Capita PLC v Capita Support LTD
| Case Outcome | Application Successful |
| Respondent | Capita Support LTD |
| Registration Number | 11331710 |
| Administrative Decision Number | O/707/19,11331710 |
| Court | Company Names Tribunal (EW) |
| Date | 21 November 2019 |
In the matter of application No. 1784 by Capita PLC
For a change of the company name of registration No 11331710
Background, claims and defences-
Company no. 11331710 (“the primary respondent”) was incorporated on 26 April 2018 with the name CAPITA SUPPORT LTD. This name has caused Capita Plc (“the applicant”) to make an application to this Tribunal, on 2 July 2018, under section 69 of the Companies Act 2006 (“the Act”).
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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. In its Form CNA1 (the claim form), the applicant requested that Mr Nicholas Athanasiou, the primary respondent’s sole director, be joined to the proceedings under the provisions of section 69(3) of the Act. Mr Athanasiou was given notice of this request and an opportunity to comment or to object. The Tribunal received no comments or objections and Mr Athanasiou was joined to the proceedings as a co-respondent on 7 September 2018.
4. In its claim, the applicant 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 and professional services across a broad range of sectors. It states that there are 88 entities that are part of its corporate group. It states that it has a turnover of £4.23 billion and that 90% of this is derived by its companies that use the CAPITA name. It explains that it objects to the respondent’s name because it is identical or, highly similar to, its registered trade mark CAPITA. It states that the company name is sufficiently similar, such that its use in the UK would be likely to mislead by suggesting a connection between it and the applicant.
5. The applicant states that it is claiming costs and that it sent a letter to the primary respondent on 9 May 2018 requesting that it agree an undertaking to take steps to change its name to avoid confusion. It adds that Mr Athanasiou responded on 21 May 2018 rejecting this request. The response is attached to the claim form in which the primary respondent states that the businesses can be differentiated by way of branding and the fact that one is a large multi-national, the other an SME; it is, though, added that the company could be sold to the applicant if it still has serious concerns.
6. The primary respondent filed a notice of defence, which consists of a denial of the grounds on which the application is based and requiring the applicant to prove its allegations. It also requests its costs. The primary respondent relies on three of the defences under section 69(4) of the Act, namely:
- 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
- that the name was adopted in good faith
- that the interests of the applicant are not adversely affected to any significant extent
7. We note the following reasons made in the notice of defence in relation to the applicant’s interests not being adversely affected to any significant extent:
- that the core business activities of the applicant (business process management and outsourcing) are very different from the primary respondent (procurement services and related support)
- that the primary respondent only operates on a business to business basis and that any such business customer, undertaking the slightest amount of due diligence, will immediately ascertain that there is no link with the applicant
- none of the names within the Capita group contain the word “support” in their title; it was therefore freely available and the applicant could have acquired it prior to the primary respondent being incorporated
- that the applicant has provided no evidence showing it would suffer, or is suffering, any severe loss of goodwill or reputation
8. We note the following reason made in the notice of defence in relation to the primary respondent’s name being adopted in good faith:
- the primary respondent was adopted in good faith in the ordinary course of a company formation. It does not believe that there is any confusion for reasons largely rehearsed in response to the applicant’s letter requesting an undertaking to change its name
9. Finally, we note the additional comment that the applicant has been advised that the respondent’s name is available for sale, an option it has chosen not to explore to date.
10. In these proceedings, the applicant is represented by Irwin Mitchell LLP whereas the primary respondent and co-respondent represent themselves. The parties were asked if they wished for a decision to be made following a hearing or from the papers. Neither side chose to be heard or 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.
Evidence11. We do not propose to provide a stand-alone summary of the evidence. We will instead refer to it when it is relevant to the determinations required of us. For the record, the following is provided:
- by the applicant – the only material provided in addition to its statement of case is a witness statement from Francesca Ann Todd, the applicant’s company secretary
- by the respondents – beyond its notice of defence (summarised above), no further evidence was filed. Although not counting as evidence, we note that in a letter dated 18 January 2019, in response to a comment in the applicant’s evidence in which an allegation of bad faith is made (on the basis that it was chosen to trade off the applicant’s reputation and force it into purchasing the company), it is stated that this is simply not the case. It states that it would have been remiss not to consider offers from third parties to buy the company, that it has not actively encouraged the applicant to purchase, and that it is prepared to sign an undertaking that it will never sell the company to the applicant
12. If the primary respondent defends the application, as here, the applicant must establish that it has goodwill or reputation in relation to a name that is the same, or sufficiently similar, to that of the company name suggesting a connection between the company and the applicant. If this burden is fulfilled, it is then necessary to consider if the primary respondent can rely upon any of the defences under section 69(4) of the Act.
13. The applicant must first show that it had a goodwill or reputation associated with the name relied upon i.e. CAPITA. The relevant date to consider is the date on which the allegedly offending company name was incorporated, which, in this case, was 26 April 2018.
Goodwill14. Section 69(7) of the Act defines goodwill as a “reputation of any description”. Consequently, in the terms of the Act it is not limited (but can include) Lord Macnaghten’s classic definition in IRC v Muller & Co’s Margerine Ltd [1901] AC 217:
“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom. It is the one thing which distinguishes an old-established business from a new business at its first start.”
15. This is where the applicant’s evidence, from Ms Todd, is particularly pertinent. Her witness statement is dated 6 November 2018, and we note the following:
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