ASPREY & GARRARD LTD. v WRA (GUNS) LTD. AND ANOTHER [2001] EWCA Civ 1499

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION
Jacob J.
[2001] EWCA Civ 1499Case No Case No: CHANI/A3/2001/1204Venue Royal Courts of Justice, Strand, London, WC2A 2LL
Between
ASPREY & GARRARD LTD.RespondentWRA (GUNS) LTD. AND ANOTHERAppellants
Before
Lord Justice Peter GibsonLord Justice ChadwickLord Justice KayMr. Simon Thorley Q.C. and Mr. Richard Meade (instructed by Messrs Willoughby & Partners of London for the Respondent)Mr. Michael Bloch Q.C. and Ms. Heather Lawrence (instructed by Messrs Speechly Bircham of London for the Appellants)Date 11 October 2001
[1]Peter Gibson L.J.: The name Asprey has been associated for many years with selling luxury goods. In 1781 the Asprey family began trading in Mitcham, moving to Bond Street in 1841 and in 1847 to 166 Bond Street, now New Bond Street. There has been a shop there bearing the name Asprey ever since. The business was incorporated in 1909. Until 1995 members of the Asprey family ran the business. In 1995 the Claimant company owning the business was acquired by, in effect, Prince Jefri of Brunei. In 1990 the Claimant had acquired Garrard & Co. The business of Garrard & Co. was merged with that of the Claimant, the company's name being changed to the Claimant's present name, Asprey & Garrard Ltd., in September 1998. On 4 July 2000 the ownership of the Claimant changed again and its shares now belong to a company representing the interests of two individuals, Lawrence Stroll and Silas Chou. The Claimant sells (amongst other things) jewellery, antiques, objets d'art, silverware, glass, crystal, porcelain, watches, clocks, luggage and leather goods. It also has a gun room, selling guns. It has many trade mark registrations, including, for the word ASPREY, registrations in class 13 for firearms and ammunition and in class 14 for jewellery and precious metals.[2]Members of the Asprey family have run or helped to run the business of the Claimant from the outset, although only one Asprey is still employed by the Claimant. The Second Defendant, William Asprey, joined the Claimant as an employee in about April 1990. He showed particular interest in the Claimant's gunroom and early in 1996 took over its running. But by 1998 he became disaffected with the Claimant. He did not like the way the business was going. He was unhappy about the merger of the Asprey and Garrard brands and felt that the quality of the Claimant's customer service and of its products was declining.[3]In 1998 William Asprey caused two companies to be incorporated, the First Defendant to which the name William Asprey (Guns) Ltd. was given, and another company which was given the name William Asprey Ltd. The Claimant learnt of this in August 1998. Its Managing Director, Ian Dahl, wrote to William Asprey on 19 August 1998. He drew attention to the fact that the Claimant was the registered owner of the ASPREY word mark in relation to several classes of goods and services including firearms, to the considerable reputation and goodwill in the trade mark and to the Claimant's right to prevent the unauthorised use of the mark by others. He said that the Claimant was advised that the use by the two new companies of the name Asprey could lead to confusion and that this would amount to passing off. He asked for the prompt change of the companies' names. Thereupon the two companies' names were changed to WRA (Guns) Ltd. and WRA (Sporting Agents) Ltd.[4]In early July 1999 William Asprey gave the Claimant notice of his resignation and left its employment on 5 August 1999. He asserts in his evidence that he informed the Claimant that he would be setting up in a new business under the name 'William R. Asprey Esquire', which would compete with the Claimant, though with an emphasis on guns. Although that assertion is disputed, for the purpose of the proceedings in the court below and on this appeal his version of events has had to be taken as correct.[5]Once he left the Claimant he visited as many as possible of the Claimant's customers with whom he had dealt personally while he worked for the Claimant to explain what he was doing. His evidence makes clear that he told such persons of his intention to compete with the Claimant in the same field of luxury goods. In the Peterborough column of the Daily Telegraph on 13 November 1999 it was reported that William Asprey was starting his own business called William Asprey Esq. in competition with the Claimant and was looking for premises in the Bond Street area. In September 2000 a shop bearing the name "William R. Asprey Esq." was opened in Mount Street which, like the Claimant's shop, is also in Mayfair. In the press release which was issued in advance of the opening, this was said:
"William R. Asprey Esq. was established in 1999 by William Asprey, 7 th generation of the renowned Asprey family who established their first luxury business in 1781. Since the business was first established at the end of the 18 th century …. many changes have tested the strength and commitment of its family forebears. Continuing his family tradition, William Asprey is now opening a new luxury goods store in Mayfair …. The new store will have specialist luxury goods ranging from fine jewellery, leather goods and objets d'art, watches …. and sterling silverware, shotguns and sporting rifles, shooting accessories and clothing …. William Asprey comments "
My dream to create an exclusive store for luxury products has been realised with the opening of No. 10 Mount Street, where the Asprey family heritage and traditions are rekindled, ensuring a superior quality service to our clients, whilst supporting refined British craftsmanship. The habitués of this exceptional signature will be delighted to see William R. Asprey Esq. open in September 2000 …."[6]Although the language of the press release might suggest that William Asprey was opening the shop as a sole trader, in fact it is the shop of the First Defendant, trading as William R. Asprey Esquire. William Asprey holds 70% of the shares of the First Defendant of which he is the chairman and managing director, but it cannot be said that the First Defendant is merely his alter ego. He himself has not traded and does not trade.[7]A party to mark the opening of the shop was reported in the "Hello!" magazine for 5 December 2000 under the heading "ASPREY LAUNCH". The magazine described William Asprey as "a seventh generation member of the renowned Asprey family, whose first luxury goods business was founded way back in 1781", and other publicity material referred to the store as being one which "rests confidently on seven generations of experience in the luxury business", to William Asprey "continuing the family's tradition" and to "the tradition rekindled".[8]On 8 December 2000 solicitors for the Claimant wrote a letter before action to William Asprey. They complained of the adoption by the First Defendant of a trading style which incorporated the name Asprey, they alleged that there had been passing off and the infringement of the Claimant's trade marks and they demanded that the First Defendant should cease to use any name which incorporated Asprey. Solicitors for William Asprey and the First Defendant replied on 15 December, disagreeing with the allegations made by the Claimant and saying that they would be more than willing to give very serious consideration to any steps which the Claimant might like to propose, short of ceasing the use of the name Asprey altogether, to minimise the risk of confusion.[9]Proceedings were commenced by the Claimant on 22 January 2001, the action being framed as one in passing off and trade mark infringement and the primary relief claimed being an injunction against both Defendants. On 20 February 2001 the Claimant applied for summary judgment under CPR Part 24.[10]That application was supported by a witness statement from the Claimant's Company Secretary, Fiona Morrison. In it she said that the Claimant learnt about mid-2000 that William Asprey was proposing to open a retail shop in Mayfair, that the Claimant took legal advice and was advised to wait and see how he traded, and that if he were to trade under his own name and in a manner which did not unfairly take advantage of the Claimant's goodwill, it could have no objections. She said that the Claimant believed that it had purchased, at significant cost, the business of the Asprey family and the goodwill acquired by the long period of trading, that the Defendants by their trading style and press releases were passing themselves off as being in some way associated with the Claimant and that by using the name Asprey in relation to their goods they were infringing the Claimant's trademarks. In that and a later witness statement Ms. Morrison gave evidence of a number of instances of confusion between the First Defendant and the Claimant.[11]Following the receipt of Ms. Morrison's first witness statement the Defendant's solicitors in correspondence with the Claimant's solicitors suggested that William Asprey would be prepared to trade as a sole trader in his own name, and they sought to ascertain whether that would be acceptable to the Claimant. But the Claimant's solicitors refused to commit themselves as to the manner in which the Defendants might be able to trade in the future without causing passing off.[12]The Defendants resisted the Part 24 application, relying on evidence from a number of witnesses. This included a detailed witness statement from William Asprey. He made clear his pride in his family's heritage and tradition and declared that he was more than happy to say so. He said that he did not wish to be thought of as associated in any way with the Claimant and had tried very hard to avoid such association. He himself gave an example of the First Defendant being confused with the Claimant and stated what he did to correct the mistake. In para. 24 of his witness he said this:
"When I left the claimant's employ to set up my own business I was anxious to be in a position to build upon the goodwill which I had established with customers with whom I had personal dealings. It was therefore important to me that my new business' name should be, or incorporate, my own name. I was equally concerned to distinguish my new business from that of the claimant. That is why I chose the name William R. Asprey Esquire."
[13]In para. 26 of his witness statement William Asprey stressed that most of the turnover generated by a business such as William R. Asprey Esquire derived from personal relationships between the business's lead retailers and its major customers. He said:
"In each case (and this certainly applies to the eight Middle Eastern customers who account for 84% of the sales of William R. Asprey Esquire) the customer's relationship is with a particular individual – be it me, Mr. Cooper or Mr. Argles – not a business. My customers in this category will follow me whether I am working for Asprey & Garrard, Harrods, Tiffany's or on my own. The same applies to personal customers of Mr. Argles and Mr. Cooper …. It should not be thought, however, that the presence of my name in the trading name of the first defendant is unimportant. It identifies me as the "boss" of my company, demonstrates that I wish to be seen to take pride in my family name, and is of particular relevance to my ability to present and promote the first defendant's business to prospective new distinguished and high value clients."
[14]In para. 27 of his witness statement William Asprey described the remaining 16% of sales as made to customers most of whom were personally known to him or his colleagues with very few off-the-street customers. He said of his customers:
"All or nearly all of our customers are wealthy, sophisticated and discriminating people who know all about the successive changes of ownership of the claimant and are well aware that the claimant's business and the first defendant's have no connection."
But he said that, to cater for those who might mistakenly associate the two businesses, in January 2001 he caused a disclaiming notice to be displayed in the Mount Street shop.[15]Other evidence put in by the Defendants included evidence relating to three other members of the Asprey family who left the Claimant to set up in competition with it. In 1970 Algernon and Harry Asprey opened a luxury goods shop under the name Algernon & Harry Asprey Ltd. in Bruton Street in Mayfair. In 1980 the Claimant purchased that business. In 1982 Maurice Asprey set up a competing business in a shop in Duke Street, London SW1 under the name Maurice Asprey Ltd. The Claimant purchased that business in 1992. The Defendants' evidence is that there were no instances of confusion between those companies and the Claimant.[16]The Part 24 application came before Jacob J. on 18 May 2001. It was listed for two days, but the hearing only lasted one morning, the judge delivering judgment that afternoon. He dealt first with the passing off claim. He referred to "the defence (if defence it be) of use of one's own name." He noted that the First Defendant's name was WRA (Guns) Ltd. and did not accept an argument of Mr. Michael Bloch Q.C. for the Defendants that because the First Defendant had adopted the trading name William R. Asprey Esquire, the own name defence applied to the adopted name. The judge said that Mr. Bloch had recognised the difficulty over the First Defendant and had concentrated on the fact that the Claimant had applied for an injunction to restrain William Asprey from himself passing off. The judge treated the case as a claim against William Asprey, because the First Defendant could easily transfer its assets to him. The judge proceeded on the basis of what would be the position if William Asprey were himself to trade under his own name.

The judge said:

"Before looking at the details of the instances of confusion which the claimants rely on, I think it is worth standing back. Aspreys is a world famous name. As matters stand it is unique in its trade. It has therefore an individuality about its name, and it is that name and individuality to which forms its goodwill is attached. Passing off is an action intended to protect deceptive invasions of goodwill. Whenever there is such an invasion the distinctiveness of the name is likely to be eroded and the attractive force which brings in custom is likely to be eroded. It follows, I think, without even looking at the details of this case, that anyone who sets up in the same field of business with the name Asprey as part of their name is likely to erode the claimant's goodwill and is likely to create a situation where, however much that situation is unintended, people will make mistakes and muddle one company for the other. Of course there will be very many other people who will not: the friends of the individual concerned will know perfectly well that they were two companies; the suppliers will know exactly who they are dealing with. So the evidence that I have here from suppliers to the defendants does not really help me as to what the position is with people who may not know Aspreys very well but who have come to London and see the name Asprey on the defendant's shop. If you have an international trade, you must take your international customers as you find them. Some will speak English well, others will not speak English well. Some will know London well, others not. In this case, the shop was opened in September last year. There have been instances of confusion. I completely accept that Mr. William Asprey does not want any, and as soon as they happen he seeks to put things right. All his conduct throughout this case suggest that he is a very honest and honourable man. But, nonetheless, these incidents have happened."

The judge then referred to the incidents, and said:

"Those are incidents that have come to light. I ask myself: are they unique or are they only those that have come to light but there are others where somebody has thought there was a connection but never said it? Instances of confusion are seldom conclusive. The court has to make such use of them as it can in assessing the global impact of what the defendant is doing. I think that there are bound to be others. It is, I think, always difficult for the defendant fully to appreciate the impact of what he is doing on people who are not nearly as aware of the situation as he is. So although, as I have already said, I entirely acquit Mr. William Asprey of any intention to pass off, I fear that what he is doing would lead to just that, the deception of some customers."
[19]The judge next considered Mr. Bloch's reliance on the own name defence. The judge called that "a tricky area of passing off law." He referred to Joseph Rodgers & Sons Ltd. v W. N. Rodgers & Co. (1924) RPC 277 at p. 291, where Romer J. said:
"It is the law of this land that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is in any way connected with the business of another; that is the first proposition. The second proposition is, that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition there is, I myself think, an exception: a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than that to cause confusion with the business of another, and so long as he does it honestly. It is an exception to the rule which has of necessity been established. To the second rule, to which I have referred, I think there is no exception at all; that is, that a man is not entitled so to describe his goods as to lend to the belief that they are the goods of somebody else. It is not necessary that there should be an exception to that. It is perfectly legitimate for a man in the cutlery business to carry on business under his own name whatever that name may be, but I can see no necessity for his marking his cutlery with a name (although it be his own name) which may have the effect of passing off those goods as the goods of the Plaintiffs."
[20]The judge said that the Defendants were doing more than carry on business in their own name to cause confusion because they were actually causing deception and were using the name as a trade mark. He also said that the basis of Romer J.'s exception was necessity and that was not satisfied here. The judge dismissed the Defendant's evidence that there was no confusion when Algernon & Harry Asprey Ltd. and Maurice Asprey Ltd. were competing with the Claimant, saying that those companies were probably doing something different from what happened in the present case or perhaps more likely the family were prepared to tolerate it at a time when the Claimant was a family business. The judge concluded on passing off by saying that notwithstanding William Asprey's evident honesty, what had been done by him was on the wrong side of the line.[21]The judge then turned to trade mark infringement. The Claimant had alleged infringement under s. 10(1) or(2) Trade Marks Act 1994 (implementing the Trade Marks Directive 89/104 of 21 December 1988), whilst the Defendant relied on the defence provided by s.

(a) Those provisions are as follows:

"10 (1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. (2) A person infringes a registered trade mark if he uses in the course of trade a sign where because – ( a ) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or ( b ) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. … 11 (2) A registered trade mark is not infringed by – (a) the use by a person of his own name or address, …. provided the use is in accordance with honest practice in industrial or commercial matters."
[22]In relation to the claim of infringement under s. 10 (1) the Defendants denied that they were using a sign identical to the mark ASPREY because their sign was William R. Asprey Esquire. The judge rejected that defence on the basis of three decisions of the High Court: his own decision in British Sugar v James Robertson [1996] RPC 281 , the decision of Rattee J. in Aktiebolaget Volvo v Heritage (Leicester) Ltd. [2000] FSR 253 and the decision of Pumfrey J. in Decon Laboratories Ltd. v Fred Baker Scientific Ltd. [2001] RPC 293. Those decisions are to the effect that where a defendant in the course of trade uses as his sign a word which constitutes the registered trade mark of another in combination with other words, the sign is identical with the mark for the purposes of s. 10 (1). Accordingly the judge held that there was infringement under s. 10 (1).[23]The judge did not consider s. 10 (2) separately as he accepted the Claimant's argument that, as there was passing off, s. 10 (2) was satisfied.[24]The judge then considered whether s. 11 (2)(a) provided William Asprey with a defence. The judge held that whilst it might provide a defence for the past, it could not do so for the future, because, once it was known that deception in what William Asprey was doing was likely, it could not be in accordance with honest practice in industrial and commercial matters to continue to do it. The judge therefore held that there was trade mark infringement to which s. 11 (2)(a) provided no defence.[25]The judge accordingly granted an injunction. This was in the following form:
"The Defendants and each of them must not do the following acts or any of them, that is to say (a) infringe the registered trade marks set out in Annexe 1 hereto; or (b) carry on any business in jewellery, antiques, silverware, glass, porcelain, watches, clocks, luggage, guns, objets d'art or other similar goods at the luxury end of the market under the name or using the mark "
Asprey" or "William R Asprey Esquire" or any other name or mark which by reason of its similarity to the name "Asprey" is likely to cause confusion or deception and to lead to the business or goods of the Defendants being passed off as the business or goods of the Claimant without clearly distinguishing their business or goods from the goods of the Claimant; or (c) cause or procure any other person, firm or company to do any of the aforesaid acts."[26]The judge ordered an enquiry as to damages. He refused permission to appeal but granted a stay of the injunction pending the Defendants' application to this court for permission to appeal and, if permission was granted, pending the outcome of the appeal. Robert Walker L.J. granted permission to appeal.[27]Before this court Mr. Bloch submitted that the judge erred as a matter of fact and law in relation to passing off and trade mark infringement. On passing off he argued that the judge was wrong to proceed on an a priori assumption that the setting up of a business in the same field as the Claimant with Asprey as part of the name of the new business was likely to lead to confusion, particularly when Algernon and Harry Asprey and Maurice Asprey had previously done so without confusion. Further he submitted that the evidence of actual confusion was unsatisfactory. He said that having regard to the manner in which the Defendants conducted business, to the importance of personal contacts in the business and the wealthy, sophisticated and discriminating customers of the First Defendant, the judge could not properly have found that the passing off claim succeeded, particularly on a Part 24 application. If wrong on that he argued that both the First Defendant and William Asprey could avail themselves of the own name defence, which in any event raised difficult questions of law unsuitable for determination on a Part 24 application. He also prayed in aid Article 10 (freedom of expression) and Article 14 (prohibition of discrimination) of the European Convention on Human Rights and Article 1 of the First Protocol to the Convention (protection of property) and submitted that they supported the availability of the own name defence. On trade mark infringement Mr. Bloch submitted that there was no infringement under s. 10 (1), the judge's construction of s. 10(1) being incorrect, and that in any event as a French court had referred to the European Court of Justice the like question of construction of the Trade Marks Directive, the point was not one appropriate for summary judgment. On s. 10(2) Mr. Bloch relied on the same arguments as he did on passing off. Further, on both s. 10 (1) and (2) he submitted that the defence to infringement which was afforded by s. 11 (2)(a) was applicable.[28]Mr. Thorley Q.C. for the Claimant submitted that the judge reached the right conclusion on each point determined by him. On Mr. Bloch's arguments relating to the Convention which had not been advanced to the judge, Mr. Thorley contended that none of the Articles relied on had any application.[29]I start with passing off. The general principles of the law of passing off are not in dispute. The judge considered the applicable principles to be those enunciated by Lord Oliver in the Jif Lemon case ( Reckitt & Colman Products Ltd. v Borden Inc. [1990] RPC 341 at p. 406). In short they require three elements to be established by a claimant: reputation, misrepresentation and damage.[30]There can be no doubt that the Claimant has a world-wide reputation which extends to a wide range of luxury goods. This was rightly accepted by Mr. Bloch. In my judgment the name Asprey is recognised by the public as distinctive of the Claimant and its goods.[31]The second and third elements are in controversy in the present case. Lord Oliver said in the Jif Lemon case (at p. 406) of a plaintiff:
"Secondly he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is likely to suffer, damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
[32]One part of the judge's reasoning is open to valid criticism. He dismissed the evidence that the rival businesses set up by Algernon and Harry Asprey and by Maurice Asprey had produced no confusion. He did so on the basis of speculation that they were probably doing something different from that which has happened here. He might have referred to the explanation provided by Andrew Sutton, who worked for the Claimant before and after working for Algernon and Harry Asprey Ltd., as to why there was no confusion between that company and the Claimant:
"I believe that this was because the differences in scale and image between the two businesses were so marked, and because all or nearly all of the customers of Algernon and Harry Asprey Limited were personally acquainted with Mr. Algernon or Mr. Harry or one of the members of staff, or were introduced to the business by someone having such personal acquaintance."
Maurice Asprey gave evidence of the care which he took to avoid confusion between Maurice Asprey Ltd. and the Claimant. But I would accept that on the evidence before the court, which must be treated as correct for the purposes of the Part 24 application, both Algernon & Harry Asprey Ltd. and Maurice Asprey Ltd. provide examples of trading having been conducted by competitors of the Claimant, using Asprey as part of their name, without confusion having occurred.[33]Mr. Bloch also criticised the reliance by the judge on seven instances of confusion in the present case. Those instances were the following.(1) In February 2001 Mr. Vivo from Mexico, who had been a customer of the Claimant in the past asked the Claimant for a "pill box" which he said that he had seen in the Claimant's catalogue or showcase in the Dorchester Hotel. The item was not in that catalogue and the Claimant ceased in November 2000 to have a showcase in that hotel, but the First Defendant had two such showcases. Mr. Vivo was directed to the First Defendant's shop, Mr. Vivo saying "Why two Aspreys?" There was evidence from William Asprey that no pill box was ever exhibited in a showcase at the Dorchester. However, the evidence relating to this incident suggests that Mr. Vivo saw an Asprey showcase in the hotel, noticed the name Asprey and assumed that it was the Claimant's showcase, even though Mr. Vivo misdescribed as a pill box the item in it.(2) The second instance was provided by William Asprey in his witness statement. It concerned an article in "Country Illustrated" in March 2000 written by the head of Christie's sporting gun department, which stated that "Asprey of Bond Street" was poised to open a new gun showroom in Mount Street. Mr. Bloch points out that there is no evidence of how the mistake was made and that the writer may have been misinformed by another. But this incident shows that either the writer or the source of the information given to the writer has assumed that the new Asprey gun room in Mount Street belonged to the Claimant.(3) Two American men, who had seen a watch in one of the First Defendant's showcases in the Dorchester Hotel, were directed to the Claimant's shop from the Dorchester.(4) A shipping company submitted to the Claimant's New York office documentation relating to the freighting of the Defendants' guns to a gun fair in the United States.(5) An American customer of the Claimant responded to an invitation issued by the Defendants to a polo match in Cirencester. That response was sent to the Claimant.(6) There was a delivery to the Claimant of a painting intended to be delivered to the Defendants.(7) A Kuwaiti man approached the Claimant after seeing an advertisement issued by the Defendants for a watch.[34]It was not suggested by the Claimant to the judge nor to this court that these instances of mistakes sufficed to establish passing off. As Mr. Bloch rightly pointed out, none of the incidents has been explored to see how the mistake arose and they do not show a single case of a sale being diverted from the Claimant to the Defendants. However they do provide some support for the judge's view, based on the fact that Asprey is such a well-known name as distinctive of the Claimant, of what was likely to happen as a result of a competitor setting up in the same field of business with Asprey forming part of the competitor's name. True it is that the evidence relating to the companies of Algernon and Harry Asprey and of Maurice Asprey in earlier years points the other way. But these instances of confusion in the short period between the opening of the First Defendant's shop in September 2000 and the hearing in May 2001 seem to me to be illustrative of the likelihood, which the judge found, that people will make mistakes and muddle one company with the other. It seems to me inevitable that, in a trading name of William R. Asprey Esquire, Asprey will be the dominant feature of that trading name and will be that to which the trading name is shortened by many when referring to the First Defendant or its shop, as happened in the "Hello!" article.[35]The judge properly recognised that many would not be confused. The personal contacts, about whom William Asprey gave evidence, would not, nor would suppliers. But even the wealthy – and wealth is likely to be the chief common characteristic of the customers of both the Claimant and the First Defendant – may muddle the two companies, as some of the instances of confusion show, particularly when the customers include many foreigners, again as those instances illustrated. One does not have to postulate other than a "reasonably well informed and reasonably observant and circumspect" customer (to use Chadwick L.J.'s phrase in Bach and Bach Flower Remedies Trade Marks [2000] RPC 513 at p. 535) as the typical customer of both the First Defendant and the Claimant to recognise that there is still a likelihood of confusion and deception, as the judge found, of the public including but not limited to customers who happen to pass by in Mount Street.[36]That likelihood is produced by a number of factors in addition to the common factor of the name Asprey. First, all the goods sold by the First Defendant are of a type sold by the Claimants: the First Defendant competes in a similar field. Second, the two shops are in a similar location. Third, there is a similarity in the methods of promotion, such as by having showcases in the Dorchester Hotel, aimed at similar target customers. A fourth and, to my mind, significant factor is the use made by the Defendants in their publicity material of William Asprey's connection with his forebears as traders in luxury goods. The goodwill generated by the six generations of Aspreys previous to William Asprey, trading for two centuries and more, unquestionably belongs to the Claimants. No doubt that was reflected in the price paid in 1995 to the Asprey family for their shares in the Claimant. Any goodwill resulting from William Asprey's work for the Claimant as its employee also belongs to the Claimant and he cannot properly seek to associate any business in which he is now interested with the Claimant's goodwill. Of course the fact that he established personal contacts whilst so employed cannot be taken from him and in the absence of a restrictive covenant restraining him from making use of such contacts he is free to do so. But what he cannot do by reason of the law of passing off is to present any business in which he is now interested as in some way associated with that of the Claimant. Despite his protestations that he does not want to be associated with the Claimant, it appears to me that he does wish the First Defendant to be associated with the goodwill of the Claimant. Given his own evidence in para. 26 of his witness statement, which I have already quoted in para. 13 above, that the customers of Mr. Argles, Mr. Cooper and himself will follow them personally, whoever may be their employer, and that those customers account for the lion's share of the First Defendant's business, it is hard to understand why the Defendants think it important to trade under a trading name incorporating the name Asprey unless it be to obtain the benefit of an association with the Aspreys' trading past and hence with the Claimant's goodwill. In the light of his evidence of customers' personal loyalty, I do not find convincing his explanation that the trading name's purpose is to identify him as the boss of his company. He does that by the use of his own initials in the First Defendant's actual name, though I can well understand that he finds the use of the Asprey name in the First Defendant's trading title of assistance in promoting the First Defendant's business. That is achieved through association with the Claimant's goodwill.[37]The fact that William Asprey has sought to correct any instance of confusion, by properly drawing attention, for example, to the error in the article "Country Illustrated", and the fact that he has put up a disclaiming notice in the Mount Street shop, are to his credit. But the judge was entitled to draw on his considerable experience in this field to say that such disclaimers hardly ever work.[38]It has repeatedly been said that a conclusion on misrepresentation is a matter for the judge and not for the witnesses, and evidence of actual confusion is not a precondition of a finding of misrepresentation. As the House of Lords has recently reminded us, this court should be slow to interfere with the conclusion of the lower court on what is essentially a question of fact (see Designers Guild v Russell Williams (Textiles) Ltd. [2001] FSR 113 ). In the light of all the evidence before the judge I am not persuaded that the judge reached an incorrect conclusion in finding a misrepresentation by the Defendants through the use of the name William R. Asprey Esquire in connection with the First Defendant's business.[39]As for the third necessary element for passing off, damage, the judge found damage in the erosion of the distinctiveness of the Asprey name and the deceptive invasion of the Claimant's goodwill. I did not understand Mr. Bloch to contend that the judge was not entitled to find damage if the second element was satisfied.[40]It follows therefore that in my judgment the judge's conclusion that subject to the own name defence there was passing off by the Defendants should be upheld. The tort was committed by the First Defendant trading under the name William R. Asprey Esquire. But William Asprey, by reason of his prominent role in the First Defendant's use of that name, was a joint tortfeasor with the First Defendant.[41]I come now to the own name defence. Although doubts were expressed in the House of Lords in Parker Knoll Ltd. v Knoll International Ltd. [1962] RPC 268 on the correctness of certain aspects of Romer J.'s statement of that defence in the Rodgers case, Mr. Thorley was content to proceed before the judge and in this court on the footing that Romer J. had correctly stated the conditions of the defence in the passage which I have cited from his judgment in para. 19 above.[42]The first question that arises on this is whether the First Defendant can take advantage of this defence. I can answer the question shortly as Mr. Bloch, while not abandoning his submission that it could, recognised the difficulties in that submission and did not press it. In my judgment it is plain that the defence is not available to the First Defendant. Its own name is WRA (Guns) Ltd. The fact that it has chosen to adopt the trading name of William R. Asprey Esquire does not enable it to rely on the own name defence.[43]As the judge said, the defence has never been held to apply to names of new companies as otherwise a route to piracy would be obvious. For the same reason a trade name, other than its own name, newly adopted by a company cannot avail it. Further, as the judge also pointed out, because a company can choose to adopt any trading name, there could be an own name defence in almost every case if Mr. Bloch were right. In my judgment he is not.[44]That leads me to the question whether the judge was right to consider the position which would obtain if the trade of the First Defendant were conducted by William Asprey himself. Whilst the possibility of that occurring was raised by the Defendants in correspondence, as I have noted in para. 11 above, and whilst the judge may be correct in saying that the transfer by the First Defendant to William Asprey of its assets could easily be arranged (subject to obtaining the consent of the minority shareholder in the First Defendant), the evidence before the judge disclosed no present threat that such a transfer would occur. The judge's pragmatic approach, however, appears to have received the support of the parties and in this court the question only surfaced when Chadwick L.J. raised the point in the course of the argument before us.[45]There is a real difficulty in supporting the judge's approach. On the agreed basis that Romer J.'s statement of the own name defence is correct, the general rule that no man is entitled to carry on his business in such a way as to represent that it is the business of another is subject to a limited exception. That is that he is entitled to carry on business in his own name subject to two conditions:(1) he must not do anything more than that to cause confusion with the business of another, and(2) he must do it honestly. Given that prima facie entitlement to carry on business in his own name, it is important that the court should know precisely what he is doing (or threatening to do) if he is to be denied that entitlement. In the present case we do not know precisely how William Asprey would trade in his own name. The judge has assumed that there would be no change in the mode of trading, but he has done so without evidence in order to answer a hypothetical question. Moreover the form of injunction granted by the judge against William Asprey is very wide. It extends far beyond restraining him from being a joint tortfeasor with the First Defendant: he is prohibited from carrying on business at all under his own name in the luxury goods specified in the order. In my judgment the court would have to look very carefully at what William Asprey was actually doing in his trading (or actually threatening to do) to satisfy itself that his agreed entitlement to carry on business in his own name was to be limited in some defined way or denied him altogether. I do not think that the judge had, or this court has, the factual material to form a judgment on this point. In my opinion, whilst the First Defendant can be restrained by a permanent injunction against passing off on this Part 24 application, it was inappropriate to grant such an injunction against William Asprey, who can only be restrained from acting as a joint tortfeasor.[46]In the circumstances it is unnecessary to say anything about the points which would arise on the application to William Asprey of Romer J.'s statement of the own name defence nor need I deal with Mr. Bloch's highly optimistic attempt to obtain assistance from the Convention.[47]I turn next to trade mark infringement.[48]On the question whether the judge was right to find infringement under s. 10 (1) (implementing Article 5 (1) of the Trade Marks Directive), Mr. Thorley conceded that, because the Paris Regional Court in S. A. Société LTJ Diffusion v S. A. Sades Vertbaudet on 23 June 2000 had referred to the European Court of Justice the question whether there is identity between the sign of an alleged infringer and a registered trade mark when the sign uses the word constituting the trade mark in combination with other words, the judge's decision to give the Claimant summary judgment under this head could not stand.[49]On the question whether the judge was right to find infringement under s. 10 (2), subject to s. 11 (2)(a) Mr. Bloch did not add to his submissions on passing off, and it is sufficient for me to say that for the reasons already given in relation to passing off, the Defendants have infringed and are infringing the Claimant's trademarks. As for s. 11 (2)(a), that provision can afford the First Defendant no defence as it is not using its own name. William Asprey is not himself trading and so s. 11 (2)(a) cannot avail him. I would add that however honest his subjective intentions may be, any use of his own name which amounts to passing off cannot be in accordance with honest practice in industrial or commercial matters.[50]For these reasons I would dismiss the First Defendant's appeal and vary the injunction against William Asprey so that it is limited to one restraining him from causing or procuring the First Defendant or any other person to do any of the acts referred to in paras. (a) and (b) of the injunction granted by the judge. Chadwick L.J.:[51]I agree with the order proposed by Lord Justice Peter Gibson, for the reasons which he has set out.[52]I wish to associate myself, in particular, with the views which Lord Justice Peter Gibson has expressed, in paragraph 36 of his judgment, as to the significance of what may be described as the 'ancestral heritage' element; a feature which receives much emphasis in the publicity material generated in order to promote the business now carried on by WRA (Guns) Ltd under the name 'William R Asprey Esquire'. While accepting that Mr William Asprey does not wish that business to be confused or associated with the business now carried on by the claimant company, Asprey & Garrard Ltd, it seems to me impossible to avoid the conclusion that he does seek to take the benefit of goodwill which has been built up by generations of his family in relation to the business in which they have been engaged for some two hundred years. But, as Lord Justice Peter Gibson has pointed out, that goodwill now belongs to the claimant company. It is reasonable to suppose that those who now own the claimant company have paid handsomely for it; and they are entitled to expect that the company's assets will not be eroded by use made of that goodwill in another business.[53]I am conscious that some will think this Court unhelpful and over-pedantic in its refusal to follow Mr Justice Jacob in his pragmatic approach to anticipatory relief in relation to Mr William Asprey's own future business activities. But I am satisfied that the Court should resist the temptation to decide hypothetical future questions on an inadequate foundation of existing facts. A court should be careful not to make orders which restrain anticipated future conduct unless satisfied, with the degree of conviction which is properly required, both(i) that it can identify with some precision what it is that the person against whom such relief is sought will do unless restrained and(ii) that the order can be made in terms which will enable the person restrained to know, without ambiguity, what it is that he is restrained from doing. Those conditions are not satisfied in relation to whatever business (if any) Mr William Asprey may choose to carry on in the future in his own name and on his own account. Kay L.J. :[54]I agree with both judgments.

Order

The first defendant's appeal will be dismissed; the second defendant's appeal will be allowed to the limited extent indicated. The respondents will have their costs of this appeal and below. We direct that the shop front name, the name on the awning and the name on the stationery should be dealt with by the end of the month. So there is a stay of the order to that extent limited to those items. The stay extend to the stock, including the special items, provided they are disposed of by the end of the year. (Order not part of approved judgment)

Cited in 9 later judgments