Capita Plc v Capitalia Private Office Limited
| Case Outcome | Application successful |
| Respondent | Capitalia Private Office Limited |
| Administrative Decision Number | 11159419,O/022/20 |
| Registration Number | 11159419 |
| Court | Company Names Tribunal (EW) |
| Date | 14 January 2020 |
In the matter of application No 1773 by CAPITA PLC for a change to the company name of CAPITALIA PRIVATE OFFICE LIMITED, company registration No 11159419
Background1. The company name CAPITALIA PRIVATE OFFICE LIMITED (‘the primary respondent’) has been registered since 19 January 2018 under number 11159419.
2. By an application filed on 14 June 2018, CAPITA PLC (‘the applicant’) applied for a change of name of this company registration under the provisions of section 69 of the Companies Act 2006 (‘the Act’).
3. 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 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.”
4. The applicant requested that the primary respondent’s sole director, Mr Anil Kumar Pitalia, be joined to the proceedings under the provisions of section 69(3) of the Act. Mr Pitalia was given notice of this request and provided with an opportunity to comment or to object. No response was received from Mr Pitalia and he was joined to the proceedings as a co-respondent on 20 August 2018.
5. The applicant claims that the name associated with it is CAPITA. The applicant was incorporated on 8 December 1986 and is the parent company of an extensive number of subsidiary entities (collectively the “Capita Group”). There are 88 entities within the Capita Group which incorporate the word CAPITA as part of their company name within the UK. It is claimed that the applicant has a vast reputation and goodwill in the name CAPITA which has been extensively used by both the applicant and the Capita Group in relation to business process management and outsourcing and professional services across a broad range of sectors including local and central government, insurance, financial services, transport, education, health, ICT, HR and property. The Capita Group is the UK’s leading provider of outsourced customer management. In 2017, the Capita Group’s turnover was £4.23 billion with a profit before tax of £400.9 million. Over 90% of the Capita Group’s turnover is generated by companies which use the Capita name. The Applicant is listed on the London Stock Exchange and is a FTSE 100 company. The Capita Group’s clients include central government departments and arm’s length bodies (including the DWP, DCSF, the Health and Safety Executive, Transport for London and Criminal Records Bureau), local authorities (including Westminster City Council and Birmingham City Council) and entities including Prudential, Zurich Financial Services, Deutsche Bank, O2, the BBC, National Rail, Driving Standards Agency, retailers such as John Lewis and M&S, the travel and transport sector and utility companies.
6. The applicant claims that the primary respondent’s company name, CAPITALIA PRIVATE OFFICE LIMITED, is sufficiently similar to CAPITA such that its use in the UK would be likely to confuse or mislead the public into thinking that the goods or services provided by the primary respondent under that name are associated with, endorsed by, or in some other way, connected with the applicant, when that is not the case. This is a pleading under section 69(1)(b) of the Act. The applicant requests that the Tribunal make an order under section 73 of the Act for the name to be changed to a name which does not offend. A request for costs is also made. The applicant states that it sent a letter to the primary respondent on 01 February 2018, requesting that it enter into undertakings to take steps to change its name by 15 February 2018. A follow up letter was sent on 13 March 2018. Mr Pitalia responded on 21 March 2018 rejecting the applicant’s request.
7. The primary respondent filed a notice of defence. The primary respondent:
- denies that its company name is highly similar to CAPITA and that use of the former would be likely to confuse or mislead the public into thinking that the goods or services provided by the primary respondent are associated with, endorsed by, or in some other way, connected with the applicant.
- puts the applicant to proof of the claimed goodwill and reputation under the name CAPITA.
- relies on the defence that its name was adopted in good faith. In this connection it states that its company is a private finance vehicle of the co-respondent and is not intended for trading to the general public. Further, the dominant and distinctive part of the name, CAPITALIA, is an amalgamation of the words CAPITAL and PITALIA, the latter being the co-respondent’s surname.
- relies on the defence that the applicant’s interests are not adversely affected to any significant extent. In this connection, it reiterates that the company is not intended to be used to trade to the general public and that the names are, in any event, very different.
- requests costs.
8. The applicant is represented by Irwin Mitchell LLP. The primary respondent is represented by Wilson Gunn. Both parties filed evidence. Neither side requested a hearing; both filed written submissions in lieu.
Applicant’s evidence in chief9. This comes from Francesca Anne Todd, the applicant’s Group Company Secretary, and is dated 28 November 2018. The main points emerging from Ms Todd’s evidence are that:
- the applicant was incorporated in 1986, and, since that time, has grown to become the UK’s largest business process outsourcing and professional services company, employing approximately 73,000 people. Its turnover is split roughly equally between the private and public sector. Its revenue (in total) was £4.17 billion in 2017, with profit before tax of £383 million. Exhibit 1 contains extracts from its company accounts for 2017 in support (exhibit FT1/1).
- the applicant owns 449 subsidiaries, 359 of which are in the UK (exhibit FT1/2-6). 88 have the word CAPITA in their names. Over 90% of the group’s turnover is generated by operations that use the name CAPITA.
- since its incorporation, the applicant has provided professional business outsourcing services to a wide range of organisations across a broad spectrum of private industry and public service sectors. It has built expertise across the spectrum of common operational processes used in typical services and organisations, including delivering and managing ICT support services, and designing and building network solutions. It is involved in other sectors including customer services, back office processes, provision of human resources, property consultancy and finance and treasury services. Ms Todd states that these services would be provided in the context of a ‘private office’. She further explains that the applicant’s expertise extends from small businesses and enterprises that are starting up to central government departments, local authorities and multinational organisations.
- the applicant currently owns 217 trade marks in the UK and EU. 15 of those contain the word CAPITA (exhibit FT 1/7-29).
- Ms Todd explains that the applicant spends a great deal of time and money building its reputation and goodwill and significant sums are spent on advertising and publicising the brand. She describes examples of advertising activities which have been undertaken (in specialist industry sector magazines and newspapers) but provides no corroborative evidence in support.
- the applicant has been involved in “work in the community”, working in partnership with...
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