Claim No: IP-2023-000087 - [2024] EWHC 2947 (IPEC)

Goodwill has been described as “the attractive force which brings in custom”: Inland Revenue Commissioners v Muller & Co’s Margarine [1901] AC 217 (HL) per Lord Macnaghten at 223. There is no doubt in my mind that Ms Thurgood’s business had established goodwill in the Territory in WASH WIGGLE & WAG in the time between purchase of the van on 3 July 2018 and Ms Laight’s departure from the business on 22 May 2020. Ms Thurgood’s business had used WASH WIGGLE & WAG in the ways I have set out in paragraph 28 above. Those uses were in trade. They were uses of a sign which was not descriptive of the services being offered. The sign was used to indicate the source of the services being offered by the business and customers would have seen it as such. On the evidence before me, that use gave rise to goodwill in WASH WIGGLE & WAG which I find to have been exclusively associated with Ms Thurgood’s business.

The van was used throughout this period, coming into contact, as I have noted above, with existing customers, but also serving a general advertising function when driven around the area and parked in high traffic areas. The photographs of the van clearly show the WASH WIGGLE & WAG sign. The van did not include any reference to SCRUFFY2FLUFFY.

The WASH WIGGLE & WAG sign was also used in advertising, and on Facebook and Instagram. In relation to Facebook and Instagram, the examples I saw in the evidence also included the SCRUFFY2FLUFFY sign, but, in my judgment, that does not matter. A business can use multiple trade marks to promote its goods and services, and many businesses do. The use of SCRUFFY2FLUFFY does not demote the customer’s perception of WASH WIGGLE & WAG to a descriptive term. In my judgment, WASH WIGGLE & WAG continued to create goodwill, even when used with other signs.

With the partnership point no longer pressed, the goodwill which I have found to have existed by the time of Ms Laight’s resignation must have belonged to Ms Thurgood – she was the owner of the business trading under WASH WIGGLE & WAG. The goodwill did not belong to Ms Laight, who was grooming within Ms Thurgood’s business: the goodwill her grooms generated was Ms Thurgood’s not Ms Laight’s. It follows that I reject Ms Laight’s case on goodwill. In summary, there was ample usage to create goodwill within the Territory – particularly the van, the advertisements and the social media pages. The number of customers of the business expanded rapidly, from very few to 700 repeat customers. 2,600 grooms were undertaken. The figures speak for themselves – there was sufficient use to create goodwill, as the repeat customers demonstrate. I also reject Ms Laight’s submission that Ms Thurgood traded under other names such that customers would not recognise the business as WASH WIGGLE & WAG. I accept that Ms Thurgood had initially been trading as SCRUFFY2FLUFFY, and continued to use that sign, particularly on Facebook and Instagram. But SCRUFFY2FLUFFY was not used on the van, or in the advertisements placed in local newspapers. I do not consider that the concomitant use of SCRUFFY2FLUFFY on some public facing materials limits the goodwill acquired in WASH WIGGLE & WAG. The mark DOGGY STYLE was only used before Ms Laight started working for the business. I also reject Ms Laight’s submission that the goodwill attached to her as a dog groomer rather than to the business for which she groomed. There was uncontested evidence before me that dog grooming businesses often employ dog groomers, either as employees or as independent contractors. Whilst Ms Laight said that customers knew her, and not the business, I do not accept that submission. Customers were clearly aware of the WASH WIGGLE & WAG name, and that Ms Laight was not the proprietor of the business. Whilst there was clearly some personal loyalty to Ms Laight, and positive reviews of her grooming services, that does not detract from the legal position that the goodwill generated was the goodwill of the business, not Ms Laight’s personally.

I am therefore completely satisfied that Ms Thurgood owned goodwill in WASH WIGGLE & WAG in relation to dog grooming within the Territory.

I am also satisfied that Ms Laight’s adoption of WASH WIGGLE & WAG as the name for her own business grooming dogs in the Territory constituted (and constitutes) a misrepresentation. The sign used by Ms Laight is identical to that used by Ms Thurgood. It is used for identical services (dog grooming). It is used in relation to the same customers in the same Territory. Customers cannot have thought anything other than that there was a connection in the course of trade between the services offered by the Defendants and the services offered by Ms Thurgood’s business. In a passing off case, it is not necessary to bring before the court an example of a witness on whom the misrepresentation has been effective. In this case, the misrepresentation is clear.

I am also satisfied that the Defendants’ misrepresentation caused damage to Ms Thurgood’s business. I do not for a moment accept on the evidence before me that Ms Thurgood’s business collapsed because of poor customer service, either from alleged injury to a dog or from the way customers’ bookings were taken. There was simply no evidence before me that these issues were difficulties for the business. There was clear evidence that Ms Laight had diverted customers from Ms Thurgood’s business to Ms Laight’s business – this damaged Ms Thurgood’s business. Customer numbers fell dramatically. The level of the damage is potentially a matter for another day, so I will say no more about it. But I am completely satisfied that there was sufficient damage for the tort of passing off to be made out.

It follows that I find for Ms Thurgood: her claim for passing off against the Defendants has been established.