Can using a variant of your own name still be passing off?
Passing off in the jewellery world can be a challenge - particularly where first names are used in connection with a business.
This claim was brought by Alyssa Smith Jewellery Limited, founded by Alyssa Smith, against Alisa Goodstone, who trades as Alyssa Jewellery Design.
Ms Smith has operated a business since 2009, including via the websites www.alyssa-smith.com and (later) www.alyssasmith.co.uk as well as using the Twitter handle @AlyssaJewellery. She claimed goodwill in the signs ALYSSA SMITH JEWELLERY, ALYSSA JEWELLERY and @ALYSSAJEWELLERY.
Ms Goodstone started a business called Alyssa Jewellery Design in 2012/2013, and used a logo with a heart over the letter “y”. Her websites are www.alyssajewellerydesign.com and www.alyssajewellerydesign.co.uk and she has the twitter handle @Alyssabraclelet.
After becoming aware of Ms Goodstone’s activities in 2018, Ms Smith sent a letter of claim and then issued proceedings for passing off in August 2019.
The judge reiterated the classic requirements for a passing off claim: (1) goodwill; (2) misrepresentation leading to deception or a likelihood of deception and (3) damage resulting from the misrepresentation.
Having heard evidence from both sides, she concluded that the claimant had goodwill in each of the signs before December 2012, the earliest time that the defendant started trading (the actual date was disputed).
Taking into account all the circumstances – including the use of the name Alyssa rather than the defendant’s actual name, her likely awareness of the claimant’s signs and some instances of alleged confusion, the judge concluded: “I have no doubt that the Defendant’s use of such highly similar signs to the Claimant’s Signs, in relation to essentially identical goods sold in very similar ways, amounts to a misrepresentation, and would be likely to lead to confusion and deception.”
She added that the misrepresentations will lead to damage of the likelihood of substantial damage to the claimant’s property in its goodwill.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - firstname.lastname@example.org #IP #intellectualproperty #lawyer #law #business #infringement #court #case #passingoff #iplaw #IPEC #jewellery #jewelry #brand #trademark #goodwill #socialmedia #online #ecommerce