Own Name Defence - Dead Or Alive

Recently the Court of Appeal handed down its judgement in the case of Asprey & Garrard Limited v WRA (Guns) Limited t/a (William R Asprey Esq) & another. This was an appeal from the first instance decision of Jacob J in a Part 24 application earlier this year.

William R Asprey had set up a company called WRA (Guns) Limited (WRA) to trade in the same field as the world famous jewellers and gun sellers Asprey & Garrard (A&G). At first instance the judge held that WRA had both infringed A&G's "Asprey" trade mark and was guilty of passing off. The use of the word "Asprey" in the trading name "William R Asprey Esquire", was infringement under s10(1) Trade Marks Act 1994 (the Act) and it did not matter that WRA did not use "Asprey" alone. The judge held, following his earlier decision in British Sugar v James Robertson [1996] RPC 281, there had still been use of an "identical mark".

Although it was WRA that was trading, Jacob J decided to address the issue of whether an "own name defence" to passing off was available to it on the basis that William Asprey himself was trading under that name. He concluded that the defence was only available in circumstances where use of the name concerned was "necessary" and in this case there was no such necessity. Similarly, no "own name defence" to trade mark infringement under s11(2) of the Act was available as this only applied to honest practice in industrial and commercial matters. An act that was passing off could not be honest practice as it causes deception, even if such deception was unintended.

The Court of Appeal did not interfere with the lower court's judgement on issues of fact and affirmed that passing off and trade mark infringement was made out. However, the Court was not prepared to follow the approach of Jacob J of addressing the case as if William Asprey was trading. It was WRA that was trading and in trading under the name William R Asprey Esq. it was not using its own name. Therefore the scope and nature of any "own name defence" in passing off or trade mark law did not need to be considered (although the Court did conclude that if passing off was made out a Defendant would not be able to rely upon the s11(2) defence to trade mark infringement).

In relation to trade mark infringement under s10(1) of the Act, the Court noted a referral to the European Court of Justice from the Paris Regional Court (S.A. Société LTJ Diffusion v S.A. Sades Vertbaudet) on the question of whether or not the use of a trade mark in a composite sign (i.e. matter being added to a trade mark) was use of an "identical mark". Pending a decision of the ECJ on this point the Court could not decide whether or not there was s10(1) infringement. However, in practice, this did not matter since infringement of s10(2) of the Act was still made out.

It is a pity that the Court of Appeal decided to avoid this opportunity to clarify the scope and nature of the "own name defence" in passing off. Jacob J's highly restrictive interpretation of this defence requires that the use be "necessary" and it may be that the High Court will impose that requirement in future cases. However, Court of Appeal authority on this issue would have been helpful.

Equally as important are the Court of Appeal's comments as to the uncertain application of s10(1) of the Act to cases where the alleged infringer uses the trade mark alleged to be infringed in combination will added matter. Until the decision of ECJ on this point it would appear that a trade mark owner will only be able to rely upon s10(1) the Act to seek immediate summary judgement in very few cases.

'© Herbert Smith 2002

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