The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, he changed the names to the names of the respondent companies. Later he left their employment and again sought to trade under his own name. The claimants owned a trade mark for the name associated with the sale of high value goods. He asserted that he had sought to avoid any confusion, and that most of his business was with wealthy individuals who traded with him rather than any company for whom he worked. The judge’s decision was capable of being justified on the evidence, and could not be set aside as to passing off. The respondent sought to be allowed to use his own name to trade. Also, where a defendant in trade uses as his sign a word which constitutes the registered trade mark of another in combination with other words, the sign is identical with the mark for the purposes of s. 10 (1). Whilst the injunction required amendment to allow the individual to trade under his own name as a sole trader, it would otherwise stand.
In the general run, goodwill generated by the acts of an employee will be vested in the employer
Judges:
Lord Justice Peter Gibson, Lord Justice ChadwickCitations: [2001] EWCA Civ 1499, [2002] FSR 31, (2002) 25(1) IPD 25001, [2002] ETMR 47
Links:
Statutes:
Trade Marks Act 1994 10(1) 10(2) 11(2)(a)
Jurisdiction:
England and Wales
Citing:
Cited – Joseph Rodgers and Sons Ltd v W N Rodgers and Co 1924
The court discussed the ‘own-name’ defence in an action for passing off or trade mark infringement: ‘To the proposition of law that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is . .
Cited – British Sugar Plc v James Roberston and Sons ChD 17-Feb-1996
The question was raised on whether, given its derivation from article 5 of the trade mark directive, non-trade mark use could be caught by sections 10(1) to (3).
Held: There was no trade mark infringement by the use of a common laudatory word. . .
Cited – Aktiebolaget Volvo v Heritage (Leicester) Ltd 2000
. .
Cited – Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another ChD 28-Feb-2001
The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only . .
Applied – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. . .
Cited by:
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
Cited – Bhayani and Another v Taylor Bracewell Llp IPEC 22-Dec-2016
Distinction between reputation and goodwill
The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 June 2022; Ref: scu.166649