A GRAVE DECISION FROM THE COURT OF APPEAL

Today the Court of Appeal has decided IN Newman v Adlem. Mr Adlem built up a business as a funeral director and, as part of that business, built a Chapel of Rest. He also provided headstones, plaques and other memorial services. In 1993 he sold the undertaker's business (including the goodwill) but retained the headstone business. Adlem re-commenced his business under the name Richard T Adlem and started advertising under that name, as well as objecting to the use of the name by Newman. Adlem also registered his name as a trade mark for gravestone and monumnetal masonry services.

The Court of Appeal found there to have been passing off. Even though Adlem continued to work for Newman on a consultancy basis, there was no shared goodwill in the Adlem name. Adlem's advertising constitued a misrepresentation since, in promoting himself as the original Adlem, he ignored the fact that he had sold the goodwill and wrongly suggested that Newman was a usurper. The disclaimers he used were insufficient since they were small and came at the end of the advertisements.

The fact that Adlem had gone so far in his advertising, falsely suggesting that Newman was a usurper and probably destroying the goodwill he had sold meant there was no room for an own-name defence. The own name defence is very limited since people can choose other names to trade under or can use their own names as the proprietor of a business run under a different trade mark.

For the most part, the successful passing off action meant that the trade marks points were not considered.

The IPKat says that this case is significant because it clearly recognises an own name defence to passing off, even if it is a very limited one.