Key Facts
- •Dispute between two Cotswolds estate agents, Hayman-Joyce Property Limited (Claimant) and Hayman-Joyce Broadway LLP (First Defendant), over use of "Hayman-Joyce" name.
- •Firms previously collaborated but had a falling out.
- •Claimant alleged trade mark infringement and passing off; trial focused on liability.
- •James Hayman-Joyce established the business in 1991; a partnership with Charles Comber (Second Defendant) for the Broadway office formed in 1998.
- •LLPs were incorporated in 2010; Claimant company incorporated in 2014.
- •Relationship deteriorated after 2010, leading to disputes over the "Hayman-Joyce" name and goodwill.
- •Claimant registered "Hayman-Joyce" as a trade mark in 2018; Comber opposed the application.
- •The UKIPO Hearing Officer found Comber lacked locus to oppose but indicated both LLPs had localized goodwill.
- •Claimant terminated implied license in 2021; Defendants continued using the name, leading to this lawsuit.
Legal Principles
Passing off requires establishing goodwill or reputation attached to goods/services in the minds of the public.
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 WLR 499
Goodwill is incapable of subsisting by itself; it's attached to a business.
Star Industrial Company Ltd v Yap Kwee Kor [1976] FSR 256 (PC)
Multiple businesses can acquire their own goodwill in a name or share goodwill; ownership depends on facts and contracts.
Dawnay Day at [50]-[51]
A licence agreement where the licensor has goodwill and the licensee does not, the goodwill accrues to the licensor.
Wadlow on The Law of Passing Off 6th ed at 3-311
An assignment of goodwill need not be in writing; a transaction intended to assign a business as a whole necessarily passes the goodwill to the assignee.
Wadlow at 3-403
Trade mark registration may be declared invalid if an earlier right exists that would prevent its use (passing off).
Trade Marks Act 1994, sections 47(2)(b) and 5(4)(a)
Prior use for s 5(4)(a) includes use generating goodwill in a particular locality. A national mark application is a notional extension of use nationwide.
Caspian Pizza Ltd v Shah [2018] F.S.R. 12
Trade mark application in bad faith involves undermining another's rights and interests in a manner inconsistent with honest practices.
Case C-104/18 Koton Magazacilik Textil Sanayi ve Ticaret AS v EUIPO EU:C:2019:724
A registered trade mark is not infringed by the use in a particular locality of an earlier right applying only in that locality.
Trade Marks Act 1994, section 11(3)
Principles of joint tortfeasorship; a controlling mind authorizing or procuring acts.
Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10
Outcomes
Passing off claim largely fails.
Both parties had overlapping goodwill in the Hayman-Joyce name; First Defendant's use didn't constitute misrepresentation except for specific instances (website advertising and use of testimonials).
Counterclaim to invalidate the trade mark succeeds.
First Defendant had sufficient goodwill to prevent registration; Claimant's application was a notional expansion into that area.
Trade mark infringement claim falls away due to trade mark invalidity.
Trade mark invalidity renders the infringement claim moot.
Copyright infringement claim fails.
Articles were removed from the website promptly after complaint; licence existed and was not terminated until December 2021.
Second Defendant (Comber) is jointly liable with the First Defendant.
Comber controlled the First Defendant and authorized/procured the complained-of actions.