Educating Samuel No 2. - the "Own Name" Defence to Trade Mark Claims

Samuel Pepys, Head of the “Commercial Department” and Equity Partner of Deweys, saw the Piccadilly shuttle turn into Cross Street. He was about to break into a puffy trot towards the bus stop just opposite Ship Canal House when he heard someone call his name. It was none other than Lucy Ball one of the partners of his old firm. Buses run quite frequently between Victoria and Piccadilly so he slowed to greet her. 

"Hello Lucy! Fancy meeting you here."

"Fancy meeting you more like", replied Lucy, "I hear you have moved to Rawtenstall."

"Yes that's right" purred Samuel, "I'm a partner at Deweys and head of IP you know."

Lucy somehow managed to contain a snigger, partly at the pretensions of Dewey Screwm & Howe (as Deweys used to be called) and partly at the idea of Samuel heading  an intellectual property or indeed any department of anywhere - even of Deweys - thought it best to change the subject. 

"How's your wife?" she enquired.

"Oh very well thank you Lucy. In fact we've got some good news. There's a new addition to the family."

Lucy was on the point of asking whether they had acquired a puppy or a kitten but again managed to control herself.

"Oh congratulations!" She smiled. "Boy or girl?"

Samuel replied that Providence had blessed him with yet another daughter.

"Well I'll let you buy me a drink to wet the baby's head" replied Lucy. "Isn't it convenient that we are just outside Mr.Thomas's!"

Mr Thomas's Chop House - or "Tom's" as the Rumpoles (aka as "CLJs" "common law Johnnies" or "Jennies" depending on gender or "circuiteers") call it - is a Manchester institution. It has some very odd rules like you can only buy a drink if you stand at the bar and have to wait for a waitress (or, occasionally, waiter) if you sit at a table. Waitress service is, of course, significantly more expensive than bar service if only because you have to leave a tip. Lucy plonked herself down at a table, Samuel following in her wake. 

The waitress did not take too long to arrive and she recognized both of them.   Mr Thomas's was just down the road from Tebbits' old offices and was very popular with their staff. It was also close to several sets of chambers. Many a young fogey in his black jacket, striped trousers, starched collar and watch chain had propped up the bar over the years. Samuel had been in once or twice for leaving dos and birthdays but was far from a regular.

"Oh, Hallo. I haven't seen you for a bit, love." She said addressing Samuel. "I see you all the time." She added turning to Lucy."

"We like to support local business" retorted Lucy.   

"I don't know about that, love," replied the waitress, "I lost my job after your firm wound up my last employer,"

"Well they should have paid their rent" snapped Lucy. "But never mind. Young Samuel has got some good news".

"Yes, my wife's just had a baby" beamed Sam.

"A-a-a-a-gh! Is it your first, sweetheart?"

"No its our third actually. We were hoping for a boy but it's another girl."

"That's nice. I bet she's really sweet. Anyway what are you going to have to drink?"

"Mine's a half of Boddies. Lucy?"

"A sparkling mineral water please.”

"On the wagon, Lucy? That's not like you. Wouldn't you like a glass of wine?"

"Oh all right. You've twisted my arm.   I'll have a glass of that nice Australian red you've got, please. Just a little one, mind."

"Standard glass love?" Enquired the waitress.

"Come on", retorted Lucy, "it's got to colour the glass at least."

"Large glass then" concluded the waitress.

"If that's how you calibrate it" replied Lucy.

"What's brought you back to Manchester?" Asked Lucy. "I assume that you have not asked for your old job back."

"Oh no."

“As it happens I have a trade mark case and I have just come back from seeing counsel at Palatinate Chambers"

"What! For an IP case?" snorted Lucy. "You're not going to London?"

"I've gone to Nigel Smith, as it happens", said Samuel defensively “I don't like London. The clerks down there never take us seriously. I never get the counsel I want.   The only ones who are ever available are those I've never heard of. They are just as expensive though. Their opinions are very short and full of jargon. And I don't think they are all that much better than the local bar. At least Nigel speaks my language."

"You mean Nigel Smith" sneered Lucy. "I hear he has just been adopted as New Labour Parliamentary candidate for Wilmslow and Prestbury. Nice to think he might actually win something," she added sarcastically.   "How big is the Tory majority?"

"Oh I find Mr Smith very good though I also go to Miss Jones in Market Street."

"They might be alright for personal injuries or possession claims," mused Lucy,  "but intellectual property?"

"I think it is very dangerous to encourage clients to go to London counsel," replied Samuel, "because it might make them think of going to London solicitors too."

Lucy reflected that there might be something in that point. 

"Anyway. What is it that you've come to see Nigel about?"

"Well I represent Bertha's Intimates of Ramsbotham who supply plus size ladies' underwear." 

Lucy giggled at the thought of a ram's bottom in frilly knickers.

"What's wrong?" asked Samuel nervously.

"Oh nothing. Just carry on.”

"Well we've registered BERTHA for bras, knickers and other items of ladies’ underwear in class 25”

“And also lace and embroidery in class 26 no doubt and maybe textiles in class 24” suggested Lucy helpfully swilling the last remains of wine in her glass.

“Oh I don’t know about that” replied Samuel. “Do you think we should have done?

“A bit late now if you haven’t” retorted Lucy shaking her glass more vigorously.

“Oh would you like another one?”

“Oh I shouldn’t. Well maybe another little one.”

A glass of similar capacity was duly produced for Lucy while Samuel continued to nurse his half.

“Well there’s a shop behind Canal Street called “Bertha’s” which sells frilly underwear to transvestites. We sent them a letter of claim warning them that they had infringed our trade mark and were passing themselves off as us and asking for the usual undertakings or else and I got this rather snotty letter back from Sebastian Goat of Hannibals virtually telling me how to do my job.”

He fished a photocopy from his briefcase which he handed to Lucy.

Lucy recognized the style as she and Sebastian had trained at the same firm.

“The point that doesn’t seem right to me is where Hannibals say their client relies on s.11 (2) (a) of the Trade Marks Act 1994 because it is using its own corporate name in accordance with honest practices in industrial and commercial matters.”

“Well I’ve just got a companies search and I see than Bertha stands for Bertha Holdings (2000) Ltd. and its directors and shareholders seem to be two blokes neither of whom is called Bertha.”

“I shouldn’t be too sure of that if they are in the Village” counselled Lucy. 

“Anyway Bertha Holdings was incorporated in 2000 long after we’d registered our trade mark so how can they use our trade mark.   If the other side are right then you could get out of a trade mark case just by changing the name of the company to that of the registered trade mark.”

“Well no doubt Nigel’s told you all about Céline, Asprey, Premier and also that recent case here before Richard Arnold about the Cipriani Resuarant.


“What?” Spluttered Lucy spilling some of her precious libation. “How much is his clerk charging? Whatever it is I’d ask for my money back.   Now look what you’ve made me do to my drink.”

“Oh do have another.”

“Just a teeny, weeny one, perhaps.   Aren’t you going to have another, yourself.”

Samuel consented to a tomato juice and ordered another large red for Lucy.

“Well that was what Céline was all about” said Lucy getting into her stride. She was very fluent and knew a lot of intellectual property law. She was one of those sad specimens of humanity who actually prefer the law to football, cars, holidays and home improvements and even find it stimulating.

“The claimant, Céline SARL, was incorporated as a private company in 1928 and had been making and selling clothing and accessories ever since. It applied to the French trade marks registry to register CÉLINE as a trade mark for all goods in classes 1 to 42 and  in particular 'clothes and shoes' in 1948 and kept the registration up to date.    The defendant .opened in the name of Céline as a ladies and gents’ outfitter in Nancy in 1950 although the business was later incorporated as  a public company known as Céline SA.. Well, decades passed before the existence of the defendant came to the claimant’s attention but when it did the claimant brought an action for trade mark infringement and what we would call passing off (but the French 'concurrence déloyale') in the Nancy Tribunal de Grande Instance. The court found for the claimant, granted an injunction and ordered the defendant to pay €25,000 damages.”

“They’ve got some nice gates in Nancy at the the Place Stanislas” mused Samuel, “rather like the ones in Warrington."

“Quite” agreed Lucy, “I’ve not finished.”

“Anyway, the defendant’s appealed and the appeal court referred the following question to the European Court under art 234 of the Treaty of Rome:

'Must Article 5(1) of [the directive] ..... be interpreted as meaning that the adoption, by a third party without authorisation, of a registered word mark, as a company, trade or shop name in connection with the marketing of identical goods, amounts to use of that mark in the course of trade which the proprietor is entitled to stop by reason of his exclusive rights?'

“They threw it out, I hope” enquired Samuel nervously.

“Well not exactly”, replied Lucy. “They more or less threw it back to the national court. What they said was:

'The unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark in connection with the marketing of goods which are identical to those in relation to which that mark was registered constitutes use which the proprietor of that mark is entitled to prevent in accordance with Article 5 (1) (a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, where the use is in relation to goods in such a way as to affect or to be liable to affect the functions of the mark. 

Should that be the case, Article 6(1)(a) of Directive 89/104 can operate as a bar to such use being prevented only if the use by the third party of his company name or trade name is in accordance with honest practices in industrial or commercial matters.'

“That means nothing to me” responded Samuel.

“Nor to me” agreed Lucy, “other than a ticking off to the Court d’Appel for asking a daft question. But I think what the European Court meant to say was that you can’t use someone else’s registered trade mark for the sale of goods or services but if you or your company just happen to be called by the same name as the registered mark then you won’t necessarily infringe the trade mark. Oh and they did affirm  that art 6 (1) (a) from which s.11 (2) (a) of our Act is derived is not limited to the names of natural persons following their decision in Anheuser-Busch, at paragraphs 77 to 80. Probably not what you wanted to hear.”

“Oh dear,” said Samuel gloomily, “So there may be something in Goat’s point after all.  Nigel didn’t seem to think it was important enough to mention though”, he thought cheering himself up.

“Nigel’s probably not even heard of it.  You’re not likely to do when your practice consists mainly of landlord and tenant and personal injuries.   But if you wait while I get us another drink” Lucy said opening her purse. “Oh silly me. I’ve come out without my credit or debit cards and I’ve only got enough for the taxi home.   I suppose it is getting late. Your wife must be expecting you.”

“Oh it’s not too late. Let me get you another drink” insisted Samuel anxious not to lose the advantage of this serendipitous wisdom.

“Well maybe a very, very, small one. Not too small, mind”  warned Lucy when the waitress reappeared to take the order.

“Another of your usual then, love” she noted.

“Cheer up, Sam. All is not lost.   The Court did seem to suggest that everything depended on how the corporate name was used:

‘The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services (see, to that effect, Case C-23/01 Robelco [2002] ECR I-10913, paragraph 34, and Anheuser-Busch, paragraph 64). The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business which is being carried on. accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being 'in relation to goods or services' (Lucy’s italics) within the meaning of Article 5(1) of the directive.’

Its a very narrow exception because the Court added:

‘There is use 'in relation to goods' within the meaning of Article 5(1) of the directive where a third party affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that effect, Arsenal Football Club, paragraph 41, and Adam Opel, paragraph 20).'

In addition, even where the sign is not affixed, there is use 'in relation to goods or services' within the meaning of that provision where the third party uses that sign in such a way that a link is established between the sign which constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by the third party.’

Finally, Lucy concluded, the Court reminded us that

‘the condition stated in Article 6(1) of the directive that use be 'in accordance with honest practices in industrial or commercial matters' is, in essence, an expression of the duty to act fairly in relation to the legitimate interests of the trade-mark proprietor (Anheuser-Busch, paragraph 82)’

And there have been several English cases in which the own name decision has been considered one of which was quite recent.”

Lucy paused there to take a last sip of her wine which was replenished by Samuel. 

“The first of these cases is Asprey & Garrard Ltd v WRA (Guns) Ltd [2001] EWCA Civ 1499 (11 October 2001). Wiliam R Asprey, a member of the Asprey family which had built up the gunsmith’s business that had been acquired by the claimant company and who had previously managed that company’s gunroom, set up his own company in the name of WRA (Guns) Ltd. which opened a gun shop in the name of “William R. Asprey Esquire'.   Asprey & Garrard sued WRA and Mr Asprey for trade mark infringement and passing off and applied for summary judgement against them.   Part of WRA and Asprey’s defence was that they were merely using their own name.”

“Did it succeed?”

“Did it heck as like.  Mr Justice Jacob, who head the application, said it was one thing to incorporate a company in a particular name, or even to carry on business under one’s own name, but quite another to use that name in such a way as to mislead consumers as to the source of goods or services.  The defence is based on necessity and there was no need in this case for the defendant company to trade as “William R. Asprey Esquire'.   Were it otherwise, the judge remarked, the route to piracy would be clear.”

The judge granted summary judgment and the defendants appealed.    They got even shorter shrift in the Court of Appeal. The defendants could not rely on the own name defence because the company was not even using its own name.   It had been incorporated as WRA (Guns) Ltd. but was trading in the name of one of its directors. The director,. Mr. Asprey, could not rely on s.11 (2) because he had not been trading.”

“That looks promising” replied Samuel hopefully.

“Ah but the Court of Appeal rowed back a little in Premier Luggage and Bags Ltd. v The Premier Company (UK) Ltd. [2002] EWCA Civ 387 (26 March, 2002). Goodness, is that the time, I really must be on my way.”

Samuel persuaded Lucy to stay just a little bit longer.

“In that case, Premier Luggage and Bags Ltd. had traded in leather goods and registered PREMIER as a trade mark for “suitcases, trolley cases, school bags, back packs, shopping bags, casuals, holdalls, light bags, sports bags, wallets, bum bags, kiddie bags and attaché cases” within class 18.   The Premier Company (UK) Ltd. had previously sold Christmas decorations, Halloween costumes and accessories and garden tools and barbecues under the brand name “Premier”.  That company diversified into luggage and attached swing tags to its goods with its full corporate name, that is to say, “The Premier Company (UK) Limited”, and the address of its head office at “Premier House.”   The Court of Appeal held that such use fell within the s. 11 (2) exception because swing tags were used for a legitimate commercial purpose – to identify the trade origin of Premier UK’s product and to take advantage of the existing goodwill and trade connections of Premier Decorations.”

“Goodness how do you reconcile those cases?” signed Samuel.

“Well I think Richard Arnold did just that in Cipriani.   In that case the owners of the Cipriani hotels in Venice, Lisbon and Madeira sued Cipriani (Grosvenor Street) Ltd., which had run a restaurant in London called Cipriani London since 2004.   The directors of the defendant company were members of the Cipriani family which had opened the first Cipriani hotel in Venice.   The claimants had registered Community and IK trade marks for

'Hotels, hotel reservation, restaurants, cafeterias, public eating places, bars, catering; delivery of drinks and beverages for immediate consumption.'

in class 43.    The defendants raised among other defences s.11 (2) of the Trade Marks Act 1994 but as their company was called Cipriani (Grosvenor Street and not Cipriani London they were stuck with the decisions of the Court of Appeal in Asprey and Premier.   They argued that Céline had impliedly overruled those cases.   The judge would have none of it.   He held that he was still bound by the Court of Appeal decisions observing that the corporate and trade names of the defendant in Céline were the same and that there was “nothing to indicate that, if the full registered name of the company had been, say, Céline (Nancy) Sàrl, the answer would have been the same.”

Although it was not necessary for his judgment he added that he would still have found for the claimants even if he had not been bound by Asprey and Premier because the signs CIPRIANI and CIPRIANI LONDON had not been used in accordance with honest practices in industrial and commercial matters for the following cumulative reasons:

(1)        The defendants knew or should have known about the Community trade mark registration when they opened their restaurant.

(2)        They should have anticipated that at least the Hotel Cipriani in Venice would object to the name of their restaurant.

(3)        They should have contemplated that tourist guides, restaurant reviewers and members of the public would abbreviate the name to Cipriani.

(4)        Had the defendants sought competent legal advice they would have been warned of the risk of infringement.

(5)        The use of the Cipriani appellation was what Lord Justice Jacob had called in Reed v Reed as ‘upfront in-your-face’ trade mark use.

(6)        If the people behind the restaurant had had properly addressed their minds to the question before the Restaurant opened, they would have been bound to appreciate that calling the ‘Restaurant Cipriani London’  would be likely to cause confusion.

(7)        The use of the names ‘Cipriani London’ and ‘Cipriani’ has caused actual confusion and the defendants had been aware that that was happening.

(8)        The Venice ‘Hotel Cipriani’ has a reputation in the United Kingdom as the defendants were well aware.

(9)        The use of the name ‘Cipriani London’, and still more the name ‘Cipriani’, by the restaurant makes it difficult, if not impossible, for the Venice hotel to exploit its CTM in the United Kingdom, and particularly in London.

(10)      The defendants had insufficient justification for their actions in using the name ‘Cipriani London’, and still less so the name ‘Cipriani’.

“Well that is encouraging” smiled Samuel.

“I think so” replied Lucy. “I would send an equally snotty letter back to Sebastian so far as paragraph 4 of PD-Protocols and  the Code of Practice for pre-action conduct in intellectual property disputes allow, of course”

“Goodness, what on earth are they?”

“Oh go and ask Nigel you’ve had enough free advice from me. Or, on second thoughts go to someone in the Intellectual Property Bar Association. Jane Lambert of NIPC is about the nearest.   You might like to have a look at Jane's NIPC Injunctions website which I find really useful”.

“Oh I can’t stand her,” winced Samuel, “I can’t put my finger on it but she is always so right and always so smug.   And she doesn’t practise from any of the chambers that we instruct.”

“That’s up to you chum. I must say that I go to counsel for legal advice and representation. Not because I want to pass the time of day with them.

Anyway I must go otherwise I shall miss the programme I want to watch on the telly.

Tell me how you get on. We still haven’t toasted your daughter.   We need another little drinky winkie for that. Anyway have a nice Christmas. Give my love to your family.”

"Oh and my regards to Bob Stringer and your other colleagues. Merry Christmas!"

Samuel reflected as he keyed his PIN into Mr Thomas’s card reader that he had got far better advice from his old friend for the cost of a few glasses of wine than he had received for the very much larger fee that he would soon have to pay to his counsel.

If you want top catch the origin of Educating Samuel you should read Chapter 1 of Jane Lambert's "Enforcing Intellectual property Rights,  A Concise Guide for Businesses, Innovative and Creative Individuals" to be published by Gower in February price £45. You can also Educating Samuel No. 1 on "Added Matter" in this blog.