Passing off - Asian Business Publications Ltd v British Asian Achievers Awards Ltd and Another

Indian Subcontinent

Author US Government

Licence Reproduced licensed by the US Government

Source Wikipedia Indian Subcontinent

Jane Lambert

Intellectual Property Enterprise Court (Recorder Amanda Michaels) Asian Business Publications Ltd v British Asian Achievers Awards Ltd and Another [2019] EWHC 1094 (IPEC) (2 May 2019)

This was an action for passing off.  The claimant ran an event called the Asian Achievers Awards. The defendants ran a similar event called the British Asian Achievers Awards. These were both charity dinners held in top class West End hotels at which prominent individuals of subcontinental heritage were presented with certificates.

The Issues
The following issues were identified at the case management conference:

"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 defendants conceded the first, third and fourth issues at trial.  The only issue in dispute was whether there had been misrepresentation.

Judgment

The action came on before Recorder Amanda Michaels who held that "the Defendants' use of the name British Asian Achievers Awards for their event is liable to cause and will have caused passing off."

The Case Law

Before addressing the facts, Ms Michaels referred to the speech of Viscount Simmonds in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, at 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."

The learned recorder reminded herself that in that case there was sufficient differentiation to avert any confusion.

She also considered Mr Justice Walker's decision in The British Diabetic Association v The Diabetic Society [1996] FSR where the judge held that there had not been sufficient differentiation.

Finally, the recorder referred to the following passage from Lord Justice Jacob's judgment in Phones4u Ltd v Phone4u.co.uk. Internet Ltd  [2007] RPC 5, [2006] EWCA Civ 244:

"[16] The next point of passing off law to consider is misrepresentation. Sometimes a distinction is drawn between 'mere confusion' which is not enough, and 'deception,' which is. I described the difference as 'elusive' in Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40. I said this, [111]:

'Once the position strays into misleading a substantial number of people (going from 'I wonder if there is a connection' to 'I assume there is a connection') there will be passing off, whether the use is as a business name or a trade mark on goods.'

[17] This of course is a question of degree—there will be some mere wonderers and some assumers—there will normally (see below) be passing off if there is a substantial number of the latter even if there is also a substantial number of the former.

[18] The current (2005) edition of Kerly contains a discussion of the distinction at paras 15–043 to 15–045. It is suggested that:

'The real distinction between mere confusion and deception lies in their causative effects. Mere confusion has no causative effect (other than to confuse lawyers and their clients) whereas, if in answer to the question: 'what moves the public to buy?', the insignia complained of is identified, then it is a case of deception.'

[19] Although correct as far as it goes, I do not endorse that as a complete statement of the position. Clearly if the public are induced to buy by mistaking the insignia of B for that which they know to be that of A, there is deception. But there are other cases too—for instance those in the Buttercup case. A more complete test would be whether what is said to be deception rather than mere confusion is really likely to be damaging to the claimant's goodwill or divert trade from him. I emphasise the word 'really.'

…

[21] In this discussion of 'deception/confusion' it should be remembered that there are cases where what at first sight may look like deception and indeed will involve deception, is nonetheless justified in law. I have in mind cases of honest concurrent use and very descriptive marks. Sometimes such cases are described as 'mere confusion' but they are not really—they are cases of tolerated deception or a tolerated level of deception.

[22] An example of the former is the old case of Dent v Turpin (1861) 2 J&H 139. …

[23] An example of the latter is Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 R.P.C. 39. The differences between 'Office Cleaning Services Ltd' and 'Office Cleaning Association,' even though the former was well-known, were held to be enough to avoid passing off. Lord Simmonds said:

'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" (p.43).

In short, therefore, where the 'badge' of the plaintiff is descriptive, cases of 'mere confusion' caused by the use of a very similar description will not count. A certain amount of deception is to be tolerated for policy reasons—one calls it 'mere confusion.'"

Reasoning

Ms Michaels held that the words "Asian Achiever Awards" were distinctive to some extent. She said at paragraph [23] of her judgment:

"It is right, of course, to say that each of the words Asian Achievers Awards is descriptive, but in my judgment the combination of the three words nevertheless has a slightly more distinctive character than, for instance, 'Office Cleaning,' in part because of the alliteration and also because of the inclusion of the relatively unusual word 'achievers.' In my judgment, the name is not descriptive in the sense that anyone would naturally describe an awards ceremony for people of Asian heritage who have achieved success of some kind as 'an Asian Achiever Award' ceremony. Instead as in Phones4u, it is the sort of name that tells you what the event is, whilst also being 'obviously intended to be an invented name to denote a particular business.'"

She was fortified in her thinking by the fact that the defendant could point to no similar use of the noun "achiever" even though there were plenty of other achievement awards for persons of Asian heritage.

The recorder considered whether the different branding used by the defendants was sufficient to distinguish their event from the claimant's.  Examples of the promotional materials used by the parties are annexed to Ms Michaels's judgment and it is true that they do look different.  The problem was that members of the public were not likely to see the two samples side-by-side in order to make that comparison, and, as ever in that sort of case, the recorder had to allow for an imperfect recollection of the earlier logo.  Further, the different styles of branding were irrelevant when the events were referred to orally.

There was some evidence of actual confusion before the court. 

Taken as a whole, the use of the adjective "British", the different logos and the invitations identifying the organizers t did not suffice to distinguish the defendants' dinner from the claimant's.

Comment
This case contains a useful analysis of the case law and an illustration of how it is to be applied. Having conceded the goodwill point, the defendants impliedly accepted that the words "Asian Achievers Award" must have been distinctive. It would have been very difficult to argue that the adjective "British" made a difference having regard to the fact that the event took place in London and most, if not, all the guests at both events lived in the United Kingdom.  It is also hard to see how the defendants could have avoided making the concession.   The claimant's event had been running since 2000 and had raised considerable sums of money for charity. The name of the event was alliterative and the word "achievers" is not commonplace.  

Further Information

Should anyone wish to discuss this case or passing off generally, he or she should call me on 020 7404 5252 during office hours or send me a message through my contact form.