England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		2 October 2007

INTRODUCTION

1. Mr Bignell, a solicitor practising under the business name Just Employment, seeks damages including additional damages, wide ranging injunctions and other relief for registered trade mark infringement and passing off. The Defendant Just Employment Limited, a company based in Glasgow which I shall call JEL, contends that the trade mark in question, the word mark JUST EMPLOYMENT, is essentially descriptive and never has been sufficiently distinctive to be registrable as a trade mark. It counterclaims for a declaration of invalidity under section 47 of the Trade Marks act 1994. JEL also denies that it has committed any acts of passing off or that it is threatening to do so. It acknowledges that there have been a few instances, unsurprisingly given the similarity of name, of confusion not causative of any financial loss but it puts in issue each element necessary for a successful claim in passing off.
2. This is a case in which both the respective names of the businesses and the field of activity are substantially the same. At first sight it is unsurprising that Mr Bignell is aggrieved. However, where a name consists of ordinary words of the English language, as here, the law has always adopted a cautious approach whether in relation to trade mark registration or in relation to allegations of passing off. It is essential to bear in mind the particular facts before deciding on which side of the liability line the present case falls.

MR BIGNELL AND HIS PRACTICE

3. Mr Bignell is the sole principal of a solicitor's practice conducted from an office in Guildford, Surrey. As the name of his practice suggests, he specialises in employment law. He advises clients on employment law matters and also represents them before Employment Tribunals. Mr Bignell told me that, as far as tribunal hearings were concerned, the balance of his practice was in the order of one-third representing employers and two-thirds representing employees. He represents clients either on a conventional fee basis or, not infrequently, for a conditional fee.
4. Mr Bignell qualified as a solicitor in December 1977 and established his present practice in 1997 after some 10 years working for local authorities and for the Law Society. The practice has only one office, that in Guildford. For some 15 months up to September 2006 Mr Bignell also used a service office in London. However, he told me that he closed down the London office, which he described as a "toe in the water", because it was not commercially viable. It was clear from the evidence that the great majority of Mr Bignell's clientele comes from the area in and around Guildford. Certainly, he does have clients from further afield, but they are not the norm. His paradigm client would be a Guildford based employee looking for advice or representation on employment law matters.
5. It was Mr Bignell's evidence that much the biggest source of clients for his practice was advertising in the Yellow Pages directory. Something like 50 per cent of his clients came to him as a result of a Yellow Pages advertisement, 25 per cent from recommendations, 15 per cent from his having previously acted for the client and 10 per cent from his web site. Mr Bignell advertises in the solicitors' section of the Yellow Pages under the name Just Employment but with a prefix containing multiples of the letter A. The point of that is to ensure that the advertisement appears in the directory at the beginning of the relevant section; thus it will be more likely to catch the attention of someone searching for the name of a firm of solicitors without knowing any particular names. In short, those responding to Yellow Pages advertisements would not have had any prior knowledge of Mr Bignell's practice.
6. It is fair to say that, without in any way seeking to denigrate Mr Bignell's practice, it is comparatively modest in scale. The figures in evidence demonstrate that last year the total turnover was about £300,000 with the net profit earned by Mr Bignell for the year being about £90,000. It was Mr Bignell's evidence that between 2003 and 2006 he spent some £35,000 on advertising his services and for 2007 he was intending to spend about £15,000. It is also right to note that Mr Bignell does give seminars and write articles on employment law matters from time to time and that he has attracted a degree of complimentary comments about his ability in the media. The fact remains, however, that Mr Bignell's practice, and its goodwill, is firmly Surrey based and centred in Guildford. His reputation, and it is evidently a good one, is that of a Guildford solicitor specialising in employment law.

JEL AND ITS BUSINESS

7. JEL is a Scottish company incorporated in May 2004 and based in Glasgow. It was founded by Mr Herd, a law graduate with a background in human resources. He has an undergraduate law degree from the University of Aberdeen and a Masters degree in employment law and practice from Leicester University. Mr Herd is the sole shareholder and a director, although he leaves the day to day running of the company to others, particularly Mr McRae the current managing director. JEL's business is the provision of legal advice and representation in employment matters. I was told that the bulk of its business, two thirds, comes from employers rather than employees and that it aims to provide retainer work; for a fixed annual fee it will service all a given client's employment law requirements. Thus, there is some difference in the actual way in which Mr Bignell and JEL respectively conduct their operations.
8. The general field of activity in which Mr Bignell and JEL are engaged, i.e. employment law, is the same, although the centres of operation of each of them are based far apart geographically. It is necessary to bear in mind two features when considering the field of activity. First, employment law is an unusual area of law in that legal advice may be given, and representation before employment tribunals conducted, by those who are not qualified as solicitors. The evidence demonstrated that there are several large companies, not firms of solicitors, which carry on business as providers of employment law services in a similar fashion to that of JEL. Second, it is a particular feature of employment law in England and Wales on the one hand and Scotland on the other hand that the law is, aside from a few minor procedural differences, the same. Indeed, there is a unified employment tribunal system. Thus, there would be no legal or practical obstacle to a Scottish provider of employment law services setting up in England and vice versa.
9. Although JEL is based in Glasgow, since August 2006 it has also had a small serviced office in London. However, this office is plainly very much subsidiary to the Glasgow office and only one JEL employee is situated there. She is Lucy Strahan, who is in fact qualified as an English solicitor. The main team is based at the Glasgow office where 6 other employees work - four lawyers, an office manager and an administrative assistant. JEL started up in business on 1 September 2004 with funding provided by Mr Herd. He told me that its annual turnover is now in the region of £500,000.

THE BACKGROUND TO THE DISPUTE

10. When he established what was to be a niche practice in employment law, Mr Bignell decided on the name Just Employment because it accurately reflected the specialisation which he proposed to pursue. He was also conscious, albeit very much as a subsidiary consideration, of the two different meanings of the word "just". He readily acknowledged in evidence that the name was intended to attract the custom of those who would be looking for a specialist in the field, i.e. a practitioner who did employment law and nothing else. In fact, Mr Bignell told me that he has on occasion carried out some non-employment related work for clients who had originally come to him on an employment matter, but this was not significant.
11. Mr Bignell applied to the Trade Marks Registry for registration of "JUST EMPLOYMENT" under various classes. The initial reaction of the Registry was that the mark was not registrable because of section 3(1) of the Trade Marks Act 1994 in that it consisted exclusively of words which served to designate goods and services which related to employment matters alone. This is in substance the point which JEL now take in this action. However, for reasons which, as expressed, are not easy to follow the objection was then withdrawn by letter of 9 February 2000. JUST EMPLOYMENT was subsequently registered on 15 September 2000 as a trade mark in Mr Bignell's name with effect from 21 April 1999. The registration was in respect of various goods and services under classes 16, 35, 36, 41 and 42. For the purposes of the present proceedings the relevant services for the registration under class 42 are "legal services; legal advice and consultation services; legal research and provision of such information......all relating to employment matters".
12. For his practice Mr Bignell adopted a logo which he uses on his letter heading and also, albeit with some variations, on advertisements in the Yellow Pages. Mr Bignell's logo is not registered as a trade mark. However, it assumed considerable importance in relation to the claim in passing off since Mr Engelman on behalf of Mr Bignell made it a main plank of his case that JEL had deliberately copied Mr Bignell's current logo. Indeed, he even suggested that JEL may have copied the forerunner to Mr Bignell's present logo.
13. Mr Bignell's first logo consisted of a dark circle on which was superimposed in white letters the words "Just Employment"; the circle was surrounded by a narrow white band which was in turn surrounded by a black band inside which there appeared in white letters the word "Solicitors" at the top and the words "Human Resources" at the foot. This device appeared under the heading "Just Employment" with "Solicitors and Advocates" underneath. However in 2005 Mr Bignell commissioned a new logo. This logo is a straightforward uncomplicated design as follows:



Since 2005 this logo has appeared at the top of all letters written by Mr Bignell including, as Mr Engelman emphasised, on the letter of 9 August 2005 from Mr Bignell to the Scottish Law Society to which I refer in the next paragraph. The lettering and the square between "Just" and "Employment" are, on originals of the letter heading, deep blue in colour.

14. In the summer of 2005 the existence of JEL came to the attention of Mr Bignell. Probably, its existence came to light during an internet search. Mr Bignell took no action at the time directly against JEL because, he said, he did not regard JEL as a threat. He did, however, write to the Scottish Law Society on 9 August 2005 to complain that on its web site JEL was offering services by solicitors although it was not itself a firm of solicitors; he expressed the view that this might be a breach of the [Scottish] Law Society's rules.
15. In fact, there are some differences between the Scottish and English rules for solicitors with the former being rather less strict than the latter as regards the ownership of solicitors' practices. The mere fact that solicitors were offering services without being members of a solicitors' firm did not concern the Scottish Law Society. Nevertheless, Mr Ritchie its Director (Professional Practice Department) looked at JEL's web site on receipt of Mr Bignell's complaint and in subsequent drawn out correspondence a number of different queries were raised by the Scottish Law Society as to the conformity of some aspects of JEL's marketing with the Solicitors (Scotland) Act, 1980 and Rules made under it. The correspondence is protracted, but I do not consider it necessary in this judgment to go through every twist and turn. There is no doubt that JEL was not giving the Scottish Law Society's complaints the prompt attention for which they called. For JEL the matter was handled by its former managing director, Mr McIver, who no longer works for the company. In oral evidence Mr Herd readily accepted that the correspondence did JEL little credit and that Mr McIver had been at fault in letting matters drag on.
16. It has to be said that, as Mr Engelman stressed in his submissions, Mr McIver was supplied on 31 August 2005 by Mr Ritchie with a copy of Mr Bignell's letter of complaint. That letter of complaint bore Mr Bignell's logo as its letter heading. It follows that a copy of Mr Bignell's logo would have been available to JEL to copy after 31 August 2005 if JEL had wanted to do so. Whilst JEL may have had the opportunity, the question whether it had the inclination or did in fact do so is, of course, quite another matter.
17. For completeness I should also record that subsequently Mr Bignell also complained to the Law Society of England and Wales about JEL's marketing and structure. He alleged breaches of the Solicitors Act 1974, the Solicitors Practice Rules 1990 and the Solicitors Incorporated Practice Rules 2004. But the Law Society is apparently unconcerned. It has not responded to either of the two letters which Mr Bignell sent to it.
18. I turn now to consideration of JEL's logo. Initially, JEL used a logo which consisted of a dark oval in which was written in white block letters "EMPLOYMENT LAW". Above this, and partly within and partly without the oval, the word "Just" was placed in a manuscript representation. Underneath the oval and immediately below some shading, the words "Employment Law Specialists" appeared. I do not propose to elaborate to any extent on a comparison between Mr Bignell's first logo and JEL's first logo. I regard the suggestion that JEL copied Mr Bignell's first logo as unsustainable. There is no evidence at all which would justify the suggestion, and indeed the two logos are on their own so evidently dissimilar as not even to begin to give rise to an inference of copying.
19. JEL's second and current logo is substantially different. It was produced in the summer of 2006 following some design work carried out by Mr McCallum, an outside designer. The evidence was that the old JEL logo was rather unsatisfactory, especially when reproduced on photocopies or fax cover sheets, in that the word "Just" in manuscript form was often not very visible. In consequence JEL was receiving post addressed simply to "Employment Law" or to "Employment Law Specialists". The current logo now takes the following form:



On the originals of documents on which this logo appears the border is two tone grey, the writing is blue and the line dividing the two lines of text is grey.

20. It was Mr McRae's evidence, supported by Mr McCallum, that a decision was taken to create a new logo because of the difficulty mentioned above. Mr McCallum was asked to create a new design. For that purpose he was supplied with a copy of a header which had been produced by Yellow Pages for a JEL advertisement. Mr McCallum in his oral evidence rather bridled at applying the word design to the Yellow Pages artwork. What is, however, plain from a comparison between that and the eventual JEL logo is that the concept of having the words "Just Employment Law" with the words "Employment Law Specialists" separated by a line derives from the Yellow Pages artwork. Moreover, the respective fonts for the letters, whilst not identical, also show some similarity.
21. I acknowledge that there is a degree of similarity between some of the features of Mr Bignell's current logo and the JEL current logo. The layout is not wholly dissimilar, and the feature of having the business name separated by a thin line from a description of the business itself is the same. But these are features also to be found on the Yellow Pages artwork. The similarities are in respects which are not at all unusual as design features of a relatively simple logo. Perhaps the most fancy and eye catching element of Mr Bignell's logo is the filled in square between the words "Just" and "Employment". Nothing like that is to be found on the JEL logo.
22. Mr McCrae and Mr McCallum came across as entirely honest witnesses, and I wholly accept their evidence. There was nothing which led me to doubt its truthfulness. It was consistent with the contemporary documentation. I reject the suggestion that as a matter of fact the JEL logo was deliberately copied from Mr Bignell's logo. JEL would have had the opportunity to copy if it had wanted to do so. But it was extremely difficult to discern why JEL would have wanted to do so. It was to mind not credible that JEL could have seen commercial advantage in copying Mr Bignell's logo.
23. I cannot accept that realistically JEL would ever have thought it would be advantageous to try and appropriate for itself some of a small Guildford solicitor's goodwill by deliberately passing itself off as being part of or connected with Mr Bignell's practice. Mr Engelman obviously appreciated this difficulty. What he put to Mr McCrae was that Mr McIver was responsible for changing the JEL logo by copying Mr Bignell's logo, not for commercial advantage but in order to annoy Mr Bignell. The proposition was that Mr McIver had been upset by Mr Bignell's complaint to the Scottish Law Society and was somehow trying to get his own back. There was nothing at all in the evidence to support this theory which was in my view quite fanciful.
24. I should now address what seems to have been the trigger for the institution of the present proceedings, that is a radio advertising campaign which JEL commissioned on Capital Radio. The advertisements were broadcast in November 2006 and have not been repeated. It was Mr Herd's evidence that the radio advertisements had not generated sufficient business to be financially worthwhile. There were no plans to repeat them. The script of the advertisements, which was in evidence, plainly refers to JEL's full name including the word "Law". Indeed, the advertisement makes a play around the word. The script reads as follows:

Receptionist:	Hello Just Employment Law.
Caller:	Yes could you advise me on media law?
Receptionist:	Er no sir we only.....
Caller:	(Interupts) What about laws governing croquet?
Receptionist:	I'm sorry sir we....
Caller:	The law of averages?
Receptionist:	Er.....
Caller:	Dennis Law? Newton' Law? LA Law? Murphy's Law
Receptionist:	It is just employment law sir.
Ancr:	For a fixed annual fee, your business can retain our team of experts for unlimited advice, 24 hours a day, for all your employment law needs. Budget with certainty; call us on 020 7890 3167 Just Employment Law, employment law specialists.

Mr Herd explained in his evidence that on the broadcast advertisements the telephone number given out was in fact an 0870 number routed to the Glasgow office rather than the London number given on the script.

25. In consequence of the broadcast of these JEL advertisements Mr Bignell's office received a number of inquiries from people who had heard the advertisement and contacted his office on the assumption that it was his firm's advertisement. Mr Bignell mentioned 6 such people in his evidence. Perhaps understandably, some listeners had not taken note of the telephone number given out; probably they had done an internet search in an attempt to locate the advertiser and come up with Mr Bignell's practice. There was also unchallenged written evidence from three witnesses about confusion stemming from the radio advertisements. It is noteworthy that, although some members of the public apparently seeking employment law advice had contacted Mr Bignell's office in the belief that it was his office's advertisement, there was no evidence at all of anyone ever having contacted JEL in the belief that JEL was anything to do with Mr Bignell's firm. Indeed, Mr Herd's evidence was directly to the contrary.
26. Apart from the evidence of some radio listener confusion, there was also some evidence of other confusion. On one occasion a marketing company sent an invoice to Mr Bignell's former London office for services it had in fact provided to JEL. This seems to have been as a result of a clerk performing a Google search on the internet in an attempt to find the address of a customer. On another occasion a broker called Contact Law mixed up the two businesses. They had a potential client from the Guildford area and apparently contacted Mr Bignell's office by mistake, although the fact that there had been a mistake came to light immediately upon contact being made. Mr Herd in his third witness statement also gave some other fairly inconsequential instances of people mixing up the two businesses.
27. There is no doubt that the use of business names adopting the same ordinary words coupled with the common field of activity has the potential for giving rise to mix ups. I also accept that there has in fact been some confusion, notably as a result of the radio advertising campaign. However, it must also be said that, at least thus far, there is no suggestion of any actual or potential client intending to contact Mr Bignell's office being diverted to JEL in the belief that JEL was anything to do with Mr Bignell.
28. On 22 January 2007 Mr Bignell sent JEL a formal letter before action alleging passing off and registered trade mark infringement. It is to be noted that that letter alleged deliberate passing off by copying Mr Bignell's logo, the allegation which was repeated in this action and which I have rejected. Evidently, this allegation was one which JEL found particularly distasteful. Nevertheless, there were attempts at compromise, but they failed and these proceedings were commenced. Finally, for completeness I merely mention that JEL has provided some limited and far from onerous undertakings pending trial designed to preserve the status quo, but I attach no importance to that in coming to my decision on liability in this case.

THE ISSUES

29. On the points argued before me, the issues which I have to resolve on the claim and counterclaim are as follows. I shall consider firstly the matter of trade mark infringement and then address passing off.
30. Trade Mark Infringement

Mr Alastair Wilson QC on behalf of JEL did not dispute that, if JUST EMPLOYMENT were a validly registered trade mark, JEL would inevitably have been infringing that registered trade mark by reason of the provisions of section 10 of the Trade Marks Act 1994 ("the Act"). Mr Wilson's case was that this was a mark which was not registrable in the first place under section 3(1) of the Act because it was a descriptive mark. Mr Engelman did not contend that prior to registration the mark had acquired distinctiveness through use. Moreover, Mr Wilson submitted that the invalidity of the registration could not be saved by the second half of section 47(1) of the Act because Mr Bignell's use of the mark after registration had not made it sufficiently distinctive of his goods and services for which it is registered. Broadly speaking the two issues which arise on the registered trade mark aspect of this case, both claim and counterclaim, are:

(1) Should JUST EMPLOYMENT not have been registered in the first place because, as a descriptive mark, it lacks inherent distinctiveness?

(2) Even if JUST EMPLOYMENT were a descriptive mark, has it acquired distinctiveness through use subsequent to registration?

31. Passing Off

On the passing off claim the following are in summary the issues which arise:

(1) What is the extent of Mr Bignell's reputation or goodwill under the name Just Employment?

(2) Has the use by JEL of its corporate name involved a misrepresentation to clients or potential clients that JEL's services are those of or connected with Mr Bignell?

(3) Has Mr Bignell suffered or is he likely to suffer damage by reason of an erroneous belief that JEL is or is connected with Mr Bignell?

INHERENT DISTINCTIVENESS: GENERAL

32. Section 3(l)(c) of the Act deals with descriptive marks. It provides inter alia:

(1) The following shall not be registered -

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality. ...or other characteristics of goods or services

The wording is to all intents and purposes identical to that of Article 3(1)(c) of Council Directive 89/104/EEC, the Trade Marks Directive which the Act implements, and to that of Article 7(1)(c) of Council Regulation 40/94 which established the Community trade marks system. As was common ground before me, in applying section 3(1)(c) of the Act I have to apply the principles set out in the relevant European jurisprudence concerning descriptive marks. There is a consistent theme running through this jurisprudence that purely descriptive marks are for policy reasons not registrable.

33. A trade mark is, of course, a sign of the origin of goods or services. The principle is that a monopoly should not be given for words which are descriptive of the characteristics of goods or services supplied. Such marks are not inherently distinctive of the user's goods or services and, as a matter of policy, should be available for all to use. In Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2006] Ch 1, the POSTKANTOOR case, the ECJ explained the policy at [54] - [56]:

54 As the court has already held (the Windsurfing Chiemsee case [2000] Ch 523, 551, para 25; Linde AG v Deutsches Patent- und Markenamt (Joined Cases C-53-55/01) [2003] ECR I-3161, 3202, para 73, and Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01) [2004] Ch 83, 91, para 52), article 3(1)(c) of the Directive pursues an aim which is in the public interest, namely, that such signs or indications may be freely used by all. Article 3(l)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

55 That public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods. Therefore, marks consisting exclusively of such signs or indications are not eligible for registration unless article 3(3) of the Directive applies. 56 In those circumstances, the competent authority must, under article 3(l)(c) of the Directive, determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future: see to that effect the Windsurfing Chiemsee case, para 31. If, at the end of that assessment, the competent authority reaches the conclusion that that is the case, it must refuse, on the basis of that provision, to register the mark.

THE EUROPEAN JURISPRUDENCE ON DESCRIPTIVE MARKS

34. Both Mr Wilson and Mr Engelman took me through the European jurisprudence. The starting point is perhaps the well known BABY-DRY case, Procter & Gamble v OHIM [2002] Ch 82 where the European Court of Justice ("ECJ") reversed a Court of First Instance ("CFI") decision that BABY-DRY was not registrable as a mark for babies' nappies. As is apparent from the commentary in Kerly's Law of Trade Marks and Trade Names (14^th ed) at [8-083] - [8-090] the decision caused some surprise within the profession. Indeed, the editors trenchantly observe at [8-083]: "It would be best if we were able simply to forget about BABY-DRY". It is, however, material to bear in mind that the mark in that case was quite different in kind from the mark in the present case. Here, the mark consists of two ordinary words of the English language which in juxtaposition also convey a meaning in ordinary language. BABY-DRY by contrast, although it conjures up allusions to the function of a nappy, is an invented fancy word. The true ratio of the decision appears from the judgment at [43] - [44]:

43.......Whilst each of the two words in the combination may form part of expressions used in everyday speech to designate the function of babies' nappies, their syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics. 44 Word combinations like "Baby-Dry" cannot therefore be regarded as exhibiting, as a whole, descriptive character; they are lexical inventions bestowing distinctive power on the mark so formed and may not be refused registration under article 7(1)(c) of Regulation No 40/9.

It seems to me that, particularly in the light of the other case law to which I shall refer, the BABY-DRY decision should in any event be viewed in the context of fancy words. Even in that context, the recent decision of the CFI in Maclean-Fogg Co v OHIM, Case T-339/05, would suggest a more restrictive approach to registration of trade marks than the BABY-DRY decision. There the CFI upheld a decision that the mark LOKTHREAD was descriptive and not registrable as a community trade mark.

35. The modern approach of the ECJ is summarised in the following passages from the ECJ judgment in OHIM v Wm Wrigley Jr Company, the DOUBLEMINT case, [2004] 1 WLR 1728:

29 Article 7(1)(c) of Regulation No 40/94 provides that trade marks which "consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service" are not to be registered.

30 Accordingly, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under article 7(3) of Regulation No 40/94.

31 By prohibiting the registration as Community trade marks of such signs and indications, article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks: see, inter alia, in relation to the identical provisions of article 3(l)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trade marks, Windsurfing Chiemsee [2000] Ch 523, 551, para 25, and Linde AG v Deutsches Patent- und Markenamt (Joined Cases C-53-55/01) [2003] ECR I-3161, 3202, para 73.

32 In order for OHIM to refuse to register a trade mark under article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.

33 In the present case, the reason given by the Court of First Instance, at para 20 of the contested judgment [2001] ECR II-417,427, for holding that the word at issue could not be refused registration under article 7(1)(c) was that signs or indications whose meaning "goes beyond the merely descriptive" were capable of being registered as Community trade marks and, at para 31 of the contested judgment, at p 430, that "that term cannot be characterised as exclusively descriptive". It thus took the view that article 7(l)(c) of Regulation No 40/94 had to be interpreted as precluding the registration of trade marks which were "exclusively descriptive" of the goods or services in respect of which registration was sought, or of their characteristics.

34 In so doing, the Court of First Instance applied a test based on whether the mark was "exclusively descriptive", which is not the test laid down by article 7(1)(c) of Regulation No 40/94.

35 It thereby failed to ascertain whether the word at issue was capable of being used by other economic operators to designate a characteristic of their goods and services.

36 It follows that it erred as to the scope of article 7(1)(c) of Regulation No 40/94.

The DOUBLEMINT case was a community trade mark case in which the ECJ allowed an appeal from a CFI decision that the mark was registrable. In Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots und Segelzugehor Walter Huber [2000] Ch 523, cited in the DOUBLEMINT judgment, the ECJ had said at [24] - [25]:

24 It should first of all be observed that article 3(l)(c) of the Directive provides that registration is to be refused in respect of descriptive marks, that is to say marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for.

25 However, article 3(1)(c) pursues an aim which is in the public interest, namely, that descriptive signs or indications relating to the categories of goods or services in respect of which registration is applied for may be freely used by all, including as collective marks or as part of complex or graphic marks. Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks.

36. Mr Engelman urged me to pay particular regard to the CELLTECH decision of the ECJ, OHIM v Celltech R&D Limited, Case C-273/05. He submitted that this reflected what he called "the current state of play" in relation to descriptive marks. The CFI, in setting aside a decision of OHIM, had held that the word CELLTECH was registrable even though it was an amalgam of two ordinary words of the English language, "cell" and "technology". The ECJ dismissed OHIM's appeal. Mr Wilson invited me to view this decision as one essentially based on a point of evidence. He drew my attention to, in particular, paragraphs 34 and 43-4 of the judgment from which it appears that the basis of the CFI decision was that the expression "cell technology" was not self-explanatory and that OHIM had not established by evidence a particular descriptive meaning in its application to the relevant goods and services. There is much to be said for Mr Wilson's point. However, it seems to me that in any event I should not regard the fact that the mark CELLTECH was registrable as entailing that the mark JUST EMPLOYMENT is also registrable. The former is, like BABY-DRY, a made up word. It is not an ordinary English expression. In my judgment a decision which is much closer to the instant case, and in which CELLTECH was also cited, is the recent decision of the CFI about the mark TWIST & POUR, The Sherwin-Williams Company v OHIM, Case T-190/05. There the CFI held that the words in question, an ordinary expression of the English language, lacked inherent distinctiveness. In particular, the Court noted at paragraph 51:

51. Therefore, as OHIM has argued, the syntactic structure of the word mark TWIST & POUR must be regarded as straightforward and normal in the English language. It follows that the construction of that sign and the bringing together of the two words by linking them by means of the typographical sign ' &' are not, as a whole, so perceptibly different from terms used in the ordinary language of the relevant public as to confer on the sign a distinctive character within the meaning of Case C383/99 P Procter & Gamble v OHIM [2001] ECR I-6251, paragraph 40).

INHERENT DISTINCTIVENESS: JUST EMPLOYMENT

37. Mr Wilson submitted that the words "Just Employment" simply meant that goods or services to which they were applied related only to employment matters or that, at the least, this was one such meaning. He posed the question: "What sort of law do you practise?" A response "just employment" would be the natural response from someone who specialised in employment law. In Mr Wilson's submission the words lack any distinctive character capable of application to anyone's goods or services in particular. They are simply descriptive of the nature of the goods or services in question and as such not registrable in accordance with section 3(1) of the Act and the European case law.
38. Mr Engelman acknowledged, of course, that marks which describe the attributes or characteristics of goods or services are not registrable. Whilst the words in question here are ordinary words of the English language, he invited me to have regard to the whole rather than each of the two words separately. In Mr Engelman's submission what took the present case out of the category of descriptive marks was the secondary meaning of the word "just" with its allusion to justice. He also noted that the word employment could be used in a variety of senses apart from referring to the relationship of employer and employee.
39. I certainly accept that what I am concerned with is the combination of the words "just" and "employment". The matter has to be tested by reference to the combination rather than each individual word of the English language making up the combination, just as the Court was concerned in the TWIST & POUR case with the significance of the words in combination. The correct approach, albeit in the context of single word marks, appears from the POSTKANTOOR judgment at [98]-[100]:

98 As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of article 3(1)(c) of the Directive. Merely bringing those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned.

99 However, such a combination may be not descriptive within the meaning of article 3(1)(c) of the Directive, if it creates an impression which is sufficiently far removed from that produced by the simple combination of those elements. In the case of a word mark, which is intended to be heard as much as to be read, that condition must be satisfied as regards both the aural and the visual impression produced by the mark.

100 Thus, a mark consisting of a word composed of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, is itself descriptive of those characteristics for the purposes of article 3(1)(c) of the Directive, unless there is a perceptible difference between the word and the mere sum of its parts: that assumes either that, because of the unusual nature of the combination in relation to the goods or services, the word creates an impression which is sufficiently far removed from that produced by the mere combination of meanings lent by the elements of which it is composed, with the result that the word is more than the sum of its parts, or that the word has become part of everyday language and has acquired its own meaning, with the result that it is now independent of its components. In the second case, it is necessary to ascertain whether a word which has acquired its own meaning is not itself descriptive for the purpose of the same provision.

40. The significance of the mark JUST EMPLOYMENT in its application to the goods and services for which the mark has been registered has to be tested by reference to the reaction of an ordinary member of the public to the words. It seems to me that quite clearly one such reaction - indeed in my view the most obvious reaction - is as Mr Wilson submitted. It is that the goods or services in question relate only to employment matters.
41. I am fortified in this conclusion by what Mr Bignell obviously intended to convey by adopting the name Just Employment. He very fairly and frankly agreed with Mr Wilson why he chose the name:

Q. And that is why you say, "we do only employment law", so that people understand that you really specialise in it, and you're not someone who dabbles in it and does anything that comes in through the door?

A. Yes, absolutely.

Q. And your name, Just Employment, is intended to give exactly the same impression, "We do Just Employment Law"?

A. Yes, absolutely.

42. One can, as Mr Engelman says, think of different possible uses of the words "just" and "employment". I have not overlooked Mr Bignell's evidence that in choosing the name he did also have in mind a double meaning of the word "just". But, Mr Engelman's submission that this is the critical point which makes the difference here cannot stand with paragraph 32 of the ECJ's judgment in the DOUBLEMINT case. It is sufficient to preclude registration if one of the possible meanings is descriptive of characteristics of the goods or services in question. In Golf USA Inc v OHIM, case T-230/05, the CFI reiterated at [30]:

....an indication must be regarded as descriptive if at least one of its possible meanings may serve to designate the goods or services concerned....

ACQUIRED DISTINCTIVENESS: THE PRINCIPLES

43. The second part of section 47(1) of the Act makes provision for cases in which a mark may not have been distinctive when registered but has become so by reason of subsequent use. It provides:

Where the trade mark was registered in breach of subsection 1(b), (c) or (d) of [section 3], it shall not be declared invalid if, in consequence of the use which has been made of it, it has acquired a distinctive character in relation to the goods or services for which it is registered.

Thus, a descriptive mark may be initially incapable of registration but subsequently become distinctive. Mr Engelman relies on this principle in the alternative to his submission that JUST EMPLOYMENT has always been a validly registered trade mark.

44. Again, it is necessary to have regard to the guidance from the European cases as to what is required in practice for the requisite degree of distinctiveness to validate the mark. The locus classicus on acquired distinctiveness is the Windsurfing case to which I have already made reference. The mark in question was CHIEMSEE, the name of a Bavarian lake. The ECJ observed at [51]-[54]:

51. In assessing the distinctive character of a mark in respect of which registration has been applied for, the following may also be taken into account: the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

52. If, on the basis of those factors, the competent authority finds that the relevant class of persons, or at least a significant proportion thereof, identifies goods as originating from a particular undertaking because of the trade mark, it must hold that the requirement for registering the mark laid down in article 3(3) of the Directive is satisfied. However, the circumstances in which that requirement may be regarded as satisfied cannot be shown to exist solely by reference to general, abstract data such as predetermined percentages.

54. In the light of the foregoing, the answer to the questions on the first sentence of article 3(3) of the Directive must be that article 3(3) is to be interpreted as meaning that (i) a trade mark acquires distinctive character following the use which has been made of it where the mark has come to identify the product in respect of which registration is applied for as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; (ii) it precludes differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings; (iii) in determining whether a trade mark has acquired distinctive character following the use which has been made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking and thus to distinguish that product from goods of other undertakings; (iv) if the competent authority finds that a significant proportion of the relevant class of persons identifies goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied......

45. The critical question is whether "a significant proportion of the relevant section of the public identifies products or services as originating from a particular undertaking because of the mark": Golf USA, sup cit, at [79]. In the present case it is common ground that the relevant section of the public is every adult since any individual, at least any adult, is a potential consumer of employment law services. This leads one to ask whether the relevant section of the public refers to the population of the whole of the United Kingdom or may only be a geographically limited part of the population.
46. As a matter of first principle I would think that one must have regard to the whole of the United Kingdom. This is because a registered trade mark confers a monopoly for the whole country. Such relevant European case law as I was referred to supports this approach. In Bovemij Verzekeringen NV v Benelux-Merkenbureau [2006] ECR I-7605 the ECJ was concerned with a mark EUROPOLIS which would not mean the same to Dutch or Flemish speakers on the one hand and French speakers on the other hand. The ECJ held that the entire relevant linguistic territory must be taken into account. It said at [23]:

......Article 3(3) of the Directive must be interpreted as

meaning that the registration of a trade mark can be allowed on the basis of that provision only if it is proven that that trade mark has acquired distinctive character through use throughout the territory of the Member State or, in the case of Benelux, throughout the part of the territory of Benelux in which there exists a ground for refusal.

To similar effect is the earlier OPTIONS case, Ford Motor Company v OHIM [2000] ECR II-1925 where the CFI held at [24] - [29]:

24 Consequently, in order to be accepted for registration, a sign must possess a distinctive character throughout the Community. That requirement, enabling consumers to distinguish the goods or services of one undertaking from those of other undertakings in accordance with Article 4 of Regulation No 40/94, is essential for that sign to be able to exercise the function of a Community trade mark in economic life.

25 The principle of the unitary character of the Community trade mark is expressly applied in Article 7(2) of Regulation No 40/94 which provides that a trade mark is not to be registered notwithstanding that the grounds of non-registrability [laid down in Article 7(1)] obtain in only part of the Community.

26 Article 7(3) of Regulation No 40/94 must be read in the light of that principle.

27 On that basis, in order to have the registration of a trade mark accepted under Article 7(3) of Regulation No 40/94, the distinctive character acquired through the use of that trade mark must be demonstrated in the substantial part of the Community where it was devoid of any such character under Article 7(1)(b), (c) and (d) of that regulation.

28 In the present case, the applicant has not disputed the lack of distinctiveness of the word OPTIONS in the French language. Nor has it claimed that the trade mark OPTIONS has been used in such a way that it has acquired a distinctive character in a substantial part of the Community, in this case in France.

29 In those circumstances, the Office cannot be criticised for having refused registration of the word OPTIONS as a Community trade mark.

It is true that this was a Community trade mark case. However, it seems to me that similar principles must also apply in the case of a national trade mark.

47. In the course of his argument Mr Engelman referred me to the majority judgments in the Court of Appeal in Registrar of Trade Marks v W&G Du Cros Ltd [1912] 1 Ch 644, a case where a trade mark applicant's use of a mark had been on London taxis. But, as Mr Wilson pointed out, the Court of Appeal's majority decision that this was sufficient use to give rise to distinctiveness was in fact reversed by the House of Lords: [1913] AC 624. It would be dangerous to place too much reliance on cases decided on different issues under different Acts of Parliament. It is obviously much more appropriate now to apply the European case law to the Act. However, so far as it goes, it seems to me that the view to which I have come also fits with the general approach of earlier domestic trade mark cases.

ACQUIRED DISTINCTIVENESS: JUST EMPLOYMENT

48. Mr Engelman submitted that Mr Bignell had built up a particular name for himself during the 8 years or so which have elapsed since the mark was registered. He would have become widely known for his specialist expertise in the particular field of employment law. To a substantial number of people the words "Just Employment" have come to mean Mr Bignell's practice. In his closing submissions Mr Engelman, on the basis of some statistics apparently gleaned by him from an ACAS website and some highly debatable assumptions, even went so far as to suggest I should find that Mr Bignell now had 15 per cent of the entire employment litigation work in this country. I would not be entitled to make such a finding on the basis of material which had not been explored in the evidence. But in any event the submission struck me as quite unreal. I refer to the factual position in relation to Mr Bignell's practice which I have described earlier in this judgment. It is simply incredible that a Guildford sole practitioner, albeit assisted by an assistant solicitor, with a total annual turnover of some £300,000 and profit of £90,000 could have captured 15 per cent of the entire United Kingdom employment litigation market.
49. Mr Wilson acknowledged that Mr Bignell had built up a certain reputation under the name Just Employment. But it was, so Mr Wilson submitted, essentially a local reputation in and around Guildford and nothing like sufficient to give rise to acquired distinctiveness for a descriptive mark.
50. I largely agree with Mr Wilson. It is perhaps somewhat unfair to limit the description of Mr Bignell's reputation just to the area in and around Guildford. But even if one extends it to Surrey and neighbouring counties, the evidence in my judgment comes nowhere justifying a claim of acquired distinctiveness for the mark. Applying the Windsurfing criteria, there was no evidence from which I could make a finding as to Mr Bignell's market share, but common sense would suggest that it is in national terms very small. I refer to the turnover and profit figures. Eight years of use is comparatively short, and use of the mark has undoubtedly been limited geographically. £35,000 spent on promotion between 2003 and 2006 is a modest sum. And there was no independent evidence from any third parties or third party organisations on which I could base a factual finding of acquired distinctiveness. In the result the claim to acquired distinctiveness cannot succeed on the facts of this case.

PASSING OFF: GENERAL

51. I can deal with the claim in passing off relatively briefly since both parties were agreed that I should apply the principles set out in the Jif Lemon case, Reckitt & Colman Products v Borden [1990] 1 WLR 491. It is only necessary to refer to the well known summary in the speech of Lord Oliver at 499D - H:

......this is not a branch of the law in which reference to other cases is of any real assistance except analogically. It has been observed more than once that the questions which arise are, in general, questions of fact. Neither the appellants nor the respondents contend that the principles of law are in any doubt. The law of passing off can be summarised in one short general proposition — no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying " get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiffs goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiffs identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.

52. Lord Oliver's observation about most passing off cases turning on their facts has in my view particular force in the present case. I do not propose to recite again the facts as I have found them earlier in this judgment. I shall consider each of the three elements which Lord Oliver mentioned by reference to the facts which I have previously described.

REPUTATION

53. As far as Mr Bignell's goodwill and reputation under the name Just Employment is concerned, I have no doubt that he has built up goodwill under that name. Equally, I have no doubt that to some people a reference to Just Employment in the context of employment lawyers would be taken as a reference to Mr Bignell's practice. On the other hand, it is important to bear in mind that goodwill is essentially local. Just as in relation to employment lawyers Just Employment might be taken in Surrey or the home counties as a reference to Mr Bignell's practice so in Glasgow I have no doubt that it would be taken as a reference to JEL. This is irrespective of the inclusion of the word "Law" in JEL's name.
54. Mr Engelman submitted that the important point here is that Mr Bignell adopted the name Just Employment before JEL did so. In my view this is of very limited significance. It fails to take account of the essentially local nature of goodwill. A trader may have a different reputation in different parts of the country, and any injunction in a successful passing off action may need to be framed so as to take geographical differences into account: Associated Newspapers v Express Newspapers [2003] FSR 51 especially at [29], [49]. The critical question is whom does the name denote, and on the present facts it seems to me that the answer is going to vary according to the place where the question is asked. The reality is that Mr Bignell and his practice have no presence, and are wholly unknown, in most parts of the country; in such parts Mr Bignell can own no goodwill in the name.

MISREPRESENTATION

55. There is no doubt that even a descriptive name may be protected by a passing off action. On the other hand, the fact that a name is descriptive may make it harder for a trader to establish that the use of that name would be taken as a reference to his business alone. Furthermore, it is well established that if a trader adopts words in common use as a business name some confusion may be expected without thereby giving rise to a liability for passing off. The leading authority is Office Cleaning Services v Westminster Window and General Cleaners (1946) 63 RPC 39 where Lord Simonds pointed out at 43:

It comes in the end, I think, to no more than this, that where a trader adopts words in common use for his trade name, some risk of confusion is inevitable. But that risk must be run unless the first user is allowed unfairly to monopolise the words. The Court will accept comparatively small differences as sufficient to avert confusion. A greater degree of discrimination may fairly be expected from the public where a trade name consists wholly or in part of words descriptive of the articles to be sold or the services to be rendered.

56. Before me Mr Engelman submitted, as I have previously described, that this was a case of deliberate deception by the copying of Mr Bignell's logo. From this he went on to pray in aid the well known line of authority to the effect that where a trader deliberately intends to pass off his goods or business as another's the Court will not be astute to find that he has failed in his intention. But, on the present facts, this line of authority does not assist. As I have already found, there was here no copying and no intent to deceive.
57. Nevertheless, Mr Engelman submitted that the mere use by JEL of its name in connection with legal services necessarily involved a misrepresentation that its business was that of, or connected with, Mr Bignell. Furthermore, he relied on the various instances of confusion which have occurred as I have previously explained.
58. For JEL, on the other hand, Mr Wilson submitted that such confusion as there had been was no more than the inevitable result of both Mr Bignell and JEL unwittingly adopting the same common descriptive words for their businesses. He drew attention to directory entries for two evidently unrelated businesses apparently offering testamentary services and respectively called "Just Wills Guildford" and "Just Wills plc". He also submitted on the evidence that the source of anything other than trivial confusion had been JEL's short lived radio advertising campaign, a campaign which on the evidence was not to be repeated.
59. There undoubtedly has been some confusion in the present case. This is unsurprising with the similarity of name and field of activity. Nevertheless, I am not persuaded that the confusion which has so far occurred is a consequence of any (implicit) misrepresentation by JEL. Those who contacted Mr Bignell after hearing JEL's radio advertisement did so not because they assumed that it was Mr Bignell advertising but because they were trying to make contact with the advertiser. There is no evidence of any client or potential client having consulted JEL in the belief that JEL was or was connected with Mr Bignell's practice. I consider that the speech of Lord Simonds in the Office Cleaning case is highly material to the present facts. The name in question is essentially descriptive. Some confusion may be expected from two such similar names. And the names are not exactly identical, although I agree with Mr Engelman that the addition of the word "Law" in JEL's name is a pretty insignificant difference.

DAMAGE

60. As I have said, there is no evidence of any diversion of business away from Mr Bignell to JEL. Nor is there any evidence of any other sort of pecuniary damage having been suffered by Mr Bignell. Doubtless mindful of this, Mr Engelman in opening the case submitted that the present was really a quia timet action. He also submitted that association with JEL could do serious damage to Mr Bignell's reputation because JEL was conducting its business in ways of which the Scottish Law Society disapproved. Mr Wilson, on the other hand, submitted that not only had no pecuniary damage been suffered but also there was no risk of any such damage particularly since the radio advertising campaign was not to be repeated. As for the supposed discreditable conduct, Mr Wilson submitted that there was no substance in any of the allegations.
61. On the evidence as it emerged in this case I agree with Mr Wilson's submissions. There certainly is no evidence of Mr Bignell having thus far suffered any damage at all from the close similarity of name. Putting to one side the radio advertising campaign, it seems to me that as things are to date JEL represents no real threat to Mr Bignell at all; Mr Bignell's initial reaction when first learning of JEL's existence was entirely understandable. Certainly, the radio advertising campaign did give rise to some confusion among listeners wishing to locate the advertiser. But I have no reason to disbelieve Mr Herd's evidence that the radio advertising campaign is not to be repeated. Any confusion other than that emanating from the advertisements was doubtless irksome, but realistically it is insignificant in terms of damage or potential damage.
62. As for the suggested discreditable, even criminal, conduct of JEL, I do not believe that there is any serious danger of harm to Mr Bignell's reputation. The Scottish Law Society has been understandably vigilant to ensure that a company such as JEL, which is not a firm of solicitors, does not break the rules governing legal practice. JEL did rather procrastinate in dealing with the Scottish Law Society's complaints, as Mr Herd frankly acknowledged in evidence. But it seems to me that, irrespective of the justification for the complaints, JEL has in fact done what it reasonably could to accommodate the Scottish Law Society's wishes. I agree with Mr Herd that it is not reasonable to expect that a company such as JEL should have to place a legend "We are not a firm of solicitors" over each page of its web site. Mr Bignell in oral evidence agreed that there now seemed to be "no legal objection" to JEL's current brochure. I also bear in mind that the Law Society of England and Wales appears to be totally uninterested in Mr Bignell's suggestion that JEL is contravening the Solicitors Act 1974 and Rules made under it. In short, I consider that, even if there were to be some confusion of identity, it would not carry with it any real risk of harm to Mr Bignell's reputation. There is no doubt that JEL is a well managed and highly reputable business. As Mr Bignell agreed in evidence, it is certainly not some "fly by night operation".

CONCLUSION

63. In my judgment the claim in passing off fails on the factual position as it now is. I would, however, wish to emphasise that nothing in my judgment should be taken as suggesting that in different factual circumstances a claim in passing off by Mr Bignell against JEL could never succeed in the future. If, for example, JEL were to open an office and solicit business in or around Guildford, one can quite see that passing off could indeed take place. Also, if there were to be some future radio advertising campaign, contrary to JEL's current intention, without JEL sufficiently distinguishing itself from Mr Bignell it is perhaps at least possible that incidents of passing off could occur. As Lord Oliver pointed out in the Jif Lemon decision, passing off cases are essentially fact sensitive.
64. In the result I find for JEL on both the claim and the counterclaim. I will, of course, hear the parties on the appropriate form of order to give effect to this judgment and on any incidental matters arising from it.