Asprey & Garrard Ltd v WRA (Guns) Ltd & Anor

In passing off, reputation, misrepresentation and damage remain distinct requirements, but actual confusion is not a precondition. A strong and distinctive name, competing goods, similar locations and promotion, and publicity invoking a family trading heritage may establish a likelihood of deception even among sophisticated customers. Disclaimers rarely cure the problem. A company cannot rely on the own-name defence for a newly adopted trading name. An individual should not be restrained from future trading in his own name on a hypothetical evidential basis; any injunction must identify actual or threatened conduct precisely. Under the Trade Marks Act 1994, passing off supported infringement under section 10(2), while summary judgment under section 10(1) could not stand while the identity question was referred to the European Court of Justice. Honest subjective intention did not satisfy section 11(2)(a).

Asprey & Garrard Ltd brought proceedings against WRA (Guns) Ltd and William Asprey for passing off and trade mark infringement. The claim followed the opening of a competing luxury-goods shop trading as William R. Asprey Esquire after William Asprey left the claimant’s employment.

On the claimant’s application under CPR Part 24, Jacob J granted summary judgment and an injunction against both defendants. The defendants appealed, challenging the findings of misrepresentation and infringement, relying on the own-name defence, and disputing the width of the injunction. The central issues were whether the trading name was likely to confuse or deceive, whether either defendant could rely on the own-name defence, and whether the injunction against William Asprey was justified on the evidence.

Disposition. The Court of Appeal unanimously dismissed the First Defendant’s appeal. It allowed William Asprey’s appeal in part and varied the injunction against him.

1. Passing off. Peter Gibson LJ applied the established three-part analysis of reputation, misrepresentation and damage. The claimant’s reputation and the distinctiveness of the name were established. Actual confusion was not required. The seven incidents of confusion were not conclusive, but supported the judge’s assessment of the global impact of the defendants’ conduct. Likelihood of deception could exist even among wealthy and sophisticated customers. Relevant factors included the competing goods, similar locations, similar promotional methods and publicity emphasising William Asprey’s ancestral connection with the family business. That goodwill belonged to the claimant. William Asprey remained free to use personal customer contacts, but could not present his new business as associated with the claimant’s goodwill. The passing-off finding was upheld. The reasoning applied Jif Lemon ([1990] RPC 341), Bach ([2000] RPC 513) and Designers Guild ([2001] FSR 113).
2. Own-name defence and injunction. Applying the formulation in Joseph Rodgers ([1924] RPC 277), the First Defendant could not rely on the defence because its corporate name was WRA (Guns) Ltd and William R. Asprey Esquire was a newly adopted trading name. The court had insufficient evidence to decide how William Asprey would trade personally. It was therefore inappropriate to restrain him from all future trading under his own name. Any order against him had to identify actual or threatened conduct precisely and was limited to conduct making him a joint tortfeasor by causing or procuring the prohibited acts. Chadwick LJ expressly agreed with this approach; Kay LJ agreed with both judgments.
3. Trade mark infringement. Summary judgment under section 10(1) of the Trade Marks Act 1994 could not stand because the identity question was the subject of a European Court of Justice reference. The defendants nevertheless infringed under section 10(2) on the same facts that established passing off. Section 11(2)(a) afforded no defence to the First Defendant, which was not using its own name, or to William Asprey, who was not himself trading. Honest subjective intentions could not make use amounting to passing off accord with honest practice.

The respondents received their costs of the appeal and below. A limited stay applied to specified shop-front, stationery and stock arrangements.

1. Court of Appeal (Civil Division). The First Defendant’s appeal was dismissed. William Asprey’s appeal was allowed in part, with the injunction varied so that it restrained only conduct causing or procuring the prohibited acts.
2. High Court (Chancery Division), Jacob J. On a CPR Part 24 application, the court granted summary judgment for passing off and trade mark infringement and issued a broad injunction against both defendants.