Ian Thomas v Luv One All Promotions Limited & Anor.

Goodwill in a trading name owned by a partnership remains partnership property after the partnership dissolves. A former member cannot acquire that goodwill merely by continuing to perform under the name, even if that member was prominent or front of house. Transfer, agreement, operation of law, abandonment or acquiescence may affect the position, but appropriation alone does not transfer ownership. A new group using the same name may acquire separate goodwill, yet remains liable to an action by or on behalf of the original partners unless the original goodwill was abandoned or the use was acquiesced in. A passing off claim requires the claimant to establish relevant goodwill, misrepresentation and damage.

The claimant and the second defendant, half brothers, had been members of a Jamaican sound system called Luv Injection. After their relationship broke down, the original group operated as a partnership and dissolved in October 2016. The second defendant continued using the name with a new group, while the claimant later formed another group under the same name.

The claimant brought passing off claims concerning the name and dub plates, and sought invalidation of a trade mark. The second defendant counterclaimed for the winding up of the original partnership under section 35 of the Partnership Act 1890. The central issues were ownership of the original goodwill, the claimant’s standing to sue, and whether use of the name or dub plates amounted to passing off.

1. Ownership of goodwill. The claim based on use of the name failed. It was common ground, consistently with Saxon Trade mark: Byford v Oliver [2003] EWHC 295, that Luv Injection 1 had operated as a partnership at will, that it dissolved on the split, and that the goodwill in the name was owned by its partners, including the second defendant. The claimant’s role as a front-of-house performer did not alter that ownership.
2. A new group does not acquire the original group’s existing goodwill merely by performing under the same name. The claimant’s argument that the goodwill had been appropriated by the claimant, another former member, or the new group had no substance. Property, including goodwill, cannot generally be acquired from its owner by appropriation alone. A transfer by agreement or operation of law would be required, subject to matters such as abandonment.
3. The claimant’s later group had no protectable goodwill in the name when the defendant’s group first used it. Accordingly, there could be no misrepresentation that the defendant’s group was connected with the claimant’s later group. Any claim based on the original goodwill belonged to the original partnership, not to the claimant personally.
4. The abandonment argument also failed. The second defendant had continued using the name after the split and had not indicated an intention to abandon his rights. The circumstances therefore differed materially from the abandonment found in Saxon at [2003] EWHC 295, [27]-[28].
5. The trade mark invalidation claim failed because only the proprietor of an earlier right within section 5(4)(a) of the Trade Marks Act 1994 could apply under section 47(2)(b), and the claimant was not that proprietor.
6. The dub plate claims also failed. The claimant had not established separate goodwill in his personal name, any particular use by the defendant capable of constituting passing off, actual confusion, or a sufficient likelihood that listeners would understand a reference to Luv Injection or to a former member as representing the claimant’s involvement.
7. The claimant’s claims were dismissed. The counterclaim for winding up the original partnership was adjourned so that potentially interested third parties could be notified and, if appropriate, joined. The parties were directed to propose directions.

The judgment states that an earlier strike-out order by HHJ Melissa Clark was partly reversed on appeal by the Court of Appeal on 20 May 2021. The present judgment then determined the remaining claims at first instance.