The High Court has partially dismissed a claim in passing off by a Cotswolds estate agent firm against a former partner’s firm. The court also upheld the defendants’ counterclaim to invalidate the claimant’s trade mark.

The dispute concerned the use of the name “Hayman-Joyce”. The firms had previously worked together, but had since fallen out. Mr Hayman-Joyce was the original found of the estates and letting agency in the Cotswolds, and was the Claimant in the case. He firmly believed that the name, his surname, was his and that although the parties had been in business together (as a joint venture effectively) for many years, when they parted ways he registered a trade mark and insisted that the defendant could not use that mark.

The court found that the firms each had some geographical areas where they had exclusive goodwill in the name for various estate agency services, and others in which they both owned goodwill. Given the parties’ shared (or overlapping) ownership of goodwill in the name, the name might identify either firm or in some cases both of them.

Therefore, the first defendant firm’s continuing use of the name in the areas in which it had goodwill (including where the claimant also had goodwill) in the manner in which the first defendant had historically used it would not amount to a misrepresentation. Acting in this way would not amount to passing off, whether this was due to an “honest concurrent use” defence or simply reflected the parties’ shared ownership of the goodwill.

While it had been a misrepresentation for the first defendant to have advertised on its website as selling houses into an area in which the claimant had exclusive goodwill, it was unclear whether this had caused any damage.

The claimant had registered the word mark HAYMAN-JOYCE for auctioneering and estate agency services. Given the finding on the first defendant’s goodwill, the first defendant would have been entitled to prevent the registration of the claimant’s trade mark based on rights in passing off. The application to register the mark was geographically unlimited and therefore a notional expansion into the first defendant’s area of goodwill (which was attached to auctioneering services as a normal adjunct to estate agency services).

Given that the second defendant controlled the first, and the acts complained of were authorised and procured by him, he was jointly liable for the acts of passing off such as they were.

In short, the Claimant’s claim for passing off failed against the other party, and they lost their right to their trade mark which was their surname.

So, can you use your own surname as a trademark? Yes you can. But just not if for 20 years or more you’ve allowed someone else to use that name without licence or restriction, in order for them to generate their own goodwill in the name.

Lessons to learn?

If the Claimant here had trade marked his name in 1991 when he set up, or at least before trading with the other party, or if he had put in place the licence agreement for the use of the name and IP, then this case would have been decided differently.

So the advice is; plan ahead and get your legal stuff sorted out early rather than leave it to a Court to decide.