Capita Plc v Capita Interiors Limited
| Case Outcome | Respondent successful |
| Respondent | Capita Interiors Limited |
| Date | 22 September 2018 |
| Registration Number | 10642868 |
| Court | Company Names Tribunal (EW) |
| Administrative Decision Number | O/605/18,10642868 |
In the matter of application No. 1410
For a change of company name of registration No. 10642868
IntroductionThe company name CAPITA INTERIORS LIMITED (‘the primary respondent’) has been registered since 28 February 2017 under number 10642868. On 4 April 2017 (‘the relevant date’), Capita Plc (‘the applicant’) filed an application for an order to be issued changing the name of the company. This is on the basis that the applicant claims to have a protectable goodwill in the name CAPITA and that the respective names are sufficiently similar to CAPITA for the use of the primary respondent’s name in the UK to be likely to mislead by suggesting a connection between the company and the applicant.
ClaimsAt the request of the applicant, Mr Hitesh Hirji Gami, the sole director of the primary respondent, was joined to the proceedings under section 69(3) of the Companies Act 2006 (‘the Act’). Mr Gami was given notice of the applicant’s request for him to be joined and was given an opportunity to comment or to object to the request. Mr Gami did not object to being joined and confirmation of this was sent to him on 12 July 2017.
The applicant claims that the name associated with it is CAPITA. It is the parent group for 116 entities which use the name CAPITA as part of their company name. It claims that it has a vast reputation and goodwill in this name which has been used extensively in relation to business process outsourcing and professional services across a range of sectors, including central and local government, insurance, financial services, transport, education, health, ICT, HR and property. The applicant is the UK’s leading outsourcing company, employing over 68,000 people. In 2013, turnover amounted to £3.851 billion, with a pre-tax profit of £475 million. Over 98% of turnover is generated by companies and operations which use the CAPITA name. The applicant is listed on the London Stock Exchange and is a FTSE 100 company.
The applicant objects to the company name CAPITA INTERIORS LIMITED because it claims that it is sufficiently similar to CAPITA and its use in the UK is likely to mislead by suggesting a connection between the company and the applicant. This is a pleading under section 69(1)(b) of the Act. The applicant requests the Tribunal to make an order under section 73 of the Act for the name to be changed to a name which does not offend[footnote 1].
The primary respondent filed a notice of defence and a counterstatement which were completed by Mr Gami. The primary respondent denies all of the allegations made and stated that ‘We are quite simply, an interior design company providing bathrooms and kitchens and wardrobes’. It also stated that it is not seeking an award of costs in its favour and that he had contacted the applicant to resolve this matter amicably. This is a comment he has repeated throughout these proceedings and that his efforts for resolution have been unsuccessful with the applicant largely ignoring his correspondence.
The primary respondent seeks to rely upon various defences. In its words these are summarised as follows:
-
Our company is operating under the name of Capita Interiors Ltd. We got authorisation three times from Companies house to do this even after we showed them Capita’s PLC’s letters…
-
Our company name was adopted in good faith and does not inhibit the applicant in any shape or form whatsoever. As a result of Point 1 above being confirmed by Companies House 3 times we started to trade and have been trading for 4 plus months. No client of Capita PLC has ever got confused and contacted our company in error.
-
The interest of the applicant is in no way adversely affected to any significant extent or whatsoever. It is blatantly clear that we are a kitchen and bedroom interior design company providing the same to our clients.
-
We don’t need the applicant to prove that it has goodwill and reputation in the name of CAPITA. We need them to prove it has goodwill and reputation in the name of CAPITA INTERIORS LTD.’
The applicant is professionally represented by Irwin Mitchell LLP. The respondents are not represented. Both parties filed evidence. They were asked if they wished for a decision to be made following a hearing or from the papers. Neither side chose to be heard. We make this decision after having carefully read all the papers filed by both parties.
Preliminary issueMr Gami stated in his defence that the respondents don’t need the applicant to prove use of CAPITA but should prove it has goodwill in the company name in question, CAPITA INTERIORS LIMITED. The applicant’s claim is essentially that since the respondents’ company name includes the word CAPITA, which is associated with it, this is sufficient for an order for the company name to be changed.
If we are satisfied that CAPITA INTERIORS LIMITED is sufficiently similar to CAPITA for the use of the primary respondent’s name in the UK to be likely to mislead by suggesting a connection between the company and the applicant, and that the applicant has established the necessary goodwill in CAPITA then, subject to the various defences, a change of name can be ordered. Consequently, the primary respondent’s argument about the applicant having to establish goodwill under CAPITA INTERIORS LIMITED is dismissed.
For the sake of clarity, we do not consider the respondents comment at point 3 above to be an admission to goodwill in the name CAPITA solus.
The lawSection 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 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 those 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.”
EvidenceApplicant’s evidence
The applicant’s evidence consists of a witness statement from Francesca Anne Todd who is the group company secretary for the applicant. This is a position she has held since 2006. Prior to this she was the deputy company secretary. The key points from the evidence and witness statement are as follows:
- half of the applicant’s business comes from the private sector (53%) and half from the public sector (47%)
- in 2016, its turnover was £4.9 billion, with pre-tax profits of £475.3 million. These figures are corroborated by extracts from the applicant’s company accounts[footnote 2]
- over 90% of the applicant’s turnover is generated by companies and operations that use the CAPITA name as part of their company names
- the applicant sponsors many significant corporate sponsorship agreements. Exhibit 5 consists of an extract from the applicant’s website which is headed ‘Charitable support’ and states ‘In just over two years we have managed to raise more than £853,000 for The Prince’s Trust’
- exhibit 6 comprises a list of some 10 awards that it has won in the past five years (i.e. up until 2017). These include ‘Corporate Advisor Firm of the Year’ Award 2017 and ‘Re Housing Design Custom Build Award 2017’ and ‘Re Housing Design Award 2017’
- the applicant also details correspondence between them and the primary respondent. We do not consider it necessary to set out in detail the correspondence here since it is not material to the...
To continue reading
Request your trial