Prysmian Cables & Systems Limited v M/S Apple International & Ors

Goodwill is attached to the business to which it relates. Whether a sale transfers goodwill depends on the proper construction of the transaction documents and the surrounding evidence. A purchaser that adopts a different brand, disclaims ownership of the former name and never uses it as an indicator of origin may fail to establish goodwill in that name.

Reputation alone is insufficient for passing off. For trade mark infringement, the sign must be assessed in its actual context, but context cannot be expanded so far that a different, more similar sign creates an artificial bridge to the registered mark.

This was a liability trial concerning claims by Prysmian Cables & Systems Limited against the first to fourth defendants for passing off, infringement of the claimant’s registered BICON trade mark, and invalidity of the defendants’ BICC Components mark. The claim against the fifth defendant had settled and the claim against the second defendant as a joint tortfeasor was not pursued.

The central issues were whether goodwill in the historical BICC name had passed through the relevant corporate transactions, whether it had been abandoned, whether the defendants’ use misrepresented a connection and caused damage, whether BICC Components infringed under sections 10(2) or 10(3) of the Trade Marks Act 1994, and whether the defendants’ mark was invalid or registered in bad faith.

1. The passing-off claim failed because the claimant had not established a good chain of title to the BICC goodwill. The transaction documents, including limited licence provisions and the separate treatment of BICC trade marks, were inconsistent with an assignment of the relevant goodwill.
2. Alternatively, any goodwill acquired by Pirelli or the claimant had been deliberately abandoned when the BICON name was adopted. The claimant consistently used BICON, relabelled its products and told customers that it had not acquired rights in BICC. Reputation and occasional use of BICC product references did not establish goodwill. Goodwill requires customers in the United Kingdom.
3. If goodwill had existed, use of BICC Components and the defendants’ website statements would have been misrepresentations liable to cause damage. End users could be confused. Passing off based on the claimant’s BICON goodwill was not established.
4. The BICC Components sign had, at most, extremely low visual similarity and virtually no aural similarity to BICON. The sign had to be considered as a whole, including “Components” and the device. There was no likelihood of direct or indirect confusion under section 10(2).
5. The claimant’s BICON mark had the necessary reputation for section 10(3), but no link would be made between the sign and the mark. Unfair advantage and detriment were also unproved.
6. The objections under sections 5(2), 5(3) and 5(4)(a) failed or depended on the passing-off findings. The application was not made in bad faith under section 3(6), because the claimant had not established goodwill and had publicly disclaimed rights in BICC.
7. The claims were dismissed. The parties were to address the terms of the order at a later hearing.