Don’t just add British and Claim you are different!

The Claimant ran the Asian Achievers Awards.

The Defendant ran the British Asian Achievers Awards.

The Claimant successfully sued for passing off

Background

The Claimant company is a successful publishing business aimed largely at the Asian market. The event ran from 2000 and is now a huge event in the calendar where the award ceremony is held at Dorchester House. However, in 2016, the Defendant was incorporated for the purpose of running a similar awards ceremony under the name the ‘British Asian Achievers Awards.’

The Claimant was unhappy with the stance that the Defendant took and correspondence was exchanged, threats made and an interim injunction granted preventing the 2017 conference taking place.

The Issues to be decided

1) Whether the Claimant has acquired goodwill in the UK associated with the name or mark Asian Achievers Awards.

2) Whether the Defendants have (by using and/or threatening to use, the name or mark British Asian Achievers Awards) misrepresented that their competing events and/or any goods or services associated therewith is or are those of the Claimant or are connected or associated with the Claimant in the course of trade or are in some way authorised by the Claimant.

3) Whether the Claimant has suffered or is likely to suffer or to have suffered loss and/or damage.

4) The extent to which the Second Defendant is jointly and severally liable for the acts of the First Defendant (if at all).

The law

A good case to rely upon where you are seeking to oppose passing off is Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, which is generally seen as authority for the proposition that where passing off is alleged in relation to a sign which is essentially descriptive, small differences may preclude misrepresentation. An injunction was granted at first instance, but the Court of Appeal reversed the decision, and House of Lords upheld the Court of Appeal. Viscount Simonds held (at page 41):

“The question is not whether a trader who has chosen to incorporate in his trading style words which are descriptive of the services he performs cannot as a matter of law succeed in a passing off action based on the use by another trader of a trading style which, by reason of the incorporation of those words, is calculated to deceive, unless he establishes by evidence of such words have acquired a secondary meaning what has ceased to be descriptive of the services rendered.

… It is not a condition of success … that the Plaintiffs should establish that the words in dispute had acquired a secondary meaning.

The real question is the simple and familiar one. Have the appellants proved that the use by the respondents of the trading style “Office Cleaning Association ” is calculated to lead to the belief that their business is the business of the appellants? It is in these words “calculated to lead to the belief” that the issue lies. It is a calculation often difficult to make, .. The nature of the words which are used in the trade name, the circumstances and peculiarities of the trade, the motives, proved or presumed, of the trader who would use the words, all these and many other factors must be considered by the judge in determining whether a Plaintiff can succeed in his claim. It is a question upon which the judge who has to decide the case has to bring his own mind to bear and which he has to decide for himself … But instances of actual deception will be given their due weight.

… the Courts will not readily assume that the use by a trader as part of his trade name of descriptive words already used by another trader as part of his trade name is likely to cause confusion and will easily accept small differences as adequate to avoid it. …

It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.”

Viscount Simonds identified “Services” and “Association” as the two distinctive words in the names, and held that there was sufficient differentiation to avert any confusion. In this case the addition of British also differentiated the cases involved.

There is also the case of The British Diabetic Association v The Diabetic Society [1996] FSR 1 where the Judge found that the two crucial words in that case were similar in derivation and meaning, and so there was not sufficient differentiation to preclude passing off.

The Decision 

“In all the circumstances, I am satisfied that simply by adding the word ‘British’ to the Claimant’s name, the Defendants have not sufficiently distinguished their event from the Claimant’s event or done enough to stop confusion arising. In my judgment, there is a risk that a substantial number of potential attendees at or sponsors of the Claimant’s event will be confused into thinking that the Defendants’ event is that of the Claimant or is connected with it.In my judgment, the Defendants’ use of the name British Asian Achievers Awards for their event is liable to cause and will have caused passing off”

 Michael Coyle

 

 

 

 

Annex A

Claimant’s registered trade mark No. 3191870

Claimant’s logo with strapline

Annex B

First Defendant’s trade mark application No. 3246884

Defendants’ alternative logo (with disclaimer)

 

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