Author: MBRYA
Last saved by: Neil White
Company: IPO

O-305-18

Companies Act 2006 

In the matter of application No. 1356 by Alfred Dunhill Limited for a change to the company name of Richard Dunhill London Limited, a company incorporated in England and Wales under number 10146945

Background and pleadings

1.  The company name Richard Dunhill London Limited (“the primary respondent”) has been registered since incorporation on 26 April 2016, under number 10146945.
 
2.  By an application filed on 13 January 2017, Alfred Dunhill Limited (“the applicant”) applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.

3.  The applicant states that the names DUNHILL and DUNHILL LONDON are associated with it and that it has operated a retail business under the name DUNHILL for over 90 years. As a result of this use, it claims a very substantial reputation and valuable goodwill attached to the DUNHILL name in the UK.  It further states that it is the proprietor of a number of UK and EU trade marks for the word DUNHILL, and a device mark with the mark text “dunhill LONDON”, registered in respect of at least clothing.  

4.  The applicant objects to the primary respondent’s name because it considers that any company name which includes the word DUNHILL is an offending name. 

5.  The primary respondent filed its notice of defence, denying that its name is sufficiently similar to the applicant’s DUNHILL and DUNHILL LONDON names. It relies upon various decisions relating to trade mark disputes to support a claim that a surname does not retain an independent distinctive role in every case solely because it is perceived as a surname. It asserts that DUNHILL is a common surname.  The primary respondent also relies upon the following three defences:

“1. The company is operating under the name:

The company is registered in England and Wales and is in fact carrying on a legitimate business relating to the sale of its products and maintains an online presence via the website at richardunhill.com (see screenshots of homepages for Respondent and Applicant, Annex 7, 8).  The company sells its products via a licence granted to an agent to sell its products under the company brand outside England and Wales specifically in the Kingdom of Saudi Arabia.

2.  My company name was adopted in good faith:

The name was adopted without any reference or thought of the applicant or its business, and at the time of its adoption I had no knowledge of the applicant’s business.  The company is based in London and its products are characterized by a unique design and texture with a slight English influence.  The name, which consists of a common English first name and common English surname (see above), was therefore chosen to reflect the contribution of English heritage to these products.

3.  The interests of the applicant are not adversely affected to any significant extent.

There is no competition between the applicant and my company.  The company products are the only products for the company sold by the licensed agent in the Kingdom of Saudi Arabia.  The sale of these company products will have no impact whatsoever, let alone any significant impact, on the applicant.”

6.  We note that Annex 8 is a photograph of a shemagh (an Arabic head cover) which the primary respondent identifies as bearing the trade mark used by the applicant.  There is no Annex 7 in the papers. 
7. Mr Abdullah Altubayieb, the primary respondent’s director, was subsequently joined to the proceedings as a co-respondent.

8.  On 5 February 2018, the applicant made a written request to cross-examine Mr Altubayieb, setting out the reasons why the request was made and the issues to be examined:

“The Applicant will, at the hearing, be inviting the Adjudicator to disbelieve certain parts of Mr Altubayieb’s factual evidence contained in his witness statement dated 26 September 2017, alternatively submit [sic] that Mr Altubayieb is mistaken with respect to such matters.  The Applicant wishes to ensure that it is not prevented from making these submissions on the ground that Mr Altubayieb has not had the opportunity to respond to challenges to his evidence by answering such challenges in cross-examination.

[The issues] are as follows:

1. Whether the document exhibited to Mr Altubayieb’s witness statement at Exhibit AA1 is a genuine licence.

2. Whether the First Respondent’s name was adopted without any reference or thought of the Applicant or its business and whether at the time of its adoption Mr Altubayieb had any knowledge of the Applicant’s business.”

9.  The respondents opposed the request, resulting in a case management conference (by telephone) on 7 March 2018, at which the adjudicator, Mr Mark Bryant, allowed the applicant’s request.  Mr Bryant made the following directions in a letter sent to the parties on 8 March 2018:

“1) Mr Altubayieb is to attend a hearing in London to be cross examined as set out in the applicant’s letter of 5 February 2018;

2) Mr Altubayieb may, alternatively, attend via video conference from Saudi Arabia, but he will be responsible for arranging suitable facilities and the associated costs;

3) That the applicant provide the tribunal with a copy of the email from the FCO setting out, as it understands, Saudi Arabia’s position regarding such arrangements;

4)  Once the respondent’s representative has established whether Mr Altubayieb will attend the hearing, the parties are to agree three potential dates in early May for the hearing and to communicate these dates to the tribunal within 14 days of the date of this letter (i.e. by 22 March 2018).  If Mr Altubayieb refuses to attend, his evidence will still stand but the adjudicators may make inferences regarding his non-attendance.)

10.   Both sides filed evidence. A hearing took place on 3 May 2018 at which the applicant was represented by Mr Chris Aikens of Counsel, instructed by Kemp Little LLP, and the respondents by Mr Chris Pearson of Counsel, instructed by TKD Solicitors.  Mr Altubayieb, who had been directed to attend to be cross-examined on his evidence, notified the Tribunal in writing on 9 April 2018 that he would not attend either in person or via video conference. 

The applicant’s evidence 

11.  This takes the form of the witness statement (dated 21 July 2017) of Gary Stevenson, Brand Finance Director at the applicant. In respect of the applicant’s claimed goodwill, Mr Stevenson states:

•	The applicant is a division of Richemont, a world famous men’s luxury goods company that has been in business for over 120 years;

•	The applicant manufactures, sources and sells a variety of products, including luxury leather goods, writing instruments, tobacco-related products, fragrances, lighters, eyewear and clothing “mainly under the brand “dunhill LONDON”;

•	The fame and reputation of the applicant is such that various of its applicant’s products have been used by the title character in a number of James Bond movies;

•	The applicant is named after Alfred Dunhill, who took over the family business in 1893. He set up the predecessor to the applicant in 1903 (registered as a company in 1923); 

•	The applicant has stores worldwide including 4 authorized retailers in the UK;

•	The applicant operates an extensive website featuring an online store at www.dunhill.com. Undated extracts are provided at Exhibit GS1 showing various categories of goods for sale, including clothing, bags, wallets and shoes. A UK-specific part of the website is shown where prices are indicated to be in pound sterling. Exhibit GS3 consists of further extracts from the same website illustrating goods bearing the following trade mark:

Figure 1 Dunhill London

•	Turnover in respect of the DUNHILL brand in the UK is provided for the years 2012 to 2016 and was £100 million or more for four of these years. Advertising spend in the UK is provided for the same five years and has ranged between €15,000 and €28,000 per annum;

•	The brand is known for its high quality and suitably English style;

•	The applicant has actively sponsored events such as the Goodwood Revival, Rally Nippon, and the Flying Scotsman rally “amongst others”;

•	The applicant has the following social media presence all branded with the trade mark shown above:
o	Its Facebook page was launched in 2010 and has in excess of half a million “likes”;
o	An Instagram page created in March 2014 with 64,200 followers;
o	A Twitter page created in October 2013 has in excess of 19,200 followers;

•	The brand enjoys a following from celebrities and royalty.  Famous faces to wear the brand have included Frank Sinatra, Elvis Presley and Heath Ledger. More recently, the brand has famous clients including Tom Jones, Colin Farrell, Orlando Bloom, Daniel Craig and Jude Law. Images of some celebrities wearing the brand, obtained from the applicant’s website, are provided at Exhibit GS7.

12. Mr Stevenson also makes numerous submissions regarding the primary respondent’s pleaded defence. We will not detail these here, but we will keep them in mind in making our decision. He also provides further relevant factual statements as follows:

•	Even a preliminary trade mark search would have uncovered the applicant’s various DUNHILL marks and their associated websites. Further, a Google search for the terms DUNHILL and DUNHILL LONDON would have alerted the respondent to the existence of the applicant. A copy of the first results page from each of these two searches is provided at Exhibit GS9 and the leading results in each are to the applicant’s website or its products;

•	Richard Dunhill was the grandson of the applicant’s founder, Alfred Dunhill and joined the applicant in 1948 and in 1975, he became the Chairperson of the applicant. He passed away in 2016. The first results page of a Google search for the name “Richard Dunhill” is provided at Exhibit GS10 and shows the first two results of the search that make the connection between this individual and the respondent;

•	the applicant trades in identical goods in Saudi Arabia and, therefore, the parties are in direct competition;

•	Exhibit GS12 consists of a copy of a WIPO Panel decision where the applicant successfully obtained a transfer of the domain name richarddunhill.com on the grounds that it was registered in bad faith. The panel concluded:

“…it [is] more probable than not that the intention of the Respondent has been to attract visitors to the website of the disputed domain name by incorporating the Complainant’s trademark DUNHILL, … The Panel finds it probable that a proportion of visitors to the Respondent’s website will believe the goods displayed there to be those of the Complainant. … the Panel, on the balance of probabilities, finds the disputed domain name to be in use by the Respondent with intent to attract internet users for commercial gain by confusion with the Complainant’s trademarks, constituting use in bad faith …”  

Respondents’ evidence of fact

13. This takes the form of a witness statement, dated 26 September 2017, by Mr Altubayieb, director of the respondent and the co-respondent in these proceedings. Mr Altubayieb makes numerous submissions that we will keep in mind.

14.  Mr Altubayieb asserts that the primary respondent trades through the licencing of its brand to an agent to sell shemaghs and other garments and accessories in the Gulf Region. He provides a copy of the license agreement, dated 12 June 2016, at Exhibit AA1. The licensee details are redacted, as are all the signatory and company stamp details (except those of Mr Altubayieb himself).  The licence purports to cover the primary respondent’s “right, title and interest in and to (i) RICHARD DUNHILL’s name, logos, artworks (“Property”); and (ii) certain trade marks and copyrights incorporating and/or relating to the property.”  These are not listed.  Mr Altubayieb states that there are no sales outlets or selling agents in the UK but that the primary respondent is operating a licensing business in the UK.

15.  Mr Altubayieb provides the following evidence to demonstrate that Dunhill is a common surname:

•	A page of Google search results for ‘dunhill facebook’.  There are 9 hits, the first of which relates to the applicant.  There are 5 hits relating to individuals:  Paul Dunhill, Dunhill Stuart, Dunhill Jo, Liz Dunhill and Deborah Dunhill.  Two hits relate to a sports centre and a mother and baby group in Dunhill, Waterford, Ireland.  One hit relates to a company called Dunhill Homes, in Texas, USA.

•	Two and a half pages of Google search results for ‘dunhill twitter’.  There are 10 hits on the first page, the first three of which relate to the applicant and to a golf Championship sponsored by the applicant.  The fourth relates to a business in Kenya.  Two relate to companies but it is not known where they are located (Dunhill Staffing and Dunhill Travel Deals).  Two relate to individuals but it is not known where they are located (Archer Dunhill and Winston Dunhill). Two relate to individuals located in the UK (Lawrence Dunhill and Alex Dunhill).  Some of these entities are repeated in the second and third pages, with the additions of Ben Dunhill (in London); a company called Diamond Dunhill, in Hollywood, USA; a company called Dunhill Hawaii (in Hawaii), an individual named Heather Dunhill, but without location; and a reference to a company called ABC-Dunhill records, without location.

•	A page containing a career history of an individual in the UK called Richard Dunhill, from the Linkedin website.

•	A page from the website of a company called BNP Paribas Real Estate, which has an employee called Richard Dunhill.

•	A screenshot from the Ancestry.com website relating to Dunhill (Annex 2):  there were at the date of the print (which is undated) 30,470 historical documents, comprising 8,645 births, marriages and deaths; 623 immigration records; 8,195 census and voter lists; 12,604 member trees; and 403 military records.

•	A print from Wikipedia relating to the town of Dunhill, County Waterford, in Ireland (Annex 3).  The entry states that the town has an Ecopark, a church, a primary school, a parish hall, a pub and a shop.  No population figures are given.

•	An article about a record company called Dunhill Records, in Los Angeles, USA.

•	A Wikipedia article about an English composer called Thomas Dunhill, who lived from 1877 to 1946.

16.  Mr Altubayieb states that the primary respondent’s name was created with an English-sounding name as a licensing vehicle for the sale of anglicised Arabic products in the Gulf Region.  He states that his searches, prior to registering the company name, revealed no other companies registered with the name Richard Dunhill Limited or Richard Dunhill London Limited.  He states:

“I have had no knowledge of or relationship with the applicant or its business.  I was doing research for marketing classes at the Open University when I had the idea of setting up the business and selling licences.  The combination of the three very English words in the name was designed to add foreign character (in the eyes of Gulf Region consumers) to the name.  England and London are very popular names for the people of the Gulf Region and have a special appeal.  Many people from the Gulf Region travel every year to London for holiday, study and business.  The cultural links between England and the Gulf Region are historic and very strong.  English products have a good reputation.  Anything that carries an English influence or connection or sound is very popular in the local market.  The idea was to create a genuine and lawful business by setting up a UK company with a typically English-sounding name and selling a licence of that name for use in the Gulf Region, in particular the Kingdom of Saudi Arabia.”

The applicant’s evidence-in-reply

17.  This takes the form of a second witness statement (dated 12 December 2017) by Mr Stevenson. In response to the respondent’s claim that it is not commonly known that Richard Dunhill was the grandson of Alfred Dunhill, he provides a detailed history of the applicant. The relevant aspects of this can be summarised as follows:

•	The Dunhill business (the applicant’s predecessor) was founded in 1907 by Alfred Dunhill with a store opposite Fortnum & Mason in London where it quickly became popular with “men of means”;

•	Control of the business remained in the family and in 1976, Richard Dunhill became chairman after 27 years as a director. He remained so for 28 years, until 2004;

•	During this time, he became well known in the tobacco pipe makers and pipe smokers industry;

•	 The applicant’s products became available in 21 countries, in more than 100 retail outlets, 70 of which are Alfred Dunhill stores;

•	The applicant is so well known that 7 books have been written about it and its products;

•	Richard Dunhill passed away in 2016, but there remains “a substantial amount of commentary and advertising available on the internet that references Richard Dunhill’s influence as chairman of the applicant”. In support of this is the Google results page relating to a search for the name “Richard Dunhill” provided at Exhibit GS1. The first three articles retrieved all reference Richard Dunhill as being the grandson of Alfred Dunhill;

•	In 1996, Dunhill was listed in the book titled “The World’s Greatest Brands”, stating “Richard Dunhill ensures that the legacy of his grandfather continues, with priority given to traditional values and contemporary requirements”. A copy of this listing is provided at Exhibit GS3;

•	A Google image search for “Richard Dunhill” results in 15 images (out of the first 19) being the individual associated with the applicant (see Exhibit GS5). 

Decision 

18.  Section 69 of the Act states:
 
“(1) A person (“the applicant”) may object to a company’s registered name on the ground— 

(a) that it is the same as a name associated with the applicant in which he has goodwill, or 

(b) that it is sufficiently similar to such a name that its use in the United Kingdom would be likely to mislead by suggesting a connection between the company and the applicant. 

(2) The objection must be made by application to a company names adjudicator (see section 70). 

(3) The company concerned shall be the primary respondent to the application. 

Any of its members or directors may be joined as respondents. 

(4) If the ground specified in subsection (1)(a) or (b) is established, it is for the respondents to show— 

(a) that the name was registered before the commencement of the activities on which the applicant relies to show goodwill; or 

(b) that the company— 

(i) is operating under the name, or 

(ii) is proposing to do so and has incurred substantial start-up costs in preparation, or 

(iii) was formerly operating under the name and is now dormant; or 

(c) that the name was registered in the ordinary course of a company formation business and the company is available for sale to the applicant on the standard terms of that business; or 

(d) that the name was adopted in good faith; or 

(e) that the interests of the applicant are not adversely affected to any significant extent. 

If none of those is shown, the objection shall be upheld. 

(5) If the facts mentioned in subsection (4)(a), (b) or (c) are established, the objection shall nevertheless be upheld if the applicant shows that the main purpose of the respondents (or any of them) in registering the name was to obtain money (or other consideration) from the applicant or prevent him from registering the name. 

(6) If the objection is not upheld under subsection (4) or (5), it shall be dismissed. 

(7) In this section “goodwill” includes reputation of any description.” 

Does the applicant have the requisite goodwill/reputation in the names relied upon?

19.  If the primary respondent defends the application, as here, the applicant must establish that it has goodwill or reputation in relation to a name that is the same, or sufficiently similar, to that of the contested company name so as to mislead by suggesting that there is a connection between the company and the applicant.  The relevant date for this purpose is the date of application to register the company name which, in this case, is the date of incorporation, 26 April 2016.

20.  The two names relied upon by the applicant in its application to have the company name changed are DUNHILL and DUNHILL LONDON.  This is the pleaded case.

21.  At the hearing, Mr Aikens submitted that the primary case is based upon DUNHILL and DUNHILL LONDON, but that its secondary case is based upon RICHARD DUNHILL.

22.  We do not accept this submission.  Reliance on Richard Dunhill as constituting a name that is the same, or sufficiently similar, to that of the contested company name so as to mislead by suggesting that there is a connection between the company and the applicant does not form part of the pleaded case.  However, we note that it may be relevant to the primary respondent’s good faith defence and what Mr Altubayieb has to say about the adoption of the company name.

23.  The applicant has provided evidence of its goodwill/reputation in the names relied upon, DUNHILL and DUNHLL LONDON.  The respondents have not taken issue with the fact that the applicant enjoys goodwill/reputation in the names and, at the hearing, Mr Pearson stated that the respondents accept that the applicant has goodwill/reputation in DUNHILL and DUNHILL LONDON (but, emphasised that the respondents do not accept that the applicant has goodwill/reputation in RICHARD DUNHILL).

24.  In view of the respondents’ acceptance that the applicant has goodwill and reputation in DUNHILL and DUNHILL LONDON, we find that the applicant has goodwill/reputation as required by section 69(1)(a) of the Act.  In any event, it is clear to us from the evidence that the applicant has goodwill/reputation in the names relied upon.  

25.  We will also give our conclusions about the extent of that goodwill/reputation as it has a bearing upon the pleaded defences.  Taking into account, in particular, the level of turnover, longevity, reputation for luxury, patronage by celebrities and product placement in James Bond films, we conclude that the level of reputation/goodwill is significant and that the names DUNHILL and DUNHILL LONDON convey an image of wealth and prestige.

Are the names “sufficiently similar”?

26. The other part of the requirement under section 69(1) of the Act, which the applicant must satisfy, is that the respective names must also be the same or sufficiently similar that use of the company name would be likely to mislead by suggesting a connection between the parties.  The respondents submit that the company name consists of the word DUNHILL flanked by RICHARD and LONDON and that these words have a strong historical association with England and cannot be ignored.  The respondents submit that DUNHILL is a common surname, relying upon the Ancestry.com evidence.  They submit that there would be no confusion or association and that, in fact, there is no evidence of any confusion.  In the respondents’ views, this is because the public are sensitive to small differences between names sharing a common surname.  The respondents rely upon judgments concerning trade marks consisting of names:  Barbara Becker v Harman International Industries Inc., Case C-51/09, Court of Justice of the European Union (“CJEU”) and Reed Executive Plc and Another v Reed Business Information Ltd [2004] E.T.M.R. 56.  

27.  We note the following passage from the latter case, which Mr Pearson included in his skeleton argument.  Jacob LJ said:

“86 The same sort of consideration applies when there is use of two common surnames, as in this case.  The average consumer will be alert for differences – just in the same way as one distinguishes WH Smith from other Smiths by the initials.  That is of importance here in making the global assessment.”

28.  The CJEU considered, on appeal, the findings of the General Court (“GC”) in relation to the trade marks BARBARA BECKER and BECKER.  The CJEU found that the GC had, in concluding that the marks were conceptually similar simply on account of the same surname appearing in each mark, not undertaken the required global comparison of the likelihood of confusion based on all the relevant factors.  In particular, the CJEU said that the GC’s approach

“…would result in acknowledging that any surname which constitutes an earlier mark could be effectively relied on to oppose registration of a mark composed of a first name and that surname even though, for example, the surname was common or the addition of the first name would have an effect, from a conceptual point of view, on the perception by the relevant public of the composite mark.”

29.  It can be dangerous to borrow from trade mark caselaw because this Tribunal is not tasked with deciding whether there is confusion or misrepresentation between the names relied upon.  We have to decide whether the company name is sufficiently similar to the names relied upon to be likely to mislead by suggesting a connection between the company and the applicant.

30.  In so doing, we also bear in mind that the Reed case concerned the name REED, which is undoubtedly a common surname in the UK, as is SMITH (the example given by Jacob LJ).  Is DUNHILL a common UK surname?  We do not think that the evidence shows that it is.  The high point of the respondents’ case in this regard is the Ancestry.com evidence.  However, this is a global database.  Furthermore, and importantly, the number of entries does not equate to the number of Dunhills who are alive.  It is highly likely that there are multiple entries for the same individual Dunhills (e.g. an individual’s birth, marriage and death).  The Facebook and Twitter entries go nowhere near proving that DUNHILL is common.  The location in Ireland appears to be small (judging by the reference to a single shop in Wikipedia), and the reference to Thomas Dunhill is far from convincing that he was a famous composer, as alleged by the respondents.  We note that there is no evidence showing the number of Dunhills living in the UK (e.g. from telephone or electoral records).

31.  In Reed, Jacob LJ said, in giving an example of the failure of an own-name defence:

“110 Thus the English law of passing off abounds with cases where people have been prevented from using their own name.  This particularly happens when a scion of some well-known family business has sought to cash in on his name at the expense of that business, as for instance Dunhill (Dunhill v Sunoptic [1979] F.S.R. 426)…”

We find it of note that Dunhill was given as an example of a well-known (family) business.  Although the case was decided in 1979, the level of turnover given by the applicant’s witness in the present proceedings indicates that there is no reason to believe that the applicant’s business is any less well-known now.  The point here is that not only does the respondents’ evidence fail to prove that Dunhill is a common surname in the UK, the applicant’s evidence shows that Dunhill is well-known as signifying the applicant’s business.

32.  In the applicants’ names and in the company name, DUNHILL is the most memorable and distinctive feature.  It also has a significant level of reputation/goodwill in the UK as a business.  Taking all these facts into account, we do not agree with the respondents that adding a common forename, Richard, to Dunhill is enough to militate against a misleading connection with the applicant’s names.  The addition of London also does nothing to put a distance between the names, since it is the name of the capital city of the UK, known for selling all types of goods and (especially) luxury items; and because one of the names relied upon includes the word LONDON.  That there has been no confusion in the UK is unsurprising given that the respondents have not shown any evidence that the company name has come to the attention of the UK public.  
33.  We find that the names are similar under section 69(1)(b) of the Act.  

DEFENCES

34.  In the light of the applicant’s reputation/goodwill in the UK and our conclusion that there is sufficient similarity between the respective names, the application will succeed unless the primary respondent has a defence under one of the sub-sections of section 69(4) of the Act.  The primary respondent relies upon three defences:

•	Section 69(4)(b)(i): that it is operating under the name;

•	Section 69(4)(d): that the name was adopted in good faith;

•	Section 69(e): that the interests of the applicant are not adversely affected to any significant extent.

35.  As stated earlier in this decision, the applicant was granted permission to cross-examine Mr Altubayieb, who failed to appear at the hearing (either in person or via video conference) and so could not be cross-examined.  This was a conscious decision on the respondents’ part.  The implications are two-fold.  Firstly, because the onus is on the primary respondent to make good its defences, failure to appear for cross-examination casts doubt upon its willingness to stand by the defences.  Secondly, the primary respondent filed its evidence before the Tribunal by way of a witness statement from Mr Altubayieb.  The purpose of making a witness statement is to provide written testimony to facts, the maker of the statement putting himself forward as a witness to those facts. The applicant has made allegations in its application, the primary respondent has filed a defence and evidence to support the defence, but the respondents are unwilling to answer questions on the evidence; i.e. they have deprived the applicant of the opportunity to test the truth of the testimony upon which the respondents’ case rests.  Failure to appear for cross-examination therefore has a direct relationship with the weight to which the Tribunal gives the evidence filed by a witness who fails to appear without good reason.

Form CNA1.

36.  We are mindful that the adjudicator at the case management conference stated that, in the event that the witness did not appear for cross-examination, the evidence would stand but that the adjudicators may make inferences regarding his non-attendance.  We will address that point below, but we state here that the failure of Mr Altubayieb to appear in order that his evidence may be tested means that his evidence now has the status of hearsay evidence, which carries reduced weight.  When assessing what weight, if any, to give to the evidence, we take into account the criteria set out in section 4 of the Civil Evidence Act 1995:

“(1) In estimating the weight (if any) to be given to hearsay evidence in civil proceedings the court shall have regard to any circumstances from which any inference can reasonably be drawn as to the reliability or otherwise of the evidence.

(2) Regard may be had, in particular, to the following—

(a) whether it would have been reasonable and practicable for the party by whom the evidence was adduced to have produced the maker of the original statement as a witness;

(b) whether the original statement was made contemporaneously with the occurrence or existence of the matters stated;

(c) whether the evidence involves multiple hearsay;

(d) whether any person involved had any motive to conceal or misrepresent matters;

(e) whether the original statement was an edited account, or was made in collaboration with another or for a particular purpose;

(f) whether the circumstances in which the evidence is adduced as hearsay are such as to suggest an attempt to prevent proper evaluation of its weight."

37.  It must be borne in mind that the adjudicator heard the respondents’ arguments against attendance at a case management conference and decided that Mr Altubayieb must appear, issuing directions to that effect.  No reasons have been given for his failure to appear.  The consequences are potentially serious: where there are facts which can be tested or are in dispute, it puts the probity of the evidence in doubt, unless, for example, other evidence corroborates it.  In these proceedings, the only evidence has come from Mr Altubayieb.  In relation to the proof of good faith, in particular, the implications of doubtful probity are obvious.  Mr Altubayieb, by failing to appear to answer questions upon his written testimony, puts the credibility of his evidence in doubt and therefore the primary respondent’s defences, because they must be proved by evidence.  We consider that Mr Altubayieb’s failure to appear and failure to give any reasons (let alone good reasons) for failing to appear suggests an attempt to prevent proper evaluation of the weight of his evidence.  In these circumstances, we agree with the applicant that so little weight can be given to the evidence that the defences fail.  However, for the sake of completeness, we will, nevertheless look at the defences and the evidence that has been filed to meet them.

Is the company operating?

38.  It is a potential defence to the application, under section 69(4)(b)(i), if the primary respondent establishes that it was operating under the company name.  The relevant date for this purpose is the date on which the application for a change of name was made:  13 January 2017.  Mr Altubayieb states that the company is trading through the licencing of its brand to an agent in the Middle East to sell shemaghs and other garments and accessories in the Gulf Region.  However, as described above, the details relating to the licensee, the signatory and the company stamp have been redacted.  These are matters on which the applicant had requested permission to cross-examine Mr Altubayieb.  That a document is commercially sensitive does not prevent a party from requesting that its evidence is kept confidential (i.e. is not subject to public inspection), or from providing other documents such as invoices, order forms, turnover figures, royalty payments etc. that may support a claim that the party is trading. 

39.  The respondents have chosen to do none of this. There is no evidence of sales and no company accounts. There are no details as to why the primary respondent considers it has rights in trade marks and logos, such as trade mark registrations.  The most that can be taken from the licence is purported rights subsisting in unregistered trade marks, which raises more questions (which the applicant has been prevented from legitimately asking), for which there is no evidence.  At the hearing, Mr Pearson offered to hold up the licence so that we, and Mr Aikens, could see the company stamp, but not any other part of the redactions.  We declined this offer which was a) an attempt to circumvent the witness’ failure to attend for cross-examination and b) was an attempt to put in evidence not already in the proceedings, effectively hijacking the applicant.  However, even without the cross-examination issue, we consider that the evidence is insufficient to support a claim that the company was trading at the relevant date.  We are unable to conclude from the evidence that the primary respondent is trading and it cannot, therefore rely upon the defence.  

Was the company name adopted in good faith?

40.  Section 69(4)(d) provides a defence where the name was adopted in good faith.  The relevant date for this purpose is the date on which the name was registered which, in this case, is 26 April 2016.  It is for the primary respondent to show that it adopted its name in good faith; it is not for the applicant to show an absence of good faith (or presence of bad faith).

41.  In (1) Adnan Shaaban Abou-Rahmah (2) Khalid Al-Fulaij & Sons General Trading & Contracting Co v (1) Al-Haji Abdul Kadir Abacha (2) Qumar Bello (3) Aboubakar Mohammed Maiga (4) City Express Bank of Lagos (5) Profile Chemical Limited [2006] EWCA Civ 1492, Rix LJ commented upon the concept of good faith: 

‘48 The content of this requirement of good faith, or what Lord Goff in Lipkin Gorman had expressed by reference to it being "inequitable" for the defendant to be made to repay, was considered further in Niru Battery. There the defendant bank relied on change of position where its manager had authorised payment out in questionable circumstances, where he had good reason to believe that the inwards payment had been made under a mistake. The trial judge had (a) acquitted the manager of dishonesty in the Twinsectra or Barlow Clowes sense on a claim of knowing assistance in breach of trust, but (b) concluded that the defence of change of position had failed. On appeal the defendant bank said that, in the absence of dishonesty, its change of position defence should have succeeded. After a consideration of numerous authorities, this court disagreed and adopted the trial judge's broader test, cited above. Clarke LJ quoted with approval (at paras 164/5) the following passages in Moore-Bick J's judgment: 

"I do not think that it is desirable to attempt to define the limits of good faith; it is a broad concept, the definition of which, in so far as it is capable of definition at all, will have to be worked out through the cases. In my view it is capable of embracing a failure to act in a commercially acceptable way and sharp practice of a kind that falls short of outright dishonesty as well as dishonesty itself.”’

42.  In (1) Barlow Clowes International Ltd. (in liquidation) (2) Nigel James Hamilton and (3) Michael Anthony Jordon v (1) Eurotrust International Limited (2) Peter Stephen William Henwood and (3) Andrew George Sebastian the Privy Council considered the ambiguity in the Twinsectra Ltd v Yardley [2002] 2 AC 164 judgment. The former case clarified that there was a combined test for considering the behaviour of a party: what the party knew at the time of a transaction and how that party’s action would be viewed by applying normally acceptable standards of honest conduct. 

43.  The Act stipulates that “it is for the respondent to show” that it has a defence.  What must be shown is “that the name was adopted in good faith”.  An absence of evidence would put a respondent in a very difficult position because it has shown nothing.  Mr Altubayieb was to be cross-examined on his explanation for his choice of company name.  He alone can explain his motive in choosing the name.  His failure to appear means that his evidence is hearsay.  In relation to proving good faith, hearsay evidence which is uncorroborated by any other evidence is problematic because Mr Altubayieb’s evidence is in narrative form.  Furthermore, his failure to appear, having originally objected to appearing, and his failure to then provide any reasons why he would not appear, leads to questions as to whether “the circumstances in which the evidence is adduced as hearsay are such as to suggest an attempt to prevent proper evaluation of its weight” (Civil Evidence Act 1995).

44.  Mr Altubayieb states in the counterstatement:

“the name was adopted without any reference or thought of the applicant or its business, and at the time of its adoption I had no knowledge of the applicant’s business…the name …consists of a common English first name and common English surname…”.

45.  Whilst we agree that the name includes a common English first name (Richard), as stated earlier in this decision we do not accept that Dunhill is a common English surname.  This begs the question as to how Mr Altubayieb knew about the name.  Given that the results on the basic Facebook and Twitter searches that he filed showed the applicant as the first result, and that Mr Altubayieb states that he conducted searches into his proposed company name, we find that it is more than likely that he would have encountered the applicant’s name.  Furthermore, although it could be co-incidental that the first name Richard was chosen, in the absence of more specific information about where Mr Altubayieb searched for his chosen company name, we are left to wonder whether a search was made on Google.  If such a search was made, not only would the applicant have been one of the search results, but also Richard Dunhill, with obvious strong links to the applicant.  Consequently, even without Mr Altubayieb’s failure to attend for cross-examination to be asked about these matters, we are unconvinced about the sufficiency of his explanation.  The primary respondent cannot rely upon the defence that its name was adopted in good faith. 

Are the applicant’s interests adversely affected to any significant extent?

46.  The material date in relation to section 69(4)(e) is the date on which the application was made, 13 January 2017, as per the decision of the adjudicators in MB Inspection Limited v Hi-Rope Limited, BL/106/10 [2010] RPC 18:

“51) Section 69(4)(e) of the Act gives a defence if the interests of the applicant are not adversely affected to any significant extent. The terms of the defence are written in the present tense. An application to the tribunal can be made at any time, there is no time limit to lodge an objection to a company name. An application could be made where at the time of the registration of the company name the interests of the applicant were adversely affected, however, by the time of the application they no longer are. It would be perverse to deny a defence that relates to the position at the date of the application, where the ill had already been cured. In relation to section 69(4)(e) the matter should be judged at the date of filing of the application… .”

47.  The respondent submits that there parties are not in competition because the respondent’s products are sold by the licenced agent in the Kingdom of Saudi Arabia.  However, the primary respondent attached to the counterstatement a screenshot of an Arabic head cover bearing the applicant’s trade mark, which it states was from the applicant’s website.  The applicant states that it trades in Saudi Arabia.  Therefore, it appears that the parties are in competition, at least in relation to these goods.

48.  In any event, even if the respondent is intending to trade, or currently trading in, the field of shemaghs, there is nothing to prevent it from changing or expanding its business in future (or selling it to someone who will) to cover the same goods area as the applicant.  

49.  The onus is upon the primary respondent to establish that the interests of the applicant are not adversely affected to any significant extent, although an applicant who can show only a level of goodwill of little or no commercial significance would have difficulty succeeding against this defence.  In this case, we have found that the applicant has a considerable reputation/goodwill which extends to luxury goods.  Further, the names of the parties are similar to such a degree that we are not satisfied that use of the respondent’s name would not adversely affect the applicant to any significant extent. Consequently, we find that the primary respondent cannot rely upon this defence.  

Outcome

50.  The primary respondent cannot rely upon any of its defences.  Consequently, the application is successful.  In accordance with section 73(1) of the Act, the following order is made:

(a)	RICHARD DUNHILL LONDON LIMITED shall change its name within one month of the date of this order to one that is not an offending name; 

An “offending name” means a name that, by reason of its similarity to the name associated with the applicant in which he claims goodwill, would be likely to be the subject of a direction under section 67 (power of Secretary of State to direct change of name), or to give rise to a further application under section 69.

(b) RICHARD DUNHILL LONDON LIMITED and Abdullah Altubayieb each shall:

(i) take such steps as are within their power to make, or facilitate the making, of that change;

(ii) not to cause or permit any steps to be taken calculated to result in another company being registered with a name that is an offending name.

51.  In accordance with s.73(3) of the Act, this order may be enforced in the same way as an order of the High Court or, in Scotland, the Court of Session.

52.  In any event, if no such change is made within one month of the date of this order, we will determine a new company name as per section 73(4) of the Act and will give notice of that change under section 73(5) of the Act.

53.  All respondents, including individual co-respondents, have a legal duty under Section 73(1)(b)(ii) of the Companies Act 2006 not to cause or permit any steps to be taken calculated to result in another company being registered with an offending name; this includes the current company.  Non-compliance may result in an action being brought for contempt of court and may result in a custodial sentence.  

COSTS

54.  The applicant has been successful and is entitled to a contribution towards its costs, which includes an award relating to the case management conference to decide its (successful) request for cross-examination.  The applicant requested costs off the scale for the following reasons (taken from Mr Aikens’ skeleton argument):

“(1) It is conduct amounting to abuse of the Tribunal’s process for a Respondent director to refuse to comply with a direction requiring him to attend the hearing for cross-examination, in particular where no attempt has even been made to explain why he has chosen to ignore the direction.

(2)  If the Applicant’s submissions on the Respondents’ evidence are accepted, then it would follow that a large part of that evidence is untrue.  Again, the filing of untrue evidence would amount to an abuse of the Tribunal’s process.  This is precisely the sort of conduct that should result in an off-scale costs award.”

55.  In failing to attend for cross-examination, the primary respondent has turned its evidence into hearsay.  We have found the evidence to be, in any case, insufficient to support the defences claimed.  We are not inclined to find that the respondents’ behaviour warrants costs off the scale; costs awards are not intended to be punitive.  However, we recognise that, apart from the costs to the applicant of the case management conference, there will have been preparations made towards the cross-examination itself.  Accordingly, we will assess costs using the scale published at paragraph 10 of the Tribunal’s practice direction, but the award will be towards the top end of the scale in relation to the hearing:

Fee for filing the application £400

Fee for filing evidence x 2 £300

Fee for requesting a hearing £100

Preparing a statement and 
considering the counterstatement	 £400

Preparing evidence and considering
and commenting on the respondents’
evidence £1500

Case management conference £500

Preparing for and attending a hearing £1500

Total £4700

56. RICHARD DUNHILL LONDON LIMITED and Abdullah Altubayieb, being jointly and severally liable for the above costs, are ordered to pay Alfred Dunhill Limited the sum of £4700.  This sum is to be paid within 14 days of the period allowed for appeal or, if there is an appeal, within 14 days of the conclusion of the appeal proceedings (subject to any order of the appellant tribunal).

57.  Under section 74(1) of the Act, an appeal can only be made in relation to the decision to uphold the application; there is no right of appeal in relation to costs.

58.  Any notice of appeal must be given within one month of the date of this decision.  Appeal is to the High Court in England Wales and Northern Ireland and to the Court of Session in Scotland.  The Tribunal must be advised if an appeal is lodged so that implementation of the order is suspended.

Dated this day 17th of May 2018 

Judi Pike
Company Names
Adjudicator	
			
Al Skilton
Company Names
Adjudicator	

Christopher Bowen
Company Names
Adjudicator