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.

The First Instance Decision

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.

Court Of Appeal

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. SociÈtÈ LTJ Diffusion v S.A. Sades...