Feb 17, 2017

Reputation or goodwill?

The Intellectual Property Enterprise Court has held that a solicitor's reputation does not amount to goodwill as the basis for a passing off claim. The case, Bhayani & Anor v Taylor Bracewell LLP [2016] EWHC 3360, concerned a dispute between law firm partners over the use of Ms Bhayani's name.

Ms Bhayani was a specialist in employment law and a partner at law firm Taylor Bracewell. As part of the agreement between the parties, they agreed that for those services supplied by the department lead by Ms Bhayani, the firm would offer services under the name of "Bhayani Bracewell". Following this agreement, the firm registered this agreed name as a trademark in 2014.

However, a dispute arose following Ms Bhayani leaving Taylor Bracewell. Instead of altering their website and other advertisements, the firm continued to offer an employment law practice using the trademarked name without Ms Bhayani working at the firm. In response to this Ms Bhayani sought to revoke the trademark on the grounds that the use by the firm in such a way would likely mislead the public. She also issued proceedings for a passing off claim alleging that the firm had passed off its employment law services as being those offered by Ms Bhayani.

In order to be successful in a passing off claim, a claimant must prove it has generated goodwill and that there has been a misrepresentation by a defendant and as a consequence of that, the claimant has suffered damages to its goodwill.

Ms Bhayani's passing off claim failed at the first hurdle as the His Honour Judge Hacon held that goodwill generated in the course of duties carried out within a partnership vests within a partnership and thus it was not Ms Bhayani who held the goodwill regarding the employment services offered by the firm but rather Taylor Bracewell, the legal partnership. The judge also made clear that the public would be aware that a solicitor employed in a law frim operating under a partnership structure was under the control of their employer and not acting outside of their remit. The judge did agree that that the application to revoke the trademark had a realistic prospect of success at trail and therefore refused to strike out that part of the claim.

The claim is an interesting one to follow because passing off claims might typically cover a product range or store get-up, for example. The case also goes to show that, depending on circumstance, the line between a person's reputation and their goodwill can be a blurred one.

If you have any questions on the above, please do not hesitate to contact the team at McDaniel & Co. on 0191 281 4000 or legal@mcdanielslaw.com.

in: News, Passing Off, Trade Marks

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