Naval and Military Club and In & Out Limited v In and Out Hotel Limited
| Case Outcome | Applicant successful |
| Respondent | In and Out Hotel Limited |
| Date | 04 March 2019 |
| Registration Number | 10226033 |
| Court | Company Names Tribunal (EW) |
| Administrative Decision Number | O/121/19,10226033 |
In the matter of application No. 1451
For a change of company name of registration No. 10226033
Introduction1. The company name In and Out Hotel Limited (‘the primary respondent’) has been registered since 10th June 2016 under number 10226033. On 31st May 2017, Naval and Military Club and In & Out Limited (“the applicants”) filed an application under section 69(1) of the Companies Act 2006 (“the Act”) for an order changing the name of the company. The applicants’ grounds are that (i) they have goodwill in the names THE IN AND OUT/THE IN & OUT, and (ii) these names are the same as ‘In and Out Hotel Limited’, or sufficiently similar to mislead by suggesting a connection between the primary respondent and the applicants.
2. Mr James Adam Reuben, who is a director of the primary respondent, has been joined to the proceedings as a co-respondent in accordance with s.69(3) of the Act.
Claims3. The applicants claim that The Naval and Military Club (“Club”) is a historic London club founded in 1862. During the period 1866 to 1999, Club was located at Cambridge House in Piccadilly. Unusually for central London, Cambridge House has in and out drives. For reasons that are obvious, the gateway to one drive was marked ‘IN’ and the other gateway marked ‘OUT’. According to the applicants, this resulted in Club becoming colloquially known as “THE IN & OUT CLUB.” This name also helped to distinguish Club from The Army & Naval Club, which had a similar name.
4. Since 1993, the business of Club has been conducted by the second applicant, i.e. In & Out Limited. In 1995 and 2010, this company registered THE IN AND OUT and THE IN & OUT as trade marks covering, inter alia, “provision of temporary accommodation”, “conference and meeting facilities”, “restaurant services” and “catering and banqueting services.” The applicants claim that they own goodwill under these marks in relation to the above services, and “private members club services”, “the provision of social, sports, health club and recreational services.”
5. In 1999, Club moved out of Cambridge House to nearby premises in St James’s Square. However, it continued to be known as “THE IN & OUT CLUB.” The words ‘IN’ and ‘OUT’ adorn the columns supporting the portico entrance to Club’s current location.
6. The applicants point out that the primary respondent is owned by the Reuben family headed by the billionaire brothers, Simon and David Reuben. Their property company is the current owner of Cambridge House. The applicants claim that the respondents intend to open a hotel at the premises. According to the applicants, the use of the company name by the primary respondent is likely to cause confusion in the mind of the public.
7. The applicants say that it is inconceivable that the Reuben family, and by extension the primary respondent, were unaware of the reputation of Club when the primary respondent was incorporated under the contested name.
8. The respondents filed a Notice of Defence. The main points taken are that:
- the Reuben Brothers purchased Cambridge House at 94 Piccadilly in 2011;
- that building had been vacant since the Naval and Military Club moved to new premises in 1999;
- the building has become known as “The In and Out” or “The In and Out Club”;
- the applicants did not remove the words ‘IN’ and ‘OUT’ from the gateposts on moving out of the premises, or compel their successors to do so;
- the respondents deny that the applicants have goodwill in the name ‘THE IN AND OUT’ to the extent that this name refers to the applicants and no one else;
- the primary respondent was created as a corporate vehicle for a proposed hotel development;
- the respondents accept that the primary respondent is ultimately owned by members of the Reuben family;
- the words ‘The In and Out’ were selected to convey a connection to the building of the same name;
- the respondents deny that the use of the contested company name will cause confusion because (a) the inclusion of the word ‘Hotel’ distinguishes the name from the applicants’ name and trade marks, (b) the applicant’s run a private members club, not a hotel, and (c) the name is associated with the building at 94 Piccadilly;
- the contested name was chosen in good faith and, in any event, does not adversely affect the goodwill of the applicants
9. The applicants are represented by Hunters, solicitors. The respondents are represented by Reed Smith LLP. A hearing took place on 10th January 2019 at which Mr Hugo Cuddigan QC appeared as counsel for the applicants. Mr Benet Brandreth QC appeared as counsel for the respondents.
10. The applicants’ evidence consists of three witness statements by Mr Anthony Lee, who is the Secretary and Chief Executive of The In and Out Club, a witness statement by Mr Tim Newark, who in 2014 was commissioned to write a book about the history of Club, and a witness statement by Mr Michael Spencer, who is a Chartered Trade Mark Attorney with Bromhead Johnson, who represented the applicants before Hunters took over as the applicants’ representatives. The sole purpose of Mr Spencer’s statement is to put a copy of Mr Newark’s book into evidence. Mr Lee’s third statement was filed in reply to the respondents’ evidence.
11. The respondents’ evidence consists of a witness statement by Mr Roger Thornton. Mr Thornton is the Head of Property at Motcomb Estates Limited, which manages the property portfolio of Simon and David Reuben.
12. Mr Lee’s evidence confirms that the second applicant operates The Naval and Military Club on behalf of the first applicant. At the hearing, Mr Brandreth accepted that the applicants have established goodwill and reputation under the sign ‘In and Out’ in relation to a private members club. Consequently, it is unnecessary to go into Mr Lee’s evidence on this matter in great detail. It is, however, necessary to examine his evidence going to the issues of (i) the extent to which the public knew the club as ‘The In and Out Club’ at the time that the primary respondent was incorporated on 10th June 2016 (“the relevant date”), and (ii) the nature and extent of the business of the club.
13. According to Mr Lee, the club’s turnover is around £3.5m per annum. The food and beverage side of the business is outsourced and has a similar turnover. The club’s gym and fitness centre is also outsourced and also has a separate turnover. The club’s membership is around 50% military people and 50% civilian. The club also offers services to members of other clubs from around the world on a reciprocal basis. Mr Lee says that the club has a website – www.inandoutclub.co.uk – which is designed for members and non-members. Non-members can use its services when using the club for an event, such as a wedding or a function [footnote 1]. The club has three bookable spaces for events. These can accommodate between 85 to 180 guests. The club has other rooms which can be used for smaller dinners, luncheons or meetings. There are two bars, two restaurants, a room where afternoon tea can be taken, and a business centre.
14. According to an article in Tatler under the title ‘IN and OUT CLUB’, “The Naval and Military Club has never been known by its real name [footnote 2].” An article in The Times on 13th January 1999 recorded that the club, nicknamed ‘The In and Out Club’ after the signs on its gateposts, was to leave the premises at 94 Piccadilly after 133 years and move to new premises in St James’s Square following the owner’s decision to put the building up for sale [footnote 3].
15. The club publishes a newsletter for its members called “The In and Out Magazine”. Examples of the newsletters published between 1999 and 2017 (i.e. after the move to St James’s Square) are in evidence [footnote 4]. There are also examples in evidence of third parties using ‘The In and Out’ or ‘In and Out Club’ to identify the club well after it had moved to its new premises in 1999 [footnote 5]
16. The availability of the club as a wedding venue was publicised on the website hitched.co.uk [footnote 6]. This particular article dates from December 2017, i.e. after the relevant date. However, these services were available prior to that date [footnote 7]. The significance of this article is it shows that, at least in its role as a wedding venue, the club is regarded as a competitor to London hotels [footnote 8].
17. In his second statement, Mr Lee gives evidence that on 5th January 2018 a copy of The Gentleman’s Journal was sent by post addressed to Simon and David Reuben at Cambridge House, 4 St James’s Square, London [footnote 9]. Mr Lee says that this is evidence that the sender believed that he or she could contact the Reuben brothers at the Club’s address.
18. Mr Thornton’s evidence is that the property at 94 Piccadilly, together with a number of other adjacent properties, were purchased in 2011 by Tower Properties Management Limited and other companies controlled by Simon and David Reuben. James Reuben, the sole director of the primary respondent, is David Reuben’s son. Initially it was intended to turn the property in to high end residential use. However, in 2015 it was decided to turn it into a hotel.
19. According to Mr Thornton, the decision to name the primary respondent with the contested name was a collective decision made by James Reuben, Daniel Smith (Head of in-house architectural team), PDP (external architects) and himself. Mr Thornton describes the reasons for choosing the contested name like this.
“4. We chose the name In and Out Hotel because the Building is well known to the public at large as the “In & Out”. The words “In” and “Out” are painted in large letters on the gates outside and for decades it was identified as such. Indeed, as a result of this long period of use the Building is a London landmark known by that name rather than by its formal address (see for example, the articles exhibited at RTI 3-7, which refer to the...
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