Case No. EWHC-964-(IPEC)

14.I will deal first with Ian’s claim that Winston’s use of the Luv Injection name amounts to passing off. This was based on Ian’s claim to be the owner of the goodwill in the name Luv Injection. In this regard, it is worth saying something of the relevant law as explained by Laddie J in Saxon Trade mark: Byford v Oliver [2003] EWHC 295.15.Saxon was a dispute between former members of the heavy metal band of that name. Mr Byford, Mr Dawson and Mr Oliver had played under the name Saxon from the late 1970s until 1985, when Mr Dawson left and was replaced by another musician. Later, in 1995, Mr Oliver left and he too was replaced by another musician. On both occasions, the remaining members (including Mr Byford) continued to perform under the Saxon name. Later, however, Mr Dawson and Mr Oliver were registered as proprietors of Saxon as a trade mark. The issue before Laddie J was Mr Byford’s appeal in his application to invalidate that registration. In his judgment, Laddie J. made a number of points which are of importance in cases like the present. 16.First, Laddie J found that, on the facts in Saxon, the three individuals had operated as a partnership at will. As such, whilst they all had an interest in the partnership assets (which included the goodwill in the name Saxon), it was the partnership that owned those assets. The partners’ right, when the partnership was dissolved (which, Laddie J found, had been on the departure of Mr Dawson in 1985), was to ask for the partnership assets to be realised and divided up between them (see at [19]). 17.Secondly, Laddie J considered how the law would operate where, after a band operating as a partnership had split up, another band started performing under the same name. He explained that the second band would not thereby acquire the goodwill that the first band already had in that name. Rather, the second band might acquire its own separate goodwill in the name. However, unless the first band had somehow abandoned its goodwill or acquiesced in the activities of the second band, the second band was always liable to be sued in passing off by or on behalf of the partners in the first band (see at [25]).18.Third, Laddie J pointed out that the position was no different where some (even a majority) of the members of the first band had become members of the second band (see at [26]).19.This is all highly relevant to the present case. It explains why (despite whatever claims may have been made in the past), it is now common ground (a) that the members of Luv Injection 1 had operated as a partnership at will, (b) that that partnership had been dissolved when the split occurred in October 2016 and (c) that, as at that date, the goodwill in the name Luv Injection was owned by the partners of Luv Injection 1. This is all consistent with Saxon.20.The evidence shows that, after the split, Luv Injection 3 (Winston’s new group) was the first group to start performing using the Luv Injection name. As a result, it was vulnerable to being sued by the partners of Luv Injection 1. However, it was not vulnerable to being sued by the partners of Luv Injection 2 (Ian’s new group) for the simple reason that Luv Injection 2 was not then in existence. On this basis, as at the relevant date (when Luv Injection 3 started using the Luv Injection name), the Luv Injection 2 had no protectable goodwill in the name and there could have been no misrepresentation that Luv Injection 3 was in any way connected to Luv Injection 2.21.On this basis, as is accepted by Mr Wood, any action against Luv Injection 3 must be based on the goodwill of Luv Injection 1. It is for this reason that Ian claims that he has “appropriated” that goodwill. As that word suggests, the case that Mr Wood puts forward on behalf of Ian is not that there has been any transfer from the Luv Injection 1 partnership to Ian. Instead, he argues that the issue as to where goodwill lies is an issue of fact and that, as a matter of fact, Ian (and Billy) were and always had been the public face of Luv Injection (its front of house). On this basis, he argues that by continuing to perform as Luv Injection, the goodwill simply attached itself to them. Effectively, they had appropriated it. In my judgment, there is absolutely no substance in this argument and, for the reasons set out below, I have no hesitation in rejecting it. 22.It is rightly common ground that, as a matter of fact, the goodwill of Luv Injection 1 had been owned by the partners of Luv Injection 1, including Winston. Mr Wood’s point that Ian was “one of the front men for more than 30 years alongside [Billy] and Mr Little” is therefore irrelevant. The goodwill in the name accrued to and, as at October 2016, was owned by the Luv Injection 1 partnership. This has been conclusively determined in the earlier phases of the litigation between the parties. 23.Ian’s claim must, therefore, rest on the fact that Ian and Billy were still front of house when they started performing as Luv Injection 2. However, as is clear from the analysis of Laddie J summarised above, whilst that might be relevant to who (as a matter of fact) owned the goodwill in Luv Injection 2, it would not and could not affect the ownership of the already existing goodwill in Luv Injection 1.24.I cannot see how the fact that Ian and Billy performed as front of house in Luv Injection 2 could possibly be said to have resulted in goodwill actually owned by the partners of Luv Injection 1 becoming vested instead in Ian, or in Ian and Billy, or in the members of Luv Injection 2. Mr Wood’s case was that the goodwill (i.e. a form of property) had been appropriated. However, where property is owned by someone, another person cannot generally acquire title to that property simply by appropriating it. Generally, there would have to be some form of transfer by the owner to that other person either by way of an agreement or by operation of law. The position is no different where the property is goodwill and where the owner is a partnership and the other person is one of the partners. It seems to me that Mr Wood’s submissions are akin to saying that if you take someone’s car and use it in such a way that third parties believe that it is your car, then there has been a transfer of ownership to you from the real owner. Outside the area of adverse possession in relation to real property and in the absence of abandonment of property by the former owner, I am not aware of any principle of law which would have this result. 25.Mr Wood argued that appropriation or even, he said, misappropriation was a means by which goodwill could pass without a formal transfer and he suggested that this was the very basis for an action in passing off. It seems to me that this is completely misconceived. The action for passing off is intended to prevent a defendant causing damage to another person’s property (the goodwill) by means of a misrepresentation. I cannot see any basis on which it can be said to have led to a transfer of that very property.26.On the issue of abandonment, there was a suggestion in Ian’s pleadings that Winston had somehow abandoned his interest in the goodwill owned by Luv Injection 1 by not actively seeking to realise his share in the assets of that partnership (see paragraph 7 of the Re-Amended Particulars of Claim and paragraph 10 of the Reply). If this was an argument relied on by Ian (and, to be fair, it was not something that Mr Wood referred to in his submissions), then I reject it.27.Whilst in Saxon (at [27]-[28]) it was held that Mr Dawson had abandoned any interest that he had had in the goodwill in the Saxon name, that was because more than 12 years had passed since he had left the group and during that time he had done nothing to suggest that he had any interest in the name. In contrast, in the present case, Winston had continued using the name after the split and without any break. Indeed, before the Court of Appeal handed down its judgment, it was Winston’s case that he was the sole owner of the name. He may have been wrong in that, but it makes it difficult to argue that he intended to abandon such rights as he did have in the name. I was not taken to any evidence that Winston had ever said or done anything to suggest that he intended such an abandonment. 28.On his basis, I have no hesitation in rejecting Ian’s passing off claim based on Winston’s use of the Luv Injection name since the split.