Capita Plc v Capita Gold Ltd
| Case Outcome | Applicant successful |
| Respondent | Capita Gold Ltd |
| Administrative Decision Number | 10911257,O/306/19 |
| Date | 03 June 2019 |
| Court | Company Names Tribunal (EW) |
| Registration Number | 10911257 |
In the matter of application No 1568 by Capita Plc for a change to the company name of Capita Gold Ltd, company registration no. 10911257.
1. Company no. 10911257 (“the primary respondent”) was incorporated on 11th August 2017 with the name Capita Gold Ltd (hereafter “CGL”). This name has caused Capita Plc (hereafter “CP”) (“the applicant”) to make an application to this Tribunal, on 27th September 2017, under section 69 of the Companies Act 2006 (“the Act”).
2. Section 69 of the Act states:
“(1) A person (“the applicant”) may object to a company’s registered name on the ground-
(a) that it is the same as a name associated with the applicant in which he has goodwill, or
(b) that it is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant.
(2) The objection must be made by application to a company names adjudicator (see section 70).
(3) The company concerned shall be the primary respondent to the application.
Any of its members or directors may be joined as respondents.
(4) If the ground specified in subsection (1)(a) or (b) is established, it is for the respondents to show
(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or
(b) that the company-
(i) is operating under the name, or
(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or
(iii) was formerly operating under the name and is now dormant; or
(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or
(d) that the name was adopted in good faith; or
(e) that the interests of the applicant are not adversely affected to any significant extent.
If none of these is shown, the objection shall be upheld.
(5) If the facts mentioned in subsection 4(a), (b) or (c) are established, the objection shall nevertheless be upheld if the applicant shows that the main purpose of the respondents (or any of them) in registering the name was to obtain money (or other consideration) from the applicant or prevent him from registering the name.
(6) If the objection is not upheld under subsection (4) or (5), it shall be dismissed.
(7) In this section “goodwill” includes reputation of any description.”
3. At the request of CP, CGL’s directors i.e. Partha Pratim Neogi and Suresh Chandra Pandya were joined to the proceedings under the provisions of section 69(3) of the Act. Both the aforementioned were given notice of this request and an opportunity to comment or to object. The Tribunal received no comments or objections and they were joined to the proceedings as co-respondents on 18th December 2017.
4. CP states that the name associated with it is CAPITA and that it has a vast reputation and goodwill in this regard in respect of business process outsourcing; professional and support services across a broad range of sectors including property infrastructure, real estate, construction (including oil, gas and mining) and building design and completion; insurance; financial services; transport, health and corporate/treasury; efficiency services; ICT, HR and recruitment and employment services. CP supplies its services to central government agencies, local government, education and healthcare authorities and a large number of public and private companies spanning a wide variety of fields of business. It was incorporated on 8th December 1986. It explains that it objects to CGL’s name because the name CAPITA GOLD is identical or, misleadingly similar to the Applicant’s registered trade mark CAPITA as it would mislead the public into thinking there is a connection between them. That is, that the public will presume that the services offered by CGL are endorsed by or connected with CP. This link will cause confusion on the part of the public who associate CAPITA with CP, resulting in a severe loss of reputation and goodwill in the CP’s registered rights.
5. CP indicates that it is claiming costs and states that it sent an email to CGL on 14th September 2017 requesting that CGL enter into an undertaking to take steps to change its name by 28th September 2017. CGL responded and stated that it would not change its name.
6. CGL filed a notice of defence, which consists of a denial of the grounds on which the application is based. In particular, CGL states:
- that CP have no proof they are operating in the same field as CGL;
- that CP want absolute control over the use of CAPITA (no matter the context);
- that CGL’s only interest is to acquire a Gold Mining Concession in Sierra Leone. As such, there can be no confusion.
7. CGL indicated that it was relying upon all available defences, though it is noted that one of the defences is not claimed in its entirety. This relates to the defence that CGL’s company is operating under the name, or is proposing to do so and has incurred substantial start-up cost in preparation, or was formally operating under the name but is now dormant. It is the aspects highlighted in bold which have been excluded by CGL.
8. In these proceedings, CGL represents itself. CP is represented by Irwin Mitchell LLP. Both parties filed evidence. They were asked if they wished for a decision to be made following a hearing or from the papers. Although neither side chose to be heard, CP filed written submissions in lieu of attendance at a hearing. We make this decision following careful consideration of all the papers filed by both parties.
Evidence CP’s evidence9. This consists of a witness statement, dated 12th March 2018, from Ms Francesca Anne Todd, the Group Company Secretary of CP. She explains that:
- since its incorporation in 1986, CP has grown to become the UK’s largest business outsourcing and professional services company, employing approximately 73,000 people. Its turnover is split roughly equally between the private and public sector. This turnover (in total) was £4.9 billion in 2016, with profit before tax of £475.3 million. Exhibit 1 contains extracts from Capita’s company accounts for 2016 in support
- in January 2017, CP announced a restructure into six market facing divisions: digital and software solutions, private sector partnerships, public service partnerships, professional services, asset services and IT services
- since its incorporation, CP has provided professional business outsourcing services to a wide range of organisations across a broad spectrum of private industry and public service sectors. CP has built expertise across the spectrum of common operational processes used in typical services and organisations, including customer services (for instance managing call centres and handling customer enquiries), back office processes, provision of human resources, information and communication technology, property consultancy and finance and treasury services
- according to Ms Todd, CP spends a great deal of time and money on building its reputation and goodwill and significant sums are spent on advertising and publicising the brand...
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