defence, and there is nothing before the court to indicate that further evidence at trial would materially improve his position. In the language of Nicklin J, it is now appropriate to draw a line under the proceedings and to bring an end to the action.

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