Sir Robert McAlpine Ltd v Alfred McAlpine plc
Reference:  EWHC 630 (Ch);  All ER (D) 579 (Mar)
Court: Chancery Division
Judge: Mann J
Date of judgment: 31 Mar 2004
Summary: Intellectual Property- Passing off - Company names - Shared goodwill - Misrepresentation - Confusion
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Instructing Solicitors: Bird & Bird for the Claimant; Ashurst for the Defendant
The Claimant and Defendant both ran construction companies, although the Defendant’s principal activity was civil engineering. Until 2003, both had used their first names to distinguish between them (“Robert McAlpine” and “Alfred McAlpine”). In 2003, the Defendant began using the name “McAlpine”. The Claimant contended that this amounted to a misrepresentation to the effect that the Defendant’s services were those of or associated with the Claimants, or that there was only one owner of the goodwill and reputation attached to the “McAlpine” name, that the misrepresentation was to a relevant audience and that it caused loss or that there was a sufficiently high risk of loss to amount to passing off and to entitlement to an injunction.
Whether the Defendant’s actions constituted passing off.
Applying Reckitt and Colman v Borden  RPC 341, the Defendant’s use of “McAlpine” in business areas which overlapped with those of the Claimant was a misrepresentation. It represented that there was only one company known as “McAlpine” and so would cause confusion to many people. Only where the name was used in dissimilar fields of activity would it not give rise to passing off. There did exist a real risk that loss might result from the misrepresentation and injunctive relief was therefore granted.
A case of a re-branding initiative going badly wrong. In addition to this passing off action, the Defendant had also registered “McAlpine” trade marks and a domain name which are also vulnerable. Given the historical links between the companies, this should have been an obvious name to avoid. The goodwill in the “McAlpine” name was clearly shared, and it was not open to the Defendant to attempt to appropriate it all.