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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Botanica Agriculture and Extraction Ltd v Botanica Ltd [2022] EWHC 2957 (Ch) (26 October 2022) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2022/2957.html Cite as: [2022] WLR(D) 498, [2023] Bus LR 373, [2022] EWHC 2957 (Ch), [2023] BCC 262 |
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BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
CHANCERY DIVISION
7 Rolls Buildings Fetter Lane London EC4A 1NL |
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B e f o r e :
____________________
BOTANICA AGRICULTURE AND EXTRACTION LIMITED |
Appellant |
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- and - |
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BOTANICA LIMITED |
Respondent |
____________________
Unit 1 Blenheim Court, Beaufort Business Park, Bristol, BS32 4NE
Web: www.epiqglobal.com/en-gb/ Email: civil@epiqglobal.co.uk
(Official Shorthand Writers to the Court)
MR A SHARMA, MR S VARAICH and MS R VARAICH appeared on behalf of the Respondent
____________________
Crown Copyright ©
MR JUSTICE LEECH:
"(1) A person ('the applicant') may object to a company's registered name on the ground—
(a) that it is the same as a name associated with the applicant in which he has goodwill, or
(b) that it is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant.
(2) The objection must be made by application to a company names adjudicator (see section 70).
(3) The company concerned shall be the primary respondent to the application. Any of its members or directors may be joined as respondents.
(4) If the ground specified in subsection (1)(a) or (b) is established, it is for the respondents to show—
(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or
(b) that the company—
(i) is operating under the name, or
(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or
(iii) was formerly operating under the name and is now dormant; or
(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or
(d) that the name was adopted in good faith; or
(e) that the interests of the applicant are not adversely affected to any significant extent.
If none of those is shown, the objection shall be upheld.
(5) If the facts mentioned in subsection (4)(a), (b) or (c) are established, the objection shall nevertheless be upheld if the applicant shows that the main purpose of the respondents (or any of them) in registering the name was to obtain money (or other consideration) from the applicant or prevent him from registering the name.
(6) If the objection is not upheld under subsection (4) or (5), it shall be dismissed.
(7) In this section, 'goodwill' includes reputation of any description."
"The company has worked extremely hard to develop a strong brand reputation and good social presence. We are now registered in four countries and counting, and are recognised by our trading name (which is the prefix of our full name) Botanica. The company has research partnerships pending with the University of Westminster Life Sciences Department and UCL. These are, of course, relationships we worked very hard to develop and do not wish to jeopardise. We are also working very hard to acquire various licences abroad which will benefit our UK-based business tremendously. The situation at present, however, remains highly sensitive and any ambiguity to this may cause irreparable damage to our brand, which has taken many years to develop."
"Careful investigation has revealed severe concerns about the credibility, integrity and conduct of the defendants as they both display some very peculiar online activity. A company Mr Sharma was recently appointed director of, Sapphire Independent Finance Limited, has overdue accounts even though the appointment was only made this year. Scott Thomas Findlay, who was supposedly born in June 1988, resigned on 3 July 2020 and was replaced by Mr Sharma. What is most peculiar about this is that the two gentleman seem to share the same personal address, which of course may give rise to the consideration that this name may in fact simply be an alias used by Mr Sharma. Scott Thomas Findlay was actually a rifleman in the Auckland war who died in September 1916. Sandeep Singh is the director of another company, Property No 6, which in five years has only reported losses. On 1 September, he started another business, The Spice Fox, which is in the catering industry. The true occupation of this individual is not known. In addition to being involved in catering, this individual has also declared himself a property investor and now a pharmacist. Most respectfully, above is the clear activity of fraudsters. As such, the company wishes to have no affiliation with any persons concerned."
"18 October 2017 - applicant incorporated in the UK as ACAS INTERNATIONAL LTD;
11 November 2019 - applicant's name changed to Botanica Agriculture and Extraction Ltd;
26 February 2020 - email exchange with the University of Westminster regarding a research partnership proposal;
17 April 2020 - Botanica Limited incorporated in the UK, ie the primary respondent;
August 2020 - agreement between Botanica Agriculture and Extraction Ltd and a German lawyer;
3 September 2020 - Botanica Agriculture and Extraction Ltd registered in Sierra Leone;
23 September 2020 - Botanica Pharmaceutics Ltd incorporated in the UK;
3 November 2020 - initial enquiries regarding incorporation in Portugal;
19 November 2020 - Botanica Pharmaceutics BV incorporated in the Netherlands."
"What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start."
"36 ... In his evidence, Mr Gbla states:'... the initial establishment of our brand with the formation of Botanica Agriculture and Extraction ...'
37. That, in our view, is an admission that there was no use of any of the names being relied upon (particularly Botanica solus) prior to the date the applicant changed its name from ACAS INTERNATIONAL LTD to its current name, ie 11 November 2019. However, even if such use had been made, as no evidence has been provided in this regard, it is not a matter upon which the applicant may now rely. Thus, it appears that, at best, the applicant's use of some of the names being relied upon commenced only five months before the primary respondent was incorporated in April 2020.
38. We note that the primary respondent requested certain evidence in its notice of defence. We also note that the applicant questioned the legitimacy of the primary respondent's request for information about 'the affairs of our brand'. Whilst it is true that the respondent(s) cannot dictate the evidence which should be filed by the applicant, there remains a burden on the applicant to establish before the Tribunal that it has goodwill/reputation in one or more of the names being relied upon. Whilst that is a relatively low hurdle, we would normally expect to see that, prior to the relevant date, the applicant had made outward-facing use of one or more of the names being relied upon, together with, for example, an indication of the number and types of customers the applicant enjoyed, turnover figures achieved and promotional efforts.
39. Although the applicant has provided evidence to show that it has arranged for various companies to be incorporated which contain the word 'Botanica' and has engaged a lawyer in Germany, as one can see from the above chronology, all the evidence in this regard is from after the relevant date. In addition, the evidence filed by the primary respondent which relates to a website which was not to be made operational until January 2021 and an Instagram account which can only be dated from December 2020 does not assist the applicant in establishing a goodwill/reputation in one or other of the names being relied upon at the relevant date.
40. As far as we can tell, the only evidence that has been provided that can be dated prior to the relevant date is the redacted email exchange between Mr Gbla and an individual at the University of Westminster regarding a 'research partnership proposal' (exhibit 6), which is dated 26 February 2020. Although this exhibit contains an upper case letter 'B' on the left-hand side of the page, it does not appear to contain any references to any of the names being relied upon, nor does it indicate the nature of the proposed research partnership. However, even if it did, without more, a single example of use of this nature falls a long way short of meeting even the relatively low hurdle necessary for the applicant to establish that, at the relevant date, it had goodwill/reputation in the name 'Botanica' solus or any of the other names being relied upon.
41. Without the necessary goodwill/reputation, the application falls at the first hurdle and is dismissed accordingly."
"An undertaking cannot trade by reference to a company name under which it is not incorporated and, under section 66 of the Act, identical company names cannot be registered. Taking this into account, section 69(1)(a) of the Act would be virtually redundant if it requires the name upon which the applicant relies to include the designation of the nature of the company. For the purposes of section 69(1)(a), a company name and the name associated with an applicant are the same if the only difference that arises is from the designation of the nature of the company. So, in this case, the presence of the word 'Limited' of itself does not prevent a finding that the names are the same."
"The applicant must show that it has a goodwill or reputation under the name at the date of the application, in this case 7 October 2008. If this is established, the respondent has a prima facie defence if it can establish that the name was registered prior to the commencement of the activities upon which the applicant relies, as per section 69(4)(a) of the Act. This is not the same as establishing that the goodwill or reputation must have been established before the name was registered. Such an approach will militate against a successful application being brought where a company name was registered in anticipation of a goodwill or reputation being established."
"If on appeal the court— (a) affirms the decision of the adjudicator to uphold the application, or (b) reverses the decision of the adjudicator to dismiss the application, the court may (as the case may require) specify the date by which the adjudicator's order is to be complied with, remit the matter to the adjudicator or make any order or determination that the adjudicator might have made."
(1) Once the application has been remitted to the Tribunal, the Tribunal must consider separately whether the appellant has proved the objection under 69(1)(a) and, if so, whether the respondent has proved its defence under section 69(4)(a).
(2) In deciding those matters, it will be open to the Tribunal to decide whether "Botanica Limited" is the same name as "Botanica Agriculture and Extraction Limited". If the Tribunal finds in the Respondent's favour on that issue, that will be the end of the matter.
(3) However, if the Tribunal finds in the Appellant's favour, it will then go on to consider whether the appropriate date for assessing whether the Appellant had sufficient goodwill in the name "Botanica Limited" was either the date of the Respondent's incorporation or the date of the application and, if so, whether the Appellant has proved its case on the evidence at the relevant date.
(4) Moreover, in addressing that issue it will be open to the parties to make submissions on the legal issue if they wish to do so, and they may this time wish to take advice on this point. But, unless they contest the conclusions which I have reached in this particular judgment, the Tribunal ought to consider the date to be the date of the application and not the date of incorporation.
(5) Finally, if the Tribunal finds the objection in section 69(1)(a) proved, it will then go on to consider whether the Respondent has proved its defence under section 69(4)(a). For that purpose, it will be open to the Respondent to offer some evidence to prove its case. Again, the Respondent may choose not to do so (as it did first time round). But, for the reasons I have given, it would be in its interests at least to consider putting some evidence before the Tribunal to make out its case on section 69(4).
(6) I also see some force in Mr Gbla's Ground of Appeal that the Respondent's purpose in registering the name "Botanica Limited" was to obtain money from the Appellant by offering to sell the company to it. I would not have been prepared to allow the appeal on that ground alone or on the ground that the Tribunal was guilty of bias or apparent bias. Nevertheless, it seems to me that both of these grounds provide additional reasons for remitting the application to a different Tribunal. It will be open to the Tribunal to draw the inference that the Respondent's purpose was to extract money from the Appellant and it will also be open to the Respondent to argue that the letter is privileged because it was sent on a without prejudice basis and also to offer any evidence to rebut that inference.
(7) Finally, in addressing all of the issues, the Appellant will have the opportunity to rely on its existing trademarks as evidence of goodwill at the relevant date even though those trademarks were registered very soon after and had not been registered by the date of the application (although they were registered only four days later).