The UK-based organiser of the "Asian Achievers Awards" has been successful in its claim for passing off1 against a competitor branding its event under the name "British Asian Achievers Awards", despite only being able to adduce one instance of actual confusion upon which the court was prepared to rely.

Background

The Claimant, a publisher of newspapers and magazines, organises several awards ceremonies including those under the name "Asian Achievers Awards" (the "Name"), which have been held annually since 2000, celebrating and focusing upon successes by members of the British Asian community.

The First Defendant was incorporated by the Second Defendant in May 2016 as a vehicle for running an awards ceremony named the "British Asian Achievers Awards", which was also focused on the achievements of the British Asian community.

The Second Defendant, who is the sole director and sole shareholder of the First Defendant, is also a director of Jagatwani Ltd, which has published a free Hindi language newspaper in the UK called "Jagatwani" for around 10 years. In 2014, Jagatwani Ltd had held an awards ceremony called the "Jagatwani Achievers Awards", which was replaced by the First Defendant's "British Asian Achievers Awards" in 2016.

Once the Claimant became aware of the Defendants' event, it raised complaints regarding passing off with the Defendants and requested they stop using "British Asian Achievers Awards". The Claimants received no reply and issued these proceedings.

It is worth noting that, despite the Claimant registering a UK trade mark for a device that included the Name which was registered in January 2017, no reliance was placed upon the trade mark in the proceedings.

Issues

  • The judge summarised the issues in the proceedings as follows:
  • Whether the Claimant had acquired goodwill in the UK associated with the Name
  • Whether the Defendants had misrepresented that their events were connected or associated with the Claimant
  • Whether the Claimant had suffered or was likely to suffer or to have suffered loss and/or damage
  • The extent to which the Second Defendant is jointly and severally liable for the acts of the First Defendant

At trial, the Defendants conceded Issue 1, and then accepted Issue 3 would result if misrepresentation had occurred. The Defendants also accepted Issue 4, leaving only Issue 2 to be decided.

Decision

The judge acknowledged that the only distinction between the two names is the word "British", which the Claimant argued did not amount to a distinguishing feature when used in relation to awards that were British-based and directed to the British public.

The first argument by the Defendants against misrepresentation was that the Name is essentially descriptive. The Defendants relied upon Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd [1946] 63 RPC 39 (House of Lords), in which it was held that small differences may preclude misrepresentation where a sign is essentially descriptive.

The judge rejected this argument and found that, as a result of the use of alliteration and the relatively unusual word "achievers", the Name had attained a more distinctive character than mere description. Furthermore, the judge opined that the name would not naturally be used to describe an awards ceremony of Asian heritage; instead, it was clear that the phrase had been invented (akin to the facts in Phones4u Ltd v Phone4u.co.uk Internet Ltd [2017] RPC 5 (Court of Appeal – Jacob LJ)). Moreover, there were no examples of "achievers" being used in the name of another relevant awards ceremony.

Next, the Defendants argued that the branding of each party was suitably distinct to avoid misrepresentation, highlighting that both parties used the words alongside different figurative elements and straplines. The Claimant accepted the distinctiveness between the respective logos; however, it argued that, firstly, the public were unlikely to see them side-by-side and, secondly, these distinctions would be irrelevant when the name was used orally or appeared on documents without any figurative matter. The judge agreed with the Claimant, who acknowledged the imperfect recollection of the public and emphasised that the concession by the Defendants to the Claimant's goodwill was not limited to the words being used in a particular format or with a particular strapline or device.

The judge also rejected the Defendants' argument that references to Jagatwani Ltd being the event organiser and the description of the event as being only the second one to be held (in contrast to the Claimant's long-established event) would tend to distract the public from assuming that the Defendants had taken over the Claimant's event and/or that the Claimant had authorised the use of its name. In addition, the possibility of confusion was heightened by the overlap in the target audience and the fact that both parties' primary concern was as distributors of newspapers.

Although no copyright infringement claim was made, the judge also found direct copying by the Defendants of content from the Claimant's website. This amplified the likelihood of confusion, and demonstrated unquestionably that no effort had been made by the Defendants to avoid or reduce possible confusion.

Various instances of confusion were provided by the Claimant; however, only one was held to show actual confusion. The judge, referring to Harrods v Harrodian School [1996] EWCA Civ 1315, held that a limited number of instances was not fatal to a case in passing off, because people may not have realised their mistake or did not have any reason to complain. Furthermore, the instance of actual confusion was made by someone with in-depth knowledge of the Claimant's event, so those who were less well-informed would be even more likely to be confused. In conclusion, the judge found that the Defendants had committed acts of passing off and would continue to do unless restrained in their use of the offending name or any other name substantially similar to the Name.

What can we learn?

This decision clearly demonstrates that it is a matter of quality over quantity when compiling evidence to demonstrate instances of likelihood of confusion. Finding good evidence of confusion by people with prior knowledge of the earlier mark with goodwill can be powerful and determinative.

The case also highlights how, faced with a passing off dispute, a party should first consider the position in the round before making any concessions. Such concessions should then be set out in clear and specific particulars of what the defendant has conceded. Indeed, in this case, it was hard to establish whether the Defendants intended only to concede that the Claimant's figurative mark had acquired goodwill and not the Name itself without any stylisation.

However, it is generally prudent to make appropriate concessions where the facts are not in issue, in order to focus time and resources on more contentious elements – particularly in the Intellectual Property Enterprise Court where trial time is normally limited to a two day hearing.