Bignell v Just Employment Law Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 02 October 2007 |
| Neutral Citation | [2007] EWHC 2203 (Ch) |
| Docket Number | HC07CO0534 |
| Court | Chancery Division |
| Date | 02 October 2007 |
[2007] EWHC 2203 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Robert Englehart Qc
(sitting As A Deputy Judge Of The Chancery Division)
HC07CO0534
Mark Engelman (instructed by the Claimant) for the Claimant
Alastair Wilson QC (instructed by Davenport Lyons) for the Defendant
HTML VERSION OF JUDGMENT
INTRODUCTION
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.
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
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.
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.
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.
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
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.
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.
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
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.
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”.
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...
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