England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand, London, WC2A 2LL
		28th July 2004

1. This is a claim for passing off of the Defendant's funera1/undertaking business trading under the name "Richard T. Adlem Funeral Director" as being that of or authorised by or associated with the Claimant. The Claimant also seeks declarations that UK Registered Trade Mark No. 2,298,286 in respect of the name "Richard T. Adlem Funeral Director" registered in the name of the Defendant in respect of funeral services, undertaking services, memorial services and dated 18^th April 2002 was invalidly registered and/or that the provision of funeral, undertaking and/or memorial services by the Claimant under or by reference to such name (or the names Richard T. Adlem and/or Adlem and Beckwith) does not infringe such Registered Trade Mark.
2. The Claimant company provides funeral/undertaking and memorial services to the general public in the counties of Dorset, Hampshire and Wiltshire centred around Salisbury and Fordingbridge where it has Chapels of Rest. Its moving force is Mr Ian Newman who is the managing director and principal shareholder and who has been an undertaker since 1976. Mr Newman set up the Claimant company in November 1988. In 1998 the Claimant purchased the funeral services of F. Fry & Son which still operates under that name albeit Fred Fry is dead and it is run by his son and daughter in law. By an agreement dated 5thth May and a deed of assignment dated 16^th May 2000 in consideration of the sum of £60,000 the Claimant purchased from Stephen Beckwith and Carolyn Beckwith the goodwill of the Beckwiths' business of a funeral directors carried on by them at Woodcutts, Salisbury, Wiltshire and Sixpenny Handley, Dorset together with the exclusive right to represent themselves as carrying on the business in succession to the Beckwiths.

The agreement also provided that the right to use the trade names "Richard T. Adlem Funeral Directors" and "Adlem and Beckwith" was to be to the exclusion of the Beckwiths and restrictive covenants were entered into by the Beckwiths against their soliciting customers or carrying on any similar business for a period of 5th years within the areas of Salisbury and East Dorset District Council.

3. To appreciate precisely what the Claimant was purchasing it is important to relate the history of the Beckwith business.

The Defendant is and has been a funeral director since 1965. Born in 1932 he has lived in Sixpenny Handley all his life. In 1965 Mr Adlem took over the business of Day and Adams who were builders and funeral directors. Mr Adlem stated that as Mr (Jeff) Adams went bankrupt in 1964 he was starting the (funeral) business from stratch. Certainly by 1993 it is clear that Mr Adlem, trading under his own name, had built up a funeral directors business which was well respected throughout the Cranborne Chase district providing services to both the famous and those of more humble origin in the neighbourhood as is clear from the many testimonial letters and statements produced by the Defendant. I have no doubt that Mr Adlem' s funeral business flourished as a result of the manner in which he both arranged and directed a funeral with compassion and relative simplicity. Mr Adlem clearly took pride in the business he had built up. The only active promotion he undertook apart from word of mouth was to advertise in the local parish magazines so that at times of bereavement people were able to find his telephone number.

An important adjunct to the business was the Chapel of Rest which Mr Adlem built himself in about 1980. This was located at the bottom of his garden at Park Cottage, Sixpenny Handley and comprised the chapel itself, a mortuary and refrigeration facilities for six cadavers.

Opposite the Chapel of Rest there is a barn on which there has been a sign of one sort or another bearing the words "Richard T. Adlem Funeral Director" since 1987.

Although the funeral services offered by Mr Adlem were in effect a 24 hour service, 7 days a week, it was by no means full time. In the so called "best" years there may be no more than a low hundred funerals. Apart from such activities, Mr Adlem also offered his services not only as an agricultural contractor but also as a provider of headstones and plaques and other memorial services - all conducted in the name of Richard T. Adlem Funeral Director and as he states as a one man band.

4. In 1993 Mr Adlem decided to sell his funeral services business but retain his farming and memorial services. With this in mind he placed an advertisement in Daltons Weekly to see what reaction he would get.

Mr Stephen Beckwith who was known to Mr Adlem and lived in the village expressed an interest in purchasing the business. Mr Beckwith was at that time working in the removal business and had no experience as a funeral director or undertaker.

Mr Beckwith had limited resources and could not afford to pay the agreed purchase price of £55,000 outright. However an agreed mechanism was arrived at for payment to be made out of the net profits. In order for Mr Beckwith to take over the funeral business it was an agreed understanding that Mr Adlem would assist Mr Beckwith in his running of the business and that he would continue to direct funerals namely to front up the cortege on the day and talk to the family relatives.

It was also an important part of the deal at the time that Mr Beckwith should have use of the Chapel of Rest and accordingly a nine year lease on the chapel was agreed upon for £60.00 per week.

5. A draft Agreement was sent by Mr Bourke, Mr Adlem's solicitor, to Mr Walby who was employed by A.K Horsey, Mr Beckwith's solicitor on the 5^th November 1993. Clause 1 of the draft expressly referred to the right to use the firm name of R.T. Adlem Funeral Director. Clause 14 required the purchaser to add his own name at least before three years from the date of the agreement and in due course remove the name of R.T Adlem. Clause 15 further required Mr Adlem's name to be removed in the event of sale of the business by the purchaser. A meeting was held at Mr Bourke's offices at Chettle on the 1^st December at which both Mr Beckwith and Mr Adlem were present. It is not entirely clear what occurred at that meeting. Mr Beckwith's evidence^[1] was that it was agreed that it was essential from a goodwill point of view that Richard Adlem's name should continue and that Mr Adlem did not want the name ever to be removed (XX Day 1/80). In other words that there should be no restrictions on the sale of the goodwill. This is to be contrasted with the evidence of Mr Adlem who although he could not remember what was said at the meeting (XX Day 4/67-68) was adamant that he was not selling his name. Mr Bourke's evidence was to the same effect (XX Day 3/88-89,91).

After this meeting Mr Walby redrafted the Agreement. In a letter to Mr Walby dated 10^th December Mr Bourke states that he has read the agreement and apart from the payment of the purchase price it appears to be OK. I understand that it is this agreement that was signed by Mr Adlem and dated 31st December 1993. It is not disputed that this agreement was also signed by Mr Beckwith although no copy of the agreement bearing his signature has been found. The title to the agreement on the cover sheet, which was relied upon by Mr Adlem states that it is an "Agreement for the sale of a business of funeral directors and leasehold premises known as the Chapel of Rest, Sixpenny Handley, Salisbury, Wiltshire".

Clause 1 of the agreement under the heading "Sale of Assets" relates to the sale of the business as a going concern with effect from close of business on the transfer date (1 5t January 1994) and provides that with effect from that date the purchaser will be deemed to carry on and continue the business in succession to the vendor to exclusion of the vendor. The business is defined as the business of a funeral directors carried on at the property, namely the Chapel of Rest.

The purchase price (as identified in the First Schedule) of£55,000.00 is stated to be apportioned as follows:

(i) for the goodwill the sum of £54,000.00 ...

(ii) for all stock in trade the sum of £1,000.00.

Goodwill is defined as the goodwill and connection of the business together with the right to represent the purchaser as carrying on the business in succession to the vendor.

In the definition section "Assets" are divided into four distinct parts, namely (i) goodwill (ii) equipment (iii) property (iv) stock in trade. No mention is made in the agreement of the use of name Richard T. Adlem. However as Mr Bourke acknowledged (XX Day 3/95) it was a completely standard contract drawn up by A K. Horsey.

6. Unless there are express terms relating to use of the name of the business, the sale of the goodwill of a business will impart the right to use the name relating as inevitably it does to an important part of the "attractive force that brings in the custom".

In the case of Levy. v. Walker [1879] 10 Ch D 436 at 448 to 449 James L. J stated the general position as follows:

"But there is another point upon which I myself cannot entertain any doubt, which is this, that the assignment of the goodwill and business of Charbonnel & Walker did convey the right to use the name of Charbonnel & Walker, and the exclusive right to use that name as between the vendor and the purchaser of that business."

Jessel MR (at 446 to 447) did not demur from this position.

7. On the facts of this case, it is difficult to see what else constituted the goodwill in the business other than Mr Adlem himself trading under the name Richard T Adlem Funeral Director. Had Mr Beckwith not been able to trade under this name (e.g. as Stephen Beckwith, Funeral Director, formerly R. T Adlem, Funeral Director), the business would have not been the business carried on by the vendor (as stipulated in clause 1 of the agreement).
8. Mr Adlem' s reliance on the title on the coversheet to the agreement that what was being sold was a business of funeral directors known as "Chapel of Rest" is untenable. Firstly no such business existed under that name and secondly the words Chapel of Rest describe and refer to the leasehold premises that were to be leased to Mr Beckwith as part of the package.
9. A condition of the sale of the business was that for a period of 5 years Mr Adlem would not be engaged or concerned or interested in the business of a funeral director within 10 miles of the Chapel of Rest without Mr Beckwith's consent (Clause 10.1).

I have no doubt that the £54,000.00 paid by Mr Beckwith to Mr Adlem for the goodwill of the business included not only the use of the trading name Richard T. Adlem Funeral Director but also as part of the package an understanding between the parties that Mr Adlem would assist Mr Beckwith in running the business and continue to participate in the funeral activities as and when Mr Beckwith required. No doubt also an important part of the package was the 9 year lease on the Chapel of Rest which as Mr Beckwith accepted it would not have been practical to go anywhere else to operate the business (XX Day 1/123)

10. Mr Beckwith states that the trading styles under which the funeral business was operated from 1st January 1994 until its sale to the Claimant on 16th May 2000 were Richard T. Adlem Funeral Director, initially used exclusively and latterly also Adlem and Beckwith or Richard T. Adlem and Stephen Beckwith^[2]. There is also evidence (not put to Mr Beckwith) that in 2000 Mr Beckwith was also trading as "Stephen Beckwith, Funeral Director (Also Trading as Richard T. Adlem)" See X 10 - invoices April, May 2000.
11. Mr Adlem' s evidence was that he was not aware that Mr Beckwith was trading as Richard T. Adlem Funeral Director. He stated that Mr Beckwith always called himself Stephen Beckwith Funeral Director (XX Day 4/29-39). His evidence is inconsistent with documents in the case (see Bundle 21712 and 797) and with the fact that there was a sign on the barn opposite the Chapel of Rest bearing the name Richard T. Adlem Funeral Director. It is also inconsistent with Mr Adlem's witness statement (paras 31 and 32).

When asked about these paragraphs (X Day 4/95-97) Mr Adlem's response was as follows:

A: "Well allowed him to associate himself with me" THE DEPUTY JUDGE: "Right. And use your name?"

A: "But there was no ..... it was without any written agreement"

A: "Well he used his own name. But, as 1 say, as far as the name was concerned, it was never official. But 1 allowed him to associate himself directly with me, the way he worked so closely with me. Like he said, it was like a father and son relationship, as you heard him say yesterday. "

THE DEPUTY JUDGE: "Right"

A: "If 1 had not allowed him to associate himself with me, the business would not have survived. "

THE DEPUTY JUDGE: "Right. 1 just want to get the facts clear. So the association was that he would use the trading style Richard T. Adlem Funeral Director in the course of the business which you and he were conducting. "

A: "But people thought that it was still me. Most of the people thought it because 1 was doing all the funerals.

Mr Chacksfield, Counsel for the Claimant, did not suggest that Mr Adlem was deliberately not telling the truth, rather that hindsight and perhaps wishful thinking may have clouded his memory with regard to this matter. I think Mr Chacksfield is right that given the close relationship between the two, it is not credible that Mr Adlem was unaware that Mr Beckwith was trading under the style of Richard T. Adlem Funeral Director.

12. As regards Mr Beckwith who gave evidence on behalf of the Claimant and had been brought over from Canada I found him to be both fair and truthful. He accepted he was not a good mixer and consequently he left the fronting up or what has been referred to as the conducting or directing of the funeral to Mr Adlem (XX Day 1/112). As Mr Beckwith stated (Re X Day 2/15) he was responsible for the arranging of the funerals such as booking notices, arranging flowers, arranging to meet the vicar, contacting the bearers, booking of the crematorium and collecting the body. He was also responsible for running the business in terms of sending out invoices, paying taxes and VAT returns and for any advertising of the business in local papers and parish magazines.

In contrast Mr Adlem' s role was mainly to direct or conduct funerals, namely to be at the church with the tophat and tails on the day of the funeral to meet and greet the mourners and to lead the procession into and out of the church or crematorium. As can be seen from exhibits X4 and X4A from 1994 to 1998 around 90% of the funerals were directed by Mr Adlem. Even in 1999 and 2000 some 60% were still being directed by him.

As Mr Beckwith accepted (XX Day 1/137) the perception that people had of the business was one of the two of them working very closely together effectively like partners. Whilst Mr Adlem was paid £10.00 for directing a funeral and £20.00 for directing and removing the body, he was not employed by Mr Beckwith.

13. Concurrently with Mr Adlem's funeral service activities for Mr Beckwith, Mr Adlem continued to trade under the name Richard T. Adlem Funeral Director in respect of his memorial service business, namely the fixing of headstones and other monumental masonry work. Mr Beckwith not only assisted Mr Adlem in such work but also passed on enquiries relating to such services to Mr Adlem (see Beckwith XX Day 1/108).
14. In early 1999 Mr Beckwith decided to sell the business for reasons which Mr Adlem disputed but which I do not find necessary to resolve. At all events it is clear that Mr Beckwith was contemplating emigration to Canada at this time as he made a statutory declaration in support of an application for a Canadian visa (see Bundle 2/747).
15. Mr Beckwith^[3] approached a company in Dorchester called Grassby & Sons Limited (Grassbys) who were interested in purchasing the business and made an offer of £72,500.00 subject to satisfactory negotiations with Richard Adlem. A meeting was held at Mr Adlem's house where Mr Adlem objected to the sale of the business under his name. As a result the deal did not proceed, as recorded in Grassbys letter dated 14th September 1999 to Mr Beckwith (Bundle 2/754).
16. In the course of the abortive negotiations with Grassbys, Mr Beckwith was advised by his solicitor Mr Horsey now of Traill & Co that no approval of Mr Adlem was required for the sale of the business under the Richard T. Adlem name (see letter dated 23rd June 1999 from Mr Horsey - Bundle 2/755).
17. Following the breakdown of negotiations with Grassbys, Mr Beckwith approached Mr Ian Newman who expressed an interest in buying the business. In a letter to Mr Newman dated 25th November 1999, Mr Beckwith set out the position regarding the proposed sale and the difficulties Mr Beckwith was facing with Mr Adlem and the fact that he had not informed Mr Adlem about the sale. Prior to this Mr Beckwith had taken on a lease of Unit 6B Town Farm Workshops, Sixpenny Handley for the purpose of starting a monumental memorial business of his own and providing office space presumably in competition with Mr Adlem's existing monumental memorial business.
18. On the 4th May 2000 at the request of Mr Newman, Mr Beckwith telephoned Mr Adlem to advise him that he was proposing to sell the business to the Claimant. This was followed by a letter of the same date from Mr Newman to Mr Adlem (received by Mr Adlem on the 5^th May). In Mr Newman's letter of the 4^th May, Mr Newman referred to the forthcoming purchase and that the business of Richard T. Adlem was to be managed by Martin Calver. Mr Newman expressed the hope that Mr Adlem would feel able to continue to be involved and to conduct funerals. Mr Newman also hoped that a lease on the Chapel of Rest could be negotiated. He suggested that these matters could be discussed and with this in mind he telephoned Mr Adlem on the following day (the 5^th May).
19. The agreement for the sale of the business dated 5^th May 2000 was signed that afternoon with a "completion" date fixed for the 16^th May. Under the terms of the agreement, for a consideration of £60,000.00 the Claimant purchased from Mr and Mrs Beckwith the "goodwill of the business including telephone number and the right to carry on the business in succession to the seller and to use the business name of Richard T. Adlem Funeral Directors and Adlem and Beckwith."

Terms for payment included payment of the balance of the purchase price by monthly instalments of £1,000.00. There was some dispute as to whether the Claimant ever paid Mr Beckwith in full. I have no doubt on the evidence of both Mr Newman and Mr Beckwith that full payment has been made.

20. A meeting was held at Mr Adlem's house on the 10^th May between Mr Newman and Mr Adlem. Mr Newman's evidence^[4] was that Mr Adlem agreed that the Claimant could use the Chapel of Rest pending resolution of the question of the terms of the lease. Mr Newman also stated that there was a discussion as to Mr Adlem entering into a restraint of trade covenant on payment of £25,000.00.

Mr Adlem's evidence^[5] was that although a lease on the Chapel of Rest was discussed Mr Adlem denied agreeing to anything. He told Mr Newman that he was going on holiday on the 16^th May to Majorca for a week and would discuss the matter with his solicitor on his return.

21. The Deed of Assignment of the goodwill to the business was signed on the 16^th May 2000 and the Claimant took over the running of the business including possession of the Chapel of Rest. Shortly after Mr Adlem's return from Majorca, the Claimant installed a new telephone line to the Chapel of Rest and replaced the old wooden sign on the barn with a new sign bearing the name Richard T. Adlem Funeral Director with the newly installed telephone number.

No objection was taken to the Claimant's actions at the time although Mr Adlem now complains such occupation of the Chapel of Rest and use of the trading name Richard T. Adlem Funeral Director by the Claimant was unlawful.

22. This is not consistent with what in fact happened thereafter. Following Mr Adlem' s return from holiday and discussions with his solicitor, in a letter dated 31st May 2000 from Mr Adlem' s solicitor Mr Bourke (Traill & Co) to the Claimant, Mr Adlem's position regarding the Claimant's purchase of the business was stated to be as follows:
Re: Richard T. Adlem Funeral Director

"For whatever reason Mr Beckwith decided to sell the business to you without consulting Mr Adlem. My client has no objection to this provided certain terms are agreed with him. As far as the lease to the Chapel of Rest is concerned the solicitors for Mr Beckwith offered to terminate the lease which has been accepted by Mr Adlem ... ... ...

My Client would be prepared subject to the contract and subject to agreement of all terms set out in this letter to grant a new lease to you on comparable terms. I told my client that you had put forward a proposal that he be paid £50. 00 per funeral and this he is minded to accepted... ... ...

Mr Adlem requires a lump sum of £25,000.00. He does not insist that this amount be paid in a lump sum, the payment can be spread out over a period of time ... ... ... ... ... ... ... ... ... ... ... ... ... ... ...

To summarise Mr Adlem built up the business over a great number of years and he is very keen that it should continue and if terms of agreement can be reached based on the above then he will do all in his power, as he did with Mr Beckwith, to ensure that the business continues under your management successfully. The restraint of trade clause that he entered into with Mr Beckwith has long expired and I think if terms are agreed Mr Adlem would be prepared to enter into a restraint of trade clause with you to ensure that the clients that would come to him go through your business.

I look forward to hearing from you.

This letter is consistent with the evidence of Mr Newman and is not consistent with that of Mr Adlem.

23. In a letter dated 6^th June 2000 from the Claimant's solicitors (Whitehead Vizard) to Traill & Co, the Claimant accepted the terms proposed by Mr Bourke in the letter of the 31st May. Much was made by Mr Sherman (acting as a litigation friend on behalf of the Defendant) of the statement that the Claimant was agreeing to pay a sum of £25,000.00 for Mr Adlem's "goodwill". It is clear from the letter itself that the "goodwill" referred to relates to a new restrictive covenant and an undertaking by Mr Adlem to continue to support and promote the business.
24. Following a faxed reminder dated 4^th July from the Claimant's solicitors, Traill & Co stated in a letter dated 7^th July that

"My client is broadly in agreement with your proposals but I am still trying to sort out the position with regard to the lease".

Correspondence regarding the lease and the terms of agreement continued throughout the remainder of 2000 and the beginning of 2001 until receipt of a letter dated 27th February 2001 from the Defendant's solicitors which merely stated that Mr Adlem had decided not to proceed. No reasons were given for this apparent volte face. Mr Newman's evidence was that whilst he was on holiday Mr Adlem changed the locks of the Chapel of Rest (X Newman Day 2/154). It appears that Mr Adlem (as he states XX Day 54/27) is not in favour of large funeral businesses motivated by profit and numbers and did not approve of his name being associated with a business such as the Claimant. At all events the Claimant vacated the Chapel of Rest premises and Mr Adlem started trading once again from the premises under the name Richard T. Adlem Funeral Director, a name which he had retained throughout for his monumental memorial service business.

25. During the period of May 2000 to February 2001, Mr Adlem assisted the Claimant with the conducting/directing of funerals just as he had done so for Me Beckwith. Of the 40 or so funerals undertaken by the Claimant under the name Richard T. Adlem Funeral Director during this period, Mr Adlem conducted 20 for which he was duly paid by the Claimant. No complaint was made by Mr Adlem regarding the Claimant trading under the Adlem name, nor with regard to the Claimant's occupation of the Chapel of Rest. Pending the finalisation of the negotiations no rent was demanded.
26. From March 2001 it became clear to the Claimant that the Defendant was advertising his funeral services in local parish magazines as Richard T Adlem Funeral Director and accordingly the Claimant's solicitors wrote to Mr Adlem on the 14^th May 2001 complaining about such activity (see Bundle 2/850, 850A). Traill & Co (the Defendant's solicitor) responded in a letter dated 29^th May that whilst Mr Adlem could not stop the Claimant trading as Stephen Beckwith Funeral Director (also trading as Richard T. Adlem) nor could the Claimant stop Mr Adlem using his own name to trade.
27. Whilst further correspondence ensued, the matter was not resolved although in trading under his own name Mr Adlem added the words ''the original", ''the original and only" and "no connection with Richard T. Adlem operating from (01725) 552309".
28. What happened during the remainder of 200 1 and during 2002 was that Mr Adlem approached a number of local parish magazines objecting to the use by the Claimant not only of the name Richard T. Adlem but also the manner in which they were promoting themselves as operating from 7B Town Farm Workshop and having a Chapel of Rest when in fact they have never operated a business from these premises and certainly there has been no Chapel of Rest there, the Claimant's Chapels of Rest being located in Salisbury and Fordingbridge.
29. The evidence of Mr Calver^[6] was that advertisements were placed in the local parish magazines on a block booking normally once a year. In May 2001 the editor of the parish magazine covering Wimbome St Giles advised him that she could no longer accept the Claimant's advertisment as it conflicted with one of the Defendant. Similar problems were encountered in the Tisbury Parish magazine, and the Homington and the Coombe Bissett Parish magazine.

As a result as from the end of 2001, the Claimant has not advertised or promoted the Richard T. Adlem business apart from an advertisement in Focus in 2002 and an attempt in December 2003 (long after proceedings had started) following legal advice.

30. It is also clear from the correspondence from April to November 2002 that Mr Adlem was in contact with the Trading Standards Offices of Dorset and Wiltshire as well as the Advertising Standards Authority regarding the Claimant's advertisements^[7].
31. As part of his campaign to protect his name, on the 18^th April 2002 Mr Adlem applied for and subsequently obtained registration of trade mark No. 229,8286 in respect of both gravestone and monumental masons services (class 37) and funeral services, undertaking services, memorial services (class 45).
32. An illustration of the manner in which Mr Adlem has sought to prevent the Claimant using the name Richard T. Adlem as part of its business can be seen from certain correspondence^[8] between him and the Reverend Humphrey Southern of the Nadder Valley Team Ministry regarding the Claimant's advertisement in the local parish magazine called Focus. A complaint was made by Mr Adlem in his letter of 13^th April 2002 shortly before he applied for a trade mark. In his letter dated 20^th December 2002 Mr Adlem enclosed a copy of the Trade Mark registration and threatened the editor and publisher of Focus with a court injunction unless the Claimant's advertisement was dropped.

Similarly complaints were made^[9] by Mr Adlem when the Claimant attempted to advertise under the Richard T. Adlem name in November and December 2003 in various magazines including the Coombe Bissett and Homington Express, Focus, Salisbury Journal and Avon Advertiser.

33. With those facts, I turn to the two questions which must be addressed namely:

(1) Is Mr Adlem entitled to trade as a funeral director under the name Richard T. Adlem or any other name embracing his own name and

(2) Is the Claimant entitled to trade under the name Richard T. Adlem Funeral Director.

Can Mr Adlem trade under the name Richard T. Adlem Funeral Director

34. To prevent the Defendant so trading the Claimant must establish that Mr Adlem is passing off his business as or for the Claimant's business.

The Claimant must establish three matters namely

(1) that the name Richard T. Adlem when used as a business name for funeral services means the Claimant's business and none other

(2) that the use by Mr Adlem of that name is likely to or actually has deceived members of the public into believing that Mr Adlem's business is or is connected with the Claimant's business. Mere confusion is not enough.

(3) that the Claimant has suffered or is likely to suffer damage to its business as a result of the Defendant's misrepresentation(s).

35. The time at which the court should consider whether passing off has occurred is when the Defendant first commenced the acts complained of, namely as of April/May 2001, shortly after the Defendant repossessed the Chapel of Rest at Sixpenny Handley.

At that time period there is no doubt that the name Richard T. Adlem Funeral Director was the name being used by the Claimant with full knowledge of the Defendant and up to the end of February with the Defendant's assistance.

However I also have no doubt that a substantial number of those resident in the Cranborne Chase district associated the name Richard T. Adlem Funeral Director with the Defendant carrying on business as he had since well before 1993 in providing memorial services, such as tombstones and plaques and also acting as a funeral director from his premises at Sixpenny Handley. Those more familiar with Mr Adlem's activities as a funeral director would have been aware that Mr Adlem was assisting or being assisted by firstly Mr Beckwith and since May 2000 by Mr Calver or the Claimant.

In other words the name Richard T. Adlem Funeral Director as of March 200 I was a name that was not exclusively associated with the Claimant's funeral services but was also associated with that of the Defendant.

36. Mr Chacksfield contended that having sold the name to Mr Beckwith who later sold it to the Claimant, the Defendant is no longer able to trade under his own name as this would in effect be a derogation from the goodwill he originally sold.

I do not accept that whatever contractual rights either Mr Beckwith or the Claimant might or might not have (and I do not accept they have any such right) affects the question of whether the Defendant's actions are tortuous and give rise to a cause of action for passing off.

At the time in 1993 Mr Adlem sold his business in funeral services he was restrained for 5 years from being engaged or concerned in the business of a funeral director (without the consent of Mr Beckwith). However with Mr Beckwith's consent he continued to be involved with the business of funeral directing and to that extent those in the locality continued to associate Mr Adlem with the business he had operated from the Chapel of Rest.

Mr Adlem was not employed by Mr Beckwith or the Claimant and it is, because of his continued association with the business in assisting in directing funerals that the name Richard T. Adlem has been and continues to be perceived by a substantial number of the local community as being a business which either is the Defendant's or one in which the Defendant's funeral services may be secured.

37. For the above reasons the Claimant has not established that the funeral business carried on under the name Richard T. Adlem in the Cranborne Chase/Sixpenny Handley district will be understood by members of the community there as denoting solely the Claimant's business.
38. It follows that in advertising his funeral business under the name Richard T .Adlem the Defendant is not misrepresenting it as or for the Claimant's business or one associated or connected with the Claimant.

I have no doubt that the Claimant has failed to show any such deception or likelihood of deception. This can be tested as follows. In all of the advertisements in the parish magazines, under the name Richard T. Adlem, Mr Adlem provides his home address and telephone number (see Bundle 3/1167,1287). Anyone following up such an advertisement would only be dealing with the Defendant whose evidence was that he always made it clear that he was not connected with the Claimant.

In the earlier advertisements Mr Adlem has added words such as "the original and only". I do not consider these added words are helpful to Mr Adlem. If anything they are misleading in the sense that it is wrong to call himself the only Richard T. Adlem funeral business having regard to those who do associate the name Richard T. Adlem with the Claimant's business.

Likewise the words "the original" and "established 1965 and still a small, independent and private family business" are potentially misleading in the sense that the funeral business Mr Adlem has created since February 2001 is not the same business that Mr Adlem started in 1965. That business was sold by him in 1993 and now belongs to the Claimant.

39. When asked by me whether the Claimant's objection related to the offending words, Mr Chacksfield made it clear that his complaint was the Defendant's use of the name Richard T. Adlem as a funeral business. Subject to the removal of these offending words I have no doubt that the Defendant is entitled to use the name "Richard T. Adlem" in the manner he is doing. No doubt a further distinguishing feature over the Claimant's funeral business is the fact that Mr Adlem's business is centred around the Chapel of Rest at Brushy Bush Lane, Sixpenny Handley whereas the Claimant has no Chapel of Rest in Sixpenny Handley.
40. Mr Chacksfield referred me to the cases of Asprey & Garrard. v. WRA (Guns) [2002] FSR 30 and Reed. v. Reed [2003] RPC 12 regarding observations of Jacob LJ as to the scope of what has been referred to as the "own name" defence. Given that I have found that the Defendant's activities have not been shown to cause deception, consideration of the scope of such a defence (if any) is not necessary.

The right of the Claimant to trade under the name Richard T. Adlem

41. The Claimant seeks a declaration of invalidity of registered Trade Mark No. 2298 286 in respect of the name "Richard T. Adlem Funeral Director" for funeral services, undertaking services, memorial services all in class 45.

Alternatively the Claimant seeks a declaration that its use of that name for its funeral services does not infringe such Trade Mark.

Validity of the Trade Mark

41. The relevant provisions of the Trade Marks Act 1994 are as follows:

Section 47(2) The registration of a trade mark may be declared invalid on the ground_

(b) that there is an earlier right in relation to which the condition set out in Section 5(4) is satisfied.

Section 5(4); A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented _

(a) by virtue of any rule of law (in particular; the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

Mr Chacksfield concedes that the attack on the Trade Mark will stand or fall with the claim in passing off. As I have found that the Claimant cannot prevent the Defendant from using the name "Richard T. Adlem" as it does not have the exclusive right to such name, the condition of Section 5(4) is not met.

Declaration of Non-Infringement

42. Section 11(3) of the 1994 Act provides as follows:

"A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality"

For this purpose an "earlier right" means an unregistered trade mark or other sign used continuously in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of

(a) the use of the first - mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or

(b) the registration of the first mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that its use in that locality is protected by virtue of any law (in particular the law of passing off).

42. As Mr Chacksfield points out, the earlier right does not need to be enforceable as against the Defendant provided it is enforceable against a third party. I have no doubt that at the time when the Defendant repossessed the Chapel of Rest at the end of February 2001 and started his present funeral business the Claimant could have prevented a third party from trading under the name Richard T. Adlem Funeral Director. Furthermore the Claimant as successors in title to the business sold by Mr Adlem to Mr Beckwith in 1993 have the earlier right to use the name in question for funeral services.

The Claimant's right (as successors in title) to trade under the name Richard T Adlem derives from 1965 as a consequence of the purchase of the goodwill in the Defendant's funeral services business in 1993.

43. As of 1994 Mr Adlem had no right to be engaged in a funeral service business for 5 years within a radius of 10 miles of the Chapel of Rest and in fact did not commence trading himself as a funeral director (as opposed to assisting Mr Beckwith and the Claimant respectively) until March or April 2001.

It follows that the Claimant's use of the trade mark "Richard T. Adlem Funeral Director" as a business name for funeral and/or undertaking services (but not memorial services) does not infringe the Defendant's Trade Mark and the Claimant is entitled to a declaration to that effect.

Conclusions

45. (1) As the name "Richard T. Adlem Funeral Director" in

connection with a funeral services business at the relevant time did not exclusively relate to either the Claimant or the Defendant, the result is that both parties are entitled to use it.

(2) However the manner in which it is used by both parties is something which should be looked into. I have already pointed out the offending parts of the Defendant's advertisements. Likewise it is clear that the Claimant's advertisements have equally been misleading. In particular the references to Chapel of Rest with the address of7B Town Farm Workshop is clearly incorrect as no such Chapel of Rest exists there.

Furthermore the Claimant's use of the words "Richard T. Adlem is owned by I. N. Newman Ltd" is not accurate. There are in fact two funeral businesses trading under the name "Richard T. Adlem Funeral Director(s)"

(3) By way of illustration the following would in my view help to distinguish one business from the other:

(1) In the case of the Claimant, prominent reference to Newmans Ltd. For example

I. N. NEWMAN LTD (NEWMAN'S)

t/a Richard T. Adlem Funeral Director

Tel No. 01725 552309

7B TOWN FARM WORKSHOP, DEAN LANE,

SIXPENNY HANDLEY, DORSET

In other words the name Richard T. Adlem Funeral Director should bear less prominence to or certainly no more prominence than Newman's own name and the advertisement should indicate that it is Newmans that are trading as Richard. T Adlem Funeral Director.

(2) In the case of the Defendant, omit all reference to "The original", "The original and only", "Established 1965", "Established 35 years". For example

RICHARD T. ADLEM

FUNERAL DIRECTOR and

MONUMENTAL MASON

Tel No. 01725 552496

PARK COTTAGE, SIXPENNY HANDLEY, SALISBURY

or

RICHARD T. ADLEM

FUNERAL DIRECTOR

Including Chapel of Rest at

PARK COTTAGE, SIXPENNY HANDLEY, SALISBURY

Tel No. 01725 552496

Note 1   Beckwith W/S paras 10 and 11; XX Day 1/90-91    [Back]

Note 2   Beckwith X Day 2/19-21    [Back]

Note 3   Beckwith Day 1/93-95    [Back]

Note 4   Newman W/S para 20; XX Day 2/89     [Back]

Note 5   Adlem W/S para 37; X Day 4/17-18; XX Day 4/117-118    [Back]

Note 6   Calver W/S paras 22 and 23; X Day 3/13-19    [Back]

Note 7   Bundle 3/1026-1064    [Back]

Note 8   Bundle 3/l175-1185    [Back]

Note 9   Bundle 3/1168-1170    [Back]