Can a trader assert rights in passing off in a descriptive name?

This issue was recently before the Intellectual Property Enterprise Court in the case “Asian Achievers Awards v British Asian Achievers Awards”. (The decision can be found here.)

The Claimant, Asian Business Publications Ltd (ABP), is a publisher of newspapers and has run the ASIAN ACHIEVERS AWARDS event annually since 2000. The ceremony is now a lavish event with more than 1000 attendees and sponsors. Since 2012 the event has been held at the Grosvenor Hotel on Park Lane. Evidence was submitted that the event was well advertised and promoted in the Claimant’s newspapers, social media accounts and on television and radio. The event had also been televised since 2008 by a Hindi language television channel on cable and satellite. The event celebrates the achievements of the British Asian community and is supported by corporate sponsors with profits being donated to charity. The 2017 awards raised £170,000 for charity.

The First Defendant, British Asian Achievers Awards Limited (BAAA), was incorporated in 2016 and the Second Defendant, Mr. Kumar, is the sole director of the First Defendant. Mr Kumar had also been a director of Jagatwani Ltd since 2011. Jagatwani Ltd published a Hindi language newspaper in the UK for about 10 years under the name ‘Jagatwani’. BAAA was incorporated for the purpose of running an awards ceremony under the name BRITISH ASIAN ACHIEVERS AWARDS with the first ceremony being held in 2016. Despite correspondence from the Claimant’s solicitor complaining of passing off to which no reply was received, the First Defendant planned to hold a second British Asian Achievers Awards in 2017. Further correspondence from the Claimant’s solicitor went unanswered and in October the Claimant issued proceedings and applied for an interim injunction to prevent the Fist Defendant from running its event under the name British Asian Achievers Awards. Marcus Smith J granted a limited injunction allowing the event to go ahead under the name British Asian Achievers Awards subject to certain disclaimers of any connection with the Claimant’s event being made. An injunction was then later granted by Birss J restraining the First Defendant from using the name for an awards ceremony until after trial.

The passing off issues to be decided were as follows:

  1. Had the Claimant acquired a goodwill in the UK in relation to the name ASIAN ACHIEVERS AWARDS?
  2. By using BRITISH ASIAN ACHIEVERS AWARDS, had the Defendants misrepresented that the event was connected or associated with the Claimant or was in some way authorised by the Claimant?
  3. Had the Claimant suffered or likely to suffer loss and/or damage?

The Defendants conceded that the Claimants had a goodwill in the UK associated with the name. They also accepted that if there had been a misrepresentation, damage to the Claimant would follow.

The only contentious issue was whether there had been a misrepresentation.

The Defendants relied on the well-known case Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39 which looked at whether “Office Cleaning Association” amounted to passing off of “Office Cleaning Services”. In that case it was decided that where passing off is alleged in relation to descriptive marks, small differences are sufficient to preclude a misrepresentation. The Defendant accordingly argued that ASIAN ACHIEVERS AWARDS was essentially descriptive and the addition of ’British’ should be sufficient to distinguish the two names and thus avoid any misrepresentation – also bearing in mind that the general get up or branding of the parties also assisted in distinguishing them.

The Claimants argued that there was not only a risk of misrepresentation but also that there had been actual instances of confusion between the names; they presented a number of emails and letters in support of this allegation. The most critical piece of evidence was the testimony of a Mr. Iyer, who received an email from the Defendants inviting him to the BRITISH ASIAN ACHIEVERS AWARDS. Mr. Iyer had been a regular attendee and supporter of the ASIAN ACHIEVERS AWARDS and had thought it strange that he had not received an invitation direct from Mr. Liji the CEO of the Clamant, as he had done in previous years. Mr. Iyer called Mr. Liji to find out why and it was during this call that Mr. Iyer realised his mistake. The Defendants suggested that Mr. Iyer should have noticed the references to Jagatwani in the email from the Defendants and the fact that the event was being promoted as the “1st British Asian Achievers Awards” and should thus have realised that the event was not connected to the Claimant’s event . But the court concluded that there was nothing to suggest that Mr. Iyer was anything other than a satisfactory witness and further that Mr Iyer had indeed been confused into thinking that the event was the Claimant’s event.

Ultimately, the Court found that the addition of the word ‘British’ to ‘Asian Achievers Awards’ was not sufficient to distinguish the names, because the evidence showed that the Claimant’s event was a long established British-based event aimed at the British Asian community and so the addition of ‘British’ would have no material impact on a member of the public already familiar with Asian Achievers Awards. The allegation of misrepresentation was supported by Mr. Iyer’s confusion, which, whilst only being one instance of confusion, was held to be significant.

In summary, the Court decided that use of BRITISH ASIAN ACHIEVERS AWARDS in relation to the Defendant’s event was liable to cause, and will have caused, passing off.

This case shows that the broad principle that descriptive marks are hard to protect (as set out in Office Cleaning Services Ltd) does not apply in every case. In the right set of circumstances, most obviously where the variations in the defendant’s trade mark are immaterial, it is possible for a trader to succeed in a passing off action on the basis of a descriptive trade mark.

By Claire Birro

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Posted on: 26th June 2019