What's in a Name?

Author:Mr Anthony Misquitta
Profession:Farrer & Co
 
FREE EXCERPT

The extent to which the law prevents anyone from using 'your' name, be it your own name, the name of your property or the name of your business, is based on the notions that: (a) the public should not be misled; and (b) nobody should be able to take advantage of the hard work that you have put into your business or otherwise take advantage of your own assets.

The Trade Descriptions Act 1968 provides that it is a criminal offence to describe your goods or services in a false or misleading way. This prohibition is wide enough to cover false or misleading indications of approval or origin. If anyone were to claim, for example, that their produce comes from a farm that it does not, the Trade Descriptions Act could be used to secure a criminal conviction.

However, this is criminal law that is enforced by local Trading Standards Officers. The local Trading Standards Officer's role is to ensure that the public are not misled as a result of a trade description. Trading Standards Officers are not there to prevent one business or person from exploiting another, regardless of how unfair that might be, unless there is a wider public issue at stake.

The law of passing-off is the historic means by which the goodwill that one has developed in a business is protected. In order to bring a claim of passing-off, a claimant needs to show three things:

that the claimant has established goodwill in his name, logo etc by having traded under it over a course of time

that the defendant has somehow appropriated that goodwill by making some sort of misrepresentation that is confusing or that is likely to confuse) the public; and

that as a result of that misrepresentation, the claimant has suffered (or is likely to suffer) damage.

The classic example of passing-off is where one business develops a reputation over many years for providing quality goods or services then, without the permission of that business, another business starts up under the same name, selling identical or similar goods or services, and the public believes the two to be connected and therefore gives its custom to the second business at the expense of the first. The law acknowledges that goodwill that is developed through trade is a valuable commodity that should not be unfairly exploited.

It is often very difficult to provide evidence of goodwill, misrepresentation and damage that is sufficient to bring a claim for passing-off. The law of registered trade marks is a statutory system which...

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