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England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Asprey & Garrard Ltd v WRA (Guns) Ltd & Anor  EWCA Civ 1499 (11 October 2001)
Cite as: (2002) 25(1) IPD 25001,  ETMR 47,  FSR 31,  EWCA Civ 1499
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE CHADWICK
LORD JUSTICE KAY
| ASPREY & GARRARD LTD.
|- and -
|WRA (GUNS) LTD. AND ANOTHER
Smith Bernal Reporting Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr. Michael Bloch Q.C. and Ms. Heather Lawrence (instructed by Messrs Speechly Bircham of London for the Appellants)
Crown Copyright ©
Peter Gibson L.J.:
"William R. Asprey Esq. was established in 1999 by William Asprey, 7th generation of the renowned Asprey family who established their first luxury business in 1781. Since the business was first established at the end of the 18th century . many changes have tested the strength and commitment of its family forebears.
Continuing his family tradition, William Asprey is now opening a new luxury goods store in Mayfair . The new store will have specialist luxury goods ranging from fine jewellery, leather goods and objets d'art, watches . and sterling silverware, shotguns and sporting rifles, shooting accessories and clothing .
William Asprey comments "My dream to create an exclusive store for luxury products has been realised with the opening of No. 10 Mount Street, where the Asprey family heritage and traditions are rekindled, ensuring a superior quality service to our clients, whilst supporting refined British craftsmanship.
The habitu้s of this exceptional signature will be delighted to see William R. Asprey Esq. open in September 2000 ."
"When I left the claimant's employ to set up my own business I was anxious to be in a position to build upon the goodwill which I had established with customers with whom I had personal dealings. It was therefore important to me that my new business' name should be, or incorporate, my own name. I was equally concerned to distinguish my new business from that of the claimant. That is why I chose the name William R. Asprey Esquire."
"In each case (and this certainly applies to the eight Middle Eastern customers who account for 84% of the sales of William R. Asprey Esquire) the customer's relationship is with a particular individual be it me, Mr. Cooper or Mr. Argles not a business. My customers in this category will follow me whether I am working for Asprey & Garrard, Harrods, Tiffany's or on my own. The same applies to personal customers of Mr. Argles and Mr. Cooper . It should not be thought, however, that the presence of my name in the trading name of the first defendant is unimportant. It identifies me as the "boss" of my company, demonstrates that I wish to be seen to take pride in my family name, and is of particular relevance to my ability to present and promote the first defendant's business to prospective new distinguished and high value clients."
"All or nearly all of our customers are wealthy, sophisticated and discriminating people who know all about the successive changes of ownership of the claimant and are well aware that the claimant's business and the first defendant's have no connection."
But he said that, to cater for those who might mistakenly associate the two businesses, in January 2001 he caused a disclaiming notice to be displayed in the Mount Street shop.
"Before looking at the details of the instances of confusion which the claimants rely on, I think it is worth standing back. Aspreys is a world famous name. As matters stand it is unique in its trade. It has therefore an individuality about its name, and it is that name and individuality to which forms its goodwill is attached. Passing off is an action intended to protect deceptive invasions of goodwill. Whenever there is such an invasion the distinctiveness of the name is likely to be eroded and the attractive force which brings in custom is likely to be eroded.
It follows, I think, without even looking at the details of this case, that anyone who sets up in the same field of business with the name Asprey as part of their name is likely to erode the claimant's goodwill and is likely to create a situation where, however much that situation is unintended, people will make mistakes and muddle one company for the other. Of course there will be very many other people who will not: the friends of the individual concerned will know perfectly well that they were two companies; the suppliers will know exactly who they are dealing with. So the evidence that I have here from suppliers to the defendants does not really help me as to what the position is with people who may not know Aspreys very well but who have come to London and see the name Asprey on the defendant's shop. If you have an international trade, you must take your international customers as you find them. Some will speak English well, others will not speak English well. Some will know London well, others not.
In this case, the shop was opened in September last year. There have been instances of confusion. I completely accept that Mr. William Asprey does not want any, and as soon as they happen he seeks to put things right. All his conduct throughout this case suggest that he is a very honest and honourable man. But, nonetheless, these incidents have happened."
"Those are incidents that have come to light. I ask myself: are they unique or are they only those that have come to light but there are others where somebody has thought there was a connection but never said it? Instances of confusion are seldom conclusive. The court has to make such use of them as it can in assessing the global impact of what the defendant is doing. I think that there are bound to be others. It is, I think, always difficult for the defendant fully to appreciate the impact of what he is doing on people who are not nearly as aware of the situation as he is. So although, as I have already said, I entirely acquit Mr. William Asprey of any intention to pass off, I fear that what he is doing would lead to just that, the deception of some customers."
"It is the law of this land that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is in any way connected with the business of another; that is the first proposition. The second proposition is, that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition there is, I myself think, an exception: a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than that to cause confusion with the business of another, and so long as he does it honestly. It is an exception to the rule which has of necessity been established.
To the second rule, to which I have referred, I think there is no exception at all; that is, that a man is not entitled so to describe his goods as to lend to the belief that they are the goods of somebody else. It is not necessary that there should be an exception to that. It is perfectly legitimate for a man in the cutlery business to carry on business under his own name whatever that name may be, but I can see no necessity for his marking his cutlery with a name (although it be his own name) which may have the effect of passing off those goods as the goods of the Plaintiffs."
"10 (1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
11 (2) A registered trade mark is not infringed by
(a) the use by a person of his own name or address,
provided the use is in accordance with honest practice in industrial or commercial matters."
"The Defendants and each of them must not do the following acts or any of them, that is to say
(a) infringe the registered trade marks set out in Annexe 1 hereto; or
(b) carry on any business in jewellery, antiques, silverware, glass, porcelain, watches, clocks, luggage, guns, objets d'art or other similar goods at the luxury end of the market under the name or using the mark "Asprey" or "William R Asprey Esquire" or any other name or mark which by reason of its similarity to the name "Asprey" is likely to cause confusion or deception and to lead to the business or goods of the Defendants being passed off as the business or goods of the Claimant without clearly distinguishing their business or goods from the goods of the Claimant; or
(c) cause or procure any other person, firm or company to do any of the aforesaid acts."
"Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
"I believe that this was because the differences in scale and image between the two businesses were so marked, and because all or nearly all of the customers of Algernon and Harry Asprey Limited were personally acquainted with Mr. Algernon or Mr. Harry or one of the members of staff, or were introduced to the business by someone having such personal acquaintance."
Maurice Asprey gave evidence of the care which he took to avoid confusion between Maurice Asprey Ltd. and the Claimant. But I would accept that on the evidence before the court, which must be treated as correct for the purposes of the Part 24 application, both Algernon & Harry Asprey Ltd. and Maurice Asprey Ltd. provide examples of trading having been conducted by competitors of the Claimant, using Asprey as part of their name, without confusion having occurred.
(1) In February 2001 Mr. Vivo from Mexico, who had been a customer of the Claimant in the past asked the Claimant for a "pill box" which he said that he had seen in the Claimant's catalogue or showcase in the Dorchester Hotel. The item was not in that catalogue and the Claimant ceased in November 2000 to have a showcase in that hotel, but the First Defendant had two such showcases. Mr. Vivo was directed to the First Defendant's shop, Mr. Vivo saying "Why two Aspreys?" There was evidence from William Asprey that no pill box was ever exhibited in a showcase at the Dorchester. However, the evidence relating to this incident suggests that Mr. Vivo saw an Asprey showcase in the hotel, noticed the name Asprey and assumed that it was the Claimant's showcase, even though Mr. Vivo misdescribed as a pill box the item in it.
(2) The second instance was provided by William Asprey in his witness statement. It concerned an article in "Country Illustrated" in March 2000 written by the head of Christie's sporting gun department, which stated that "Asprey of Bond Street" was poised to open a new gun showroom in Mount Street. Mr. Bloch points out that there is no evidence of how the mistake was made and that the writer may have been misinformed by another. But this incident shows that either the writer or the source of the information given to the writer has assumed that the new Asprey gun room in Mount Street belonged to the Claimant.
(3) Two American men, who had seen a watch in one of the First Defendant's showcases in the Dorchester Hotel, were directed to the Claimant's shop from the Dorchester.
(4) A shipping company submitted to the Claimant's New York office documentation relating to the freighting of the Defendants' guns to a gun fair in the United States.
(5) An American customer of the Claimant responded to an invitation issued by the Defendants to a polo match in Cirencester. That response was sent to the Claimant.
(6) There was a delivery to the Claimant of a painting intended to be delivered to the Defendants.
(7) A Kuwaiti man approached the Claimant after seeing an advertisement issued by the Defendants for a watch.
Kay L.J. :