Asian Business Publications Ltd v British Asian Achievers Awards Ltd & Anor

In a passing off claim, the question is whether the defendant’s sign is likely to lead a substantial number of people to believe that the defendant’s business or event is that of the claimant, or connected with it. The assessment is fact-sensitive. It takes account of the words used, their distinctiveness, the circumstances of the trade, branding, motives, and evidence of actual or likely confusion.

A descriptive element may justify accepting relatively small differences, but the court must assess the distinctiveness of the combination as used. A descriptive prefix will not necessarily distinguish a defendant’s name where the claimant’s goodwill lies in the words forming the core of both names. Actual confusion is helpful but is not essential.

Asian Business Publications Ltd organised the long-established Asian Achievers Awards. British Asian Achievers Awards Ltd adopted the name British Asian Achievers Awards for a competing event, with Manoj Kumar accepting joint and several liability for the company’s acts.

The defendants conceded that the claimant had goodwill in the name, that damage would follow if there were a misrepresentation, and that Mr Kumar was jointly liable. The only issue at trial was whether use of the defendant’s name amounted to a misrepresentation. The central question was whether the addition of the word “British”, together with the defendants’ branding and references to Jagatwani, sufficiently distinguished the competing event.

1. Outcome. The claim succeeded. Use of the name British Asian Achievers Awards for the defendants’ event amounted to passing off.
2. Applicable inquiry. The court applied the established question whether use of the defendant’s name was likely to lead to the belief that the defendant’s business or event was the claimant’s business or event. The assessment required consideration of the nature of the words, the circumstances of the trade, the parties’ activities, the defendants’ motives, and the surrounding evidence. The authorities included Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd (1946) 63 RPC 39, The British Diabetic Association v The Diabetic Society [1996] FSR 1 and Phones4u Ltd v Phone4u.co.uk. Internet Ltd [2006] EWCA Civ 244.
3. Distinctiveness and comparison. Although each word in Asian Achievers Awards was descriptive, the combination had some distinctive character. The word “achievers” was relatively unusual, and the expression was an invented name denoting a particular event. The addition of “British” merely indicated that the awards concerned British Asians. It did not materially distinguish the defendants’ event for people familiar with the claimant’s name.
4. Branding and surrounding material. Differences between the parties’ logos and the claimant’s strapline did not answer the claim. Goodwill had been conceded in the words themselves, rather than in a particular logo or presentation. Verbal use, use without figurative matter, and imperfect recollection had to be considered. References to Jagatwani and descriptions of the defendants’ event as its first or second event did not necessarily dispel a belief that the event was newly organised, authorised or connected with the claimant.
5. Evidence of confusion. The significant evidence was that Mr Iyer, who knew the claimant’s event well, initially believed an invitation to the defendants’ event concerned the claimant’s event. Other instances of confusion were given limited weight, but the absence of more extensive actual confusion was not fatal. Following Harrods v Harrodian School [1996] RPC 697, confusion may occur without coming to the claimant’s attention.
6. The similarities in copied event materials and the use of the same venue were relevant background matters, but the decision rested principally on the similarity of the names and the resulting likelihood of confusion. The defendants had not done enough to avoid that confusion.

First-instance decision. No appellate history was stated in the judgment.