Pre-emptive strike for brand holder secures injunction against new company
This was a case before the Intellectual Property Enterprise Court where the applicant sought an injunction to prevent a newly formed company using a name (Anglian) in which the applicant had established rights.
The interesting point was that there was no evidence that the new company had begun trading or that there was any confusion. Nevertheless an injunction was granted.
The applicant 'Anglian Windows Ltd ("AW")' is a well-known home improvement company. AW has been advertising its services and trading using the word 'Anglian' along with words 'Home Improvements' in its logo since 1999. It also owns two registered trade marks in the UK for: Anglian Home Improvement (registered in classes 19 and 36) and Anglian Roof Trim (registered in class 19).
The respondent Anglian Roofline Ltd ("AR") was incorporated in August 2014. Aside from this little more is really known about the entity. AW sent AR a letter before action there was an initial response from solicitors but thereafter further correspondence went unanswered. AW applied for an injunction against AR to restrain it from trading under the name ANGLIAN.
AW pursued the action based on the implication that AR intended to use (at the very least) the word ANGLIAN in its trading name and as such would be passing itself off as associated with AW, although at this time it had no reason to believe that AR had actually begun trading under that name. The matter went to the Intellectual Property Enterprise Court but there was no appearance from the respondent.
The application was determined under the guidelines set out in American Cyanamid Co (No 1) v Ethicon Ltd  UKHL 1. This case established 4 guidelines to be taken into consideration by the court when granting interlocutory injunctions. These are as follows:
- Whether the claimant had a strong or merely an arguable case.
- Adequacy of damages as a remedy.
- Balance of convenience.
- Whether the status quo should be maintained.
AW had an arguable case on the grounds that if AR did begin trading under that name a likelihood of confusion and/or misrepresentation could manifest resulting in the respondent passing off and infringing the applicant's marks. AW also had considerable goodwill associated with its name.
In terms of establishing irreparable harm AW's submissions were based on potential damage to its reputation...
Hacon J held that as AR had failed to provide submissions or evidence on its own behalf that the balance of harm favoured AW and accordingly it was just to grant the injunction.
This decision demonstrates the potential to nip potential passing off or trade mark infringement in the bud before any actual damage to a brand is caused. AW's vigilance in discovering AR had been incorporated and pursuing the issue despite the lack of contact has served them well despite the fact that no actual damage had been caused to its company.
Another point to take away from this decision is the conduct of AR. Failing to correspond with AW or the court probably did them no favours. If it was not for the financial strength of the applicant or lack of substantive financial information about it, it could have found itself liable for costs.
We recommend that all new companies carry out appropriate due diligence as to the availability of their chosen name for use as a brand. The fact that a name is available as a company name does not give sufficient comfort.
Likewise brand owners can setup watch services to alert them to new company names and trade mark applications which may be concerningly close to their own, enabling them to take early action to protect their position.