Argyle Consulting Limited v Argyle Financial Services & Planning Limited
| Case Outcome | Respondent successful |
| Respondent | Argyle Financial Services & Planning Limited |
| Date | 25 March 2019 |
| Registration Number | SC519551 |
| Court | Company Names Tribunal (EW) |
| Administrative Decision Number | SC519551,O/153/19 |
In the matter of application No. 1537 by Argyle Consulting Limited for a change to the company name of Argyle Financial Services & Planning Limited, a company incorporated in Scotland under number SC519551
Background and pleadings1. The company name ARGYLE FINANCIAL SERVICES & PLANNING LIMITED (“the primary respondent”) has been registered since incorporation on 5 November 2015 under number SC519551.
2. By an application filed on 7 August 2017, Argyle Consulting Limited (“the applicant”) applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.
3. The applicant states that the name ARGYLE is associated with it and it is the subject of a UK registered trade mark for financial services (number 2465755). The applicant claims:
“A trade mark registration in the UK provides the owner with a monopoly in the name and the ability to prevent third parties using identical or confusingly similar names in relation to identical or confusingly similar goods or services, whether as a trade mark, company name or domain name. The provision of financial services under the company and the trading name of Argyle Financial Services & Planning Ltd, of which the only distinctive element is identical to the registered trade mark, is a confusingly similar name.”
4. We will come back to the relevance of the trade mark registration later in this decision.
5. The applicant claims that it has traded under the name ARGYLE since 1997 as independent financial advisors and has acquired a significant reputation. It is authorised and regulated by the Financial Conduct Authority. The applicant claims that it is ranked in the top 100 advisory firms in the UK and is in the top five in Scotland. It states that the primary respondent is located less than 500 yards away from the applicant’s office address and people will assume that it is a related or associated company. Such a belief could result in dilution of the name associated with the applicant, ARGYLE; damage to the applicant’s reputation if the primary respondent offers poor service or advice; and loss of customers. The applicant also claims that the registration of the contested company name enables a third party to take advantage of the applicant’s reputation. Attached to the application form is a copy of the cease and desist letter which the applicant sent to the primary respondent on 28 April 2017. We note that this letter includes the following:
“It has come to our Client’s attention that you are supplying services under the name ARGYLE and/or ARGYLE FINANCIAL SERVICES & PLANNING, that you have a business address listed in West Regent Street, Glasgow and are offering identical/similar services. As the dominant and distinctive element of ARGYLE FINANCIAL SERVICES & PLANNING is the word ARGYLE, and FINANCIAL SERVICES & PLANNING are descriptive words, this is supply of services under the identical name and therefore infringes our Client’s trade mark registration.”
6. The primary respondent filed a notice of defence and counterstatement, initially on the basis that the interests of the applicant are not adversely affected to any significant extent. Following a case management conference on 18 July 2018, the counterstatement was amended to include, in addition, a defence that the primary respondent is operating under the name, or is proposing to do so and has incurred substantial start-up costs in preparation, or was formerly operating under the name and is now dormant.
7. In its first counterstatement, the primary respondent states that the average consumer does not use its services. It states that it has a single source of customers from Creditfix Limited (a personal insolvency business). Its clients have debt issues and are in an Individual Voluntary Arrangement or Protective Trust Deed. 90% of its clients do not own their own home and rent property. The primary respondent states it only offers insurance and is not involved in mortgages, investments or pensions. Consumers do not visit the company’s premises, and the company does not have street-facing signage. It has a secured entrance on the second floor of an office townhouse, with no banners or other marketing material showing from the building. The primary respondent does not have a website and does not advertise. The primary respondent also states that Argyle is a generic name and is a modification of the area of Argyll, in Scotland. The amended counterstatement did not contain this information, although the majority of it was included in the primary respondent’s evidence, which we summarise later in this decision.
8. Sean Norris, the primary respondent’s director, was joined to the proceedings as a co-respondent. Both sides filed evidence. The applicant filed submissions in response to the amended defence. Both sides filed written submissions in lieu of a hearing, having elected to have a decision made from the papers. The applicant is represented by Murgitroyd & Company, and the primary respondent by Dallas McMillan Solicitors. We make this decision having carefully considered all the papers.
The applicant’s evidence9. The applicant has filed evidence from Eleanor Coates and Stuart Dunbar. Ms Coates is a trade mark attorney with the applicant’s professional representatives, Murgitroyd & Company. Mr Dunbar is the applicant’s Managing Director. Ms Coates’ evidence has been filed largely to explain the perceived relevance of the fact that the applicant owns a trade mark registration for ARGYLE for financial services. Section 69(1) of the Act provides that the applicant must have a reputation or goodwill in the name relied upon. Trade mark registrations may sit on the register unused. The mere fact of a trade mark registration does not prove that the requirements of section 69(1) are satisfied. We will, therefore, not summarise Ms Coates’ evidence.
10. Mr Dunbar’s witness statement is dated 19 December 2017. Mr Dunbar has been the applicant’s Managing Director for 11 years, and was one of its founding directors in 1997. Mr Dunbar states that, since 1997, the applicant has provided independent financial advice to individuals, companies, trustees and charities throughout the UK. The relevant date for proving goodwill or reputation is 5 November 2015, which is the date on which the primary respondent was incorporated with the contested company name. Some of Mr Dunbar’s evidence post-dates that date, such as Exhibit SD3 which is an extract from the financial Times Strategic Insight Poll from 2016 showing the applicant as ranked 97th out of the top 100 Financial Advisors in the UK. Exhibit SD4 comprises financial press reports about the applicant’s business from 2013, which report that the applicant has expanded its offices in Aberdeen and Glasgow to include one in Edinburgh, leading to assets under advice to more than £650 million. A similar report from June 2015 reports that that figure had risen to £745 million. The exhibits show the applicant being referred to as Argyle Consulting and as, simply, Argyle.
11 Mr Dunbar states that the applicant advertises in selected publications and sponsors Glasgow Warriors Rugby Club. It has a website and sends out quarterly newsletters. Exhibits SD5, SD6 and SD7 comprise examples of these, although we note that they are undated save for the date on which they were printed for inclusion in the applicant’s evidence. We infer that the evidence post-dates 5 November 2015.
12. Mr Dunbar highlights two occurrences which he states illustrate that confusion has happened. He states that documents for the primary respondent’s directors were sent by the Tribunal to Allan Martin (a director at the time) at his address listed on his director details for the company. The address was McLay, McAlister & McGibbon LLP, a firm of accountants. The correspondence was given to John McCormack, an associate director of the applicant by one of the accountancy firm’s partners (Exhibit SD9 refers). Mr Dunbar also describes how, on 13 November 2017, he received an email from a client querying if the applicant was associated with Credit Fix, the entity which the primary respondent had stated in its (first) defence as being its single source of customers. The email is shown at Exhibit SD10.
The primary respondent’s evidence13. The primary respondent’s evidence comes from Sean Norris, its director. He has provided a witness statement which is signed but undated. Under the rules of the Tribunal, evidence can only be filed if it is accompanied by the fee-bearing form, CNA 3.The primary respondent filed this form on 17 August 2018 and it is dated 16 August 2018. The form states that the evidence accompanying the form is a witness statement by Sean Norris, with 8 appendices. This matches the evidence before us. We will, therefore, regard the witness statement as being dated 16 August 2018.
14. Mr Norris states that he was appointed as director of the primary respondent on 20 June 2016 and that the company commenced trading in or around January 2017, having been incorporated on 5 November 2015. Mr Norris states that the company engaged the service of McLay, McAlister & McGibbon, Chartered Accountants, to assist in relation to the preparation of company accounts, payroll services and to provide support in relation to the Financial Conduct Authority (“FCA”). A copy of a letter from the accountants dated 19 July 2018 is shown as Appendix 3. The letter is addressed to the primary respondent’s representative in these proceedings and says:
“Dear Sirs,
Argyle Financial Services & Planning Ltd
We act on the company’s behalf in connection with the preparation of accounts, payroll services and provide support in Financial Conduct Authority reporting. We can confirm that the clients have been trading since January 2017.
If we can be of further assistance then please contact our Mr McCaw.”
15. Appendix 4 comprises a copy of an insurance schedule issued by...
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