What's it about?

The Claimant Asian Business Publications Limited claimed passing off against British Asian Achievers Awards Limited (the Defendants) for using the name "British Asian Achievers Awards" in relation to awards events. The Claimant had used the name "Asian Achievers Awards" for an annual event since 2000. The Defendants started their own event in 2016, using the name "British Asian Achievers Awards".

The Claimant brought a passing off action against the Defendants. The parties had both applied for trade marks relating to their event names, which were in dispute at the Trade marks Registry, but the registrations were not relied on in the passing off proceedings.

The Court had to decide whether (1) the Claimant owned suitable goodwill in its name Asian Achievers Awards, (2) there was a misrepresentation by the Defendants that their event was associated in the course of trade with the Claimant, or was in some way authorised by the Claimant, and (3) the Claimant had suffered or was likely to suffer consequential loss and/or damage.

By the time of the trial, the Defendants had admitted both the existence of actionable goodwill (issue 1) and that there was a likelihood of damage (issue 3). Accordingly the only issue to be tried was issue 2, i.e. whether there was misrepresentation.

Why does it matter?

The case highlights the importance of having evidence of actual confusion in support of a passing off claim. An individual had received an email from the Defendants and had mistakenly thought that it had been sent to him by the Claimant, based on the use of the name ‘British Asian Achievers Awards’ in the subject line. This was despite first some information in the e-mail which could have allowed him to realise his mistake, and secondly his pre-existing knowledge of the Claimant’s event and its name. The IPEC court held that this evidence suggested that less well-informed people were even more likely to be confused by the name of the defendant’s event.

Whilst the defendants argued that the two names were sufficiently different and descriptive to avoid any misrepresentation, the court disagreed. Primarily based on the one piece of evidence of actual confusion, the court decided that the use by the Defendants of the name British Asian Achievers Award for their event amounted to a misrepresentation and that it was liable to cause and would have caused confusion. Hence it amounted to passing off and the Claimant succeeded in its claim. 

Now what?

Brand owners who want to protect their names and brands should be careful to record all instances of confusion and keep them stored carefully, in case they should be needed in the future in support of a claim for passing off. Such evidence might also be useful for showing confusion in relation to a trade mark infringement claim, should their names or brands have the protection of a registered trade mark. 

Asian Business Publications Ltd v British Asian Achievers Awards Ltd & Anr [2019] EWHC 1094 (IPEC)

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