A tale of passing off

The recent Intellectual Property and Enterprise Court case of Stone v Wenman [2021] EWHC 2546 (IPEC) tells a cautionary tale of passing off and should act as a useful precedent for small businesses.

In the claim, Alexandra Wenman, who was represented by Briffa throughout the proceedings, was served with a claim by Claire Stone who alleged the infringement of her UK trade mark number 3433634 for the word mark ARCHANGEL ALCHEMY, registered with effect from 3 October 2019. Ms Stone claimed that Ms Wenman’s activities in marketing and offering for sale an ARCHANGEL ALCHEMY online course was an infringement of her trade mark.

Ms Wenman’s position was that she had been using the ARCHANGEL ALCHEMY and ARCHANGEL ALCHEMIST marks since 2010 meaning that she had generated unregistered trade mark rights (goodwill) in relation to this mark and as a result of that, she was not infringing Ms Stone’s trade mark and that it was actually Ms Stone that was passing off Ms Wenman.

A case management conference was conducted by His Honour Judge Hacon on in November 2020 who ordered the list of issues and gave directions to see the claim through to trial. It became apparent that in this claim, the question of who got there first was going to determine who won or lost.

In the event Ms Wenman could satisfy the court that she had been using the ARCHANGEL ALCHEMY mark since 2010 in a manner to generate goodwill in that mark and that the activities of Ms Stone were a misrepresentation leading to deception or a likelihood of deception, then Ms Wenman would succeed in her counterclaim for passing off and Ms Stone’s trade mark would be removed from the register.

In the claim, Ms Wenman set out a number of key activities that evidenced her claim to goodwill. These activities included having a regular “Archangel Alchemy” column in Prediction magazine between 2010-2013, teaching her “Archangel Alchemy” since 2011, attending various trade shows to promote her “Archangel Alchemy” work, an online mini e-course and online course both offering “Archangel Alchemy”. Ms Wenman gave oral evidence to the court in which the court accepted the ARCHANGEL ALCHEMY and ARCHANGEL ALCHEMIST really mattered to her and that they are integral to her business.

The court accepted Ms Wenman’s position that she had been using the ARCHANGEL ALCHEMY and ARCHANGEL ALCHEMIST marks since 2010 and had generated unregistered trade mark rights in the branding. The court then found that Ms Stone’s actions were a misrepresentation leading to deception or a likelihood of deception and on that basis, because damage was admitted, Ms Stone was passing off Ms Wenman.

The court’s finding meant that Ms Stone’s trade mark was at all times invalid and is therefore not enforceable. Given this was Ms Stone’s claim against Ms Wenman, it should serve as a useful warning for any potential trade mark litigants in that a registered trade mark doesn’t always equate to a safe-to-litigate trade mark.

Written by Samuel O’Toole, Solicitor