Court Diary

When You Can Call A Name Your Own

A case (Asprey & Garrard v WRA (Guns) & William Asprey) came before the Court recently in which the judge, Mr Justice Jacob, had to rule on a possible defence arising out of use of one's own name.

Mr Asprey is a 7th generation member of the famous Asprey family, whose business in luxury goods had been carried on from Bond Street for over 150 years. Mr Asprey has worked in the family company, but had grown unhappy with the way it was being run after the business had been sold off in 1995. He left the company in 1999 and set up his own company WRA (Guns) Ltd, trading under the name of William R. Asprey, Esq. from premises in Bond Street. In promoting his new company, Mr Asprey had been at pains to stress his connection with the famous Asprey family tradition. The current owners of the Asprey business sued for passing off and infringement of the registered mark Asprey.

Adopting a pragmatic approach, Jacob J. decided to treat Mr Asprey and his company effectively as one and he had little difficulty in finding that Mr Asprey's activities were likely to lead to deception and hence amounted to passing off, despite Mr Asprey's honest intentions. He also found that use of the sign "William R. Asprey, Esq." constituted an infringement of the Asprey registration under Section 10(1) of the Act, i.e. regardless as to any question of confusion, although he also found that there would be infringement under Section 10(2).

He then had to consider whether there might be any "own name" defence. He described this as a tricky area in relation to passing off. He applied the propositions set out by Mr Justice Romer in Joseph Rodgers & Sons Ltd v W.N. Rogers & Co (1924 RPC 277). These were essentially that a man should be entitled to carry on his business in his own name, even though this might cause confusion, provided that he does it honestly and that it does not cause deception. He decided that what Mr Asprey was doing was causing more than confusion, it was passing off, and therefore he was not entitled to an "own name" defence. In relation to trade mark infringement, the "own name" defence construction will ultimately fall to be decided on a reference to the ECJ.