The claimant and defendant were trading within a few miles of each other under similar business names. The two businesses had managed to co-exist for some time, until the defendant started doing business in the claimant’s patch. As a result of that, the claimant issued passing off proceedings against the defendant. To prove passing off, a claimant must show that it has acquired a reputation, the defendant issues a misrepresentation to the market causing damage by the market being confused.
The court ruled that the claimant had built up goodwill in the local area through a long period (although under different owners), and that, despite coexisting with the defendant for six years, the defendant was committing a misrepresentation when trading in the same area (although the court admitted that trading in that patch was rare).
The court ruled that an injunction be issued to prevent the defendant trading under the name ‘Redwood Tree Surgeons’ within specific postcodes in order to protect the goodwill of the claimant and to prevent the passing off of the defendant’s business. In other places, the business could carry on trading as normal.
The ruling is an interesting example of how the courts can tailor their response to a passing off action to a specific location and depending on the size, triviality and effect of the passing off. To obtain wider protection rather than have to prove goodwill and the location of that goodwill, businesses should consider obtaining a registered trade mark, which would give them exclusive rights to use a particular name across the whole of the country for particular goods or services.