Companies Act 2006

In the matter of application No. 1954 by WM Morrison Supermarkets PLC for a change to the company name of Morrisons Fresh Ltd, company registration SC 584549 

1. Company SC 584549 (“the primary respondent”) was incorporated on 29 December 2017 with the name Morrisons Fresh Ltd. On 5 March 2019, WM Morrison Supermarkets PLC (“the applicant”), filed an application to this Tribunal under section 69 of the Companies Act 2006 (“the Act”). 

2. 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 these 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.” 
3. In its application, the applicant requested that the primary respondent’s director, namely Riham George William Fransis be joined to the proceedings under the provisions of section 69(3) of the Act. Mr Fransis was given notice of this request and an opportunity to comment or to object. As the Tribunal received no comments or objections he was joined to the proceedings as a co-respondent on 15 April 2019 and made jointly and severally liable with the primary respondent for costs. In a letter dated 24 May 2019, the applicant’s then agents, DWF Law LLP, stated:

“We note that [Mr Fransis] has resigned and that Therese Elhamy Zaki Michael has been appointed as the sole director of [the primary respondent]. Accordingly, we are writing to request that the new director be joined into these proceedings.” 

4. On 5 June 2019, the Tribunal wrote to Ms Michael, allowing her until 19 June 2019 to comment upon the applicant’s request. As the Tribunal received no comments or objections, she too was joined to the proceedings as a co-respondent on 24 June 2019 and made jointly and severally liable with the primary respondent for costs. A review of the Companies House website at the time of writing this decision indicates that Ms Michael resigned as a director on 4 January 2021 and Mr Fransis was re-appointed as a director on the same date. However, as: (i) both individuals either are or have been directors of the primary respondent, (ii) both have participated in these proceedings (for example, Mr Fransis signed the Notice of Defence and Ms Michael provided a witness statement), and (iii) as neither objected to being joined to the proceedings, both are, in our view, jointly and severally liable for costs along with the primary respondent.   

5. The name associated with the applicant which caused it to make its application is “MORRISONS”. It states that:

“Wm Morrison Supermarkets plc is a publicly traded company on the London Stock Exchange which does business under the name “Morrisons”. Our client was established in 1899 and is the fourth largest chain of supermarkets in the UK. In the financial year ending February 2018, Morrison’s annual revenues grew from £16.3 billion to £17.3 billion. Our client employs over 110,000 people and serves customers across the UK with almost 500 stores and an online home delivery service. Morrisons won 7 awards at the 2017 Grocer Own Label Excellence Awards. As a result of its trading, Morrisons has a significant reputation and owns valuable goodwill.”
 
6. The applicant states that that the field of business in which the name upon which it relies has goodwill/reputation is:

“...retail and wholesale, in particular food and drink.” 

7. The applicant explains that it objects to the company name because:

“…[the primary respondent] has chosen a name which combines “Morrisons” and “Fresh”, the latter being a word used to describe a quality of produce. Under “Nature of business (SIC)” [the primary respondent] describes its business as “46310 – Wholesale of fruit and vegetables.” The company name is highly likely to mislead by suggesting a connection between it and the Applicant when there is no such connection…the applicant objects to Morrisons Fresh Ltd’s name under section 69(1)(b)…” 

8. The applicant indicates that it is claiming its costs and in response to question 7 on the Form CNA1 which reads:

“Did you warn the company that if it did not change its name that you would start legal proceedings against it? If “yes”, when did you warn the company?”,

the applicant states that it wrote to the primary respondent on 20 March 2018. 
	
9. The primary respondent filed a notice of defence dated 2 April 2019 (signed by Mr Fransis). It states:

“We would like to stress that the business name and company name were legitimately registered. The Companies House approved the name “Morrisons Fresh” to be registered taking into account that prior to granting an approval, the Companies House seek any similar company names and if any similar name existed, the name would not have been available for registration.
We would like to clarify that in order to avoid any confusion and misleading that would occur to the public between “Morrisons Fresh Ltd” and the Morrisons Supermarket; a disclaimer was added on the defendant’s website to emphasise and assure the fact that “Morrisons Fresh Ltd” is not a subsidiary of any company neither in the UK nor in the EU. That in return proves the good will and good intention to avoid the occurrence of such confusion and claimed connection between both companies. In addition that it eradicates any misleading and any suggestion of a connection between Morrisons Fresh; the defendant and the applicant.

“Morrisons Fresh Ltd” sic code is wholesale of fresh fruits and vegetables which has nothing to do with sic code of the retail sale under which Morrisons Supermarket is registered.”

10. The primary respondent further states:

“The defendant would like the applicant to provide evidence of the claims that a connection has ever existed between the defendant and the applicant.”

11. Having explained that “Last year in March, the applicant expressed his concerns about the domain name and revealed his desire to purchase our domain for Morrisons Fresh in addition to his request to seize the trading activity of the company…”, the primary respondent further states:

“The defendant is trading under the name Morrisons Fresh, which is the approved registered name by the Companies House and has never claimed any connection with Morrisons Supermarket not traded under Morrisons name. (our emphasis)

Due to the different nature of business between the defendant and the applicant, the claimed connection will never exist. The defendant is a wholesaler, while the applicant is a retailer and their target market and customers are entirely different. Thus, no suggestion of any connection would be built.

On the Companies House, there exists numerous companies that include the name “Morrisons” in their registered name with various sic codes apart from the defendant’s name.” 

12. In its Notice of Defence, the primary respondent indicates that it is relying upon defences based upon sections 69(4)(d) and (e) of the Act, i.e. good faith and the interests of the applicant are not adversely affected, respectively. It further indicates that it is claiming its costs.

13. In these proceedings, the applicant is now represented by Gateley Legal; the primary respondent represents itself. Both parties filed evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. Neither party requested a hearing, nor did they elect to file written submissions in lieu of attendance. 

14. On 10 March 2021, the Tribunal wrote to the primary respondent. It stated:

“The above proceedings have been reviewed before being passed to the Panel for a substantive decision to be issued.

Having done so, it is noted that in the Form CNA2 you state: “The defendant is trading under the name Morrisons Fresh…”. However, the corresponding box on the Form CNA2 which begins “that your company…is operating under the name…” has not been ticked.

Before proceeding, the primary respondent is allowed 14 days from the date of this letter to consider amending its Form CNA2 to regularise the discrepancy mentioned above and to confirm, by ticking the relevant box, whether it wishes to rely on a  defence based upon the company operating under the name.

If the primary respondent elects to amend its Form CNA2 in the manner indicated, it should provide the Tribunal with an amended page, which it should copy to the applicant. The applicant will then be allowed a period of 14 days from the date it receives a copy of any amended page filed in which to comment. 

If no response is received from the primary respondent in the timescale mentioned, the Panel may decide not to consider a defence based upon the primary respondent operating under the name…”

15. On 23 March 2021, the Tribunal received an amended Form CNA2 (completed by Ms Michael) in which the box relating to a defence based on, inter alia, “operating under the name” was ticked. As it transpired that the applicant did not receive a copy of the amended Form CNA2 until 30 March 2021, the applicant had until 13 April 2021 in which to comment. In an email dated 13 April 2021, the applicant explained that it had “no comment in respect of the respondent’s amendment.”

EVIDENCE

The applicant’s evidence-in-chief

16. This consists of a witness statement, dated 13 June 2019, from Ed Meikle accompanied by exhibits EM1 and EM2 in support. Exhibit EM1 contains evidence relating to the applicant and, broadly speaking, exhibit EM2, evidence relating to the primary respondent. At that point in time, Mr Meikle was a partner at DWF Law LLP; he is now in the employ of Gateley Legal, the applicant’s new professional representatives. The main points emerging from his evidence are as follows:

•	Between January 2015 and October 2018, the applicant was the fourth largest chain of supermarkets in the UK and is a publicly traded company on the London Stock Exchange; 

•	It trades under the name “MORRISONS” through nearly 500 stores and online at morrisons.com;

•	The applicant was founded in 1899 by William Morrison and began trading from a market stall in Bradford under the name “Wm Morrison”; that name became abbreviated further by its customers to “Morrisons”;

•	The trading style “Morrison’s” was formally adopted by the applicant in 1958 when its first shop was opened;

•	In 1961 the name changed to “Morrisons” when the applicant opened its first supermarket;

•	The applicant has used the word “Fresh” “in relation to its branding and marketing for a number of years”;

•	The applicant adopted the word “Fresh” in 2007 in respect of its slogan “Fresh Choice for You” and subsequently used “Eat Fresh, Pay Less” from 2010 onwards”; 

•	The words “Fresh choice for you” appeared on the applicant’s sleeper cabs from 2007 onwards; in 2010, the livery was updated to reflect the “Eat fresh Pay less” strapline;

•	In 2014, the applicant adopted the “Fresh from Morrisons” slogan. In store signage was also updated to include the word “Fresh”; 

•	In 2014, the applicant launched an online food delivery service with Ocado;

•	“Fresh” has been used on the applicant’s carrier bags since 2015;

•	In 2016, the applicant began using the slogan “Morrisons Makes it”, with the word “Fresh” featuring heavily in relation to delivering the message “Morrisons Makes it freshly”;    

•	In 2016, the applicant launched a same day delivery service with Amazon;

•	In 2016, the applicant’s wholesale division was established;

•	In the 2016/2017 Annual Report it states: “We are a wholesaler providing our products to retail partners and third parties”;

•	In August 2017, the applicant entered a “long term supply deal” with local retailer McColls which “saw the applicant become the sole supplier to McColl’s newsagents and convenience stores”; 
•	Since its establishment in 2016, the applicant’s wholesale division has grown and the applicant “recently reported that it has reached the milestone of £700m annualised wholesale supply sales during the 52 week period to 3 February 2019”; 

•	Inter alia, the applicant’s wholesale deals with Amazon and McColls led to a 5.8% rise in total sales in 2017;

•	The applicant’s annual revenue for the financial years ending February 2018, January 2017 and January 2016 were: £17.3bn, £16.3bn and £16.1bn, respectively;

•	The applicant currently employs over 110,000 people providing both retail and wholesale services. In the two years preceding the primary respondent’s incorporation, the applicant employed over 112,000 and 120,000 people respectively;

•	Between 2015 and 2017 the applicant won a range of awards at industry events;  

•	The applicant owns a portfolio of trade marks for the word “MORRISONS”, which are registered for a wide range of goods and services which include fresh fruits and vegetables in class 31.

17. The applicant states that it suspects:

“20…the offending company name was adopted by the respondent to commit fraud. After [the primary respondent] was established, the respondent created a website at www.morrisonsfresh.com purportedly offering wholesale food services and incorporated a company in the United Kingdom [i.e. the primary respondent]. At Companies House, the respondent describes the nature of its business as “wholesale of fruit and vegetables.” The applicant offers the same services, having established a wholesale division in 2016…” 		 	

18. Exhibit EM2 consists of pages (480-490) from www.morrisonsfresh.com with a printing date of 20 March 2019. The following text appears in the pages provided:

	“Welcome to Morrisons Fresh
We’re a grower. We’re a wholesaler. We’re an importer. We’re a ripener, a packer and a provider of logistics solutions. Managing categories, managing products. We do it all, every day. With brilliant, committed staff and top quality fresh produce.”

And:

“We work with UK retailers, wholesalers, online supermarkets and even retailers abroad…In our stores in Kent, we have a range of different packaging machines…Morrisons Fresh has established an unparalleled infrastructure for the storage and distribution of our imported and local produce…Working in the field with growers all around the world…Our packhouse and warehouse team are experts in carefully handling produce, carefully looking after each fruit from inloading to outloading…”

Under the heading “Products” the following appears:

“A formidable fresh produce partner for retailers and growers alike. Broad product range, a global network, huge operational capacity and business process excellence make for an unrivalled commercial proposition…top fruits, tropical fruits, grapes, berries, onions and garlic, citrus, stone fruits, vegetables.” 

19. The applicant states:

“21. Emails using the offending company name from the respondent to food suppliers were brought to the attention of the applicant…”  

20. Page 492 of exhibit EM2 consists of an email which appears in Annex A to this decision. 

21. On 20 March 2018, DWF LLP sent a cease and desist letter to the primary respondent, allowing it until 3 April 2018 to comply. The letter makes it clear that failure to comply will result in the commencement of legal proceedings without further notice. The applicant explains that:
“21…Despite an exchange of emails, the respondent refused to comply with the applicant’s requests.” 

22. The applicant further explains that it:

“22…instructed a private investigator to contact the respondent to enquire about purchasing food from it but despite a number of attempts to enquire about placing an order by email and by telephone, the respondent never replied. We now believe that is because it is not in fact a food wholesaler and so unable to supply any food.” 

23. The applicant further states:

“23. When another email exchange between the respondent and a food supplier was forwarded to the applicant, the applicant was alarmed to see that it was the opinion of one of the suppliers that this must be the work of a fraudster as the respondent could not possibly need as many limes as it was requesting…”

24. The email, which is dated 10 January 2019, refers to the email in Annex A; it can be seen in Annex B to this decision.

25. Having explained that the applicant has never sought to purchase the primary respondent’s domain name it states:

“25…It is submitted that the respondent adopted the offending company name having in mind the applicant’s trade mark and the services it offers.”   

The primary respondent’s evidence

26. This consists of a witness statement, dated 15 August 2019, from Therese Michael, accompanied by exhibit MF1. Ms Michael states:

“1. I act for and am fully authorised to make this statement on behalf of the [primary respondent]…”.

27. The main points emerging from Ms Michael’s statement are as follows:

•	The primary respondent’s name “was legitimately registered by the Companies House”;

•	The primary respondent “added a disclaimer on his website to emphasise and assure the fact that “Morrisons Fresh Ltd” is not a subsidiary of any company neither in the UK nor in the EU”. Page 14 of exhibit MF1, taken from morrisonsfresh.co.uk and dated 14 August 2019, reads:

“Disclaimer: Morrisons Fresh is not a subsidiary for any company in the UK or in the EU.”

•	In February 2018, “the applicant without any prior notice or warning approached the respondent’s host service provider with false accusations that the latter was illegitimately using the host service”;

•	A letter from the applicant dated 18 April 2018 (which refers to an email from the primary respondent dated 2 April 2018) and the primary respondent’s response dated 25 April 2018 are provided at pages 18-23;  

•	There are over 120 companies in the UK with registered names which include the word “Morrisons” with the “majority of those companies incorporated years after the applicant company was incorporated and registering its name” (pages 15-16); 

•	The respective parties’ nature of business (SIC) are “entirely different”. The primary respondent’s code relates to the “wholesale of fresh fruits and vegetables” (page 4), whereas the applicant’s SIC code relates to “Retail sale in non-specialised stores with food, beverages or tobacco predominating” (page 17);

•	The nature of the parties’ businesses and products offered are different as are the respective customers;

•	The primary respondent is known by its company name and “imports and supplies fresh produce from various countries”;

•	The primary respondent states that pages 24-26 of exhibit MF1 consist of “a sample of the import entry acceptance of some of the respondent’s imports, where that presents evidence in connection with a bona fide offering of goods by the respondent in addition to evidence that the respondent is commonly known by the company name.”

28. The four pages provided can be seen in Annex C to this decision. 

29. In relation to the email referred to in Annex A, the primary respondent states: 

“8…The email is a normal business email and shows no indications of any infringement nor passing off. The respondent has received several emails from his suppliers as gratitude and praise for the ongoing business relations and the prospers for the forthcoming business.”
 
We note that no such emails have been provided.

•	The primary respondent has never “received any queries whether it is connected or related to the applicant.”

30.  In relation to the email at Annex B, the primary respondent states:

“9…it is assumed that the email was not sent from any growers/suppliers being confused over both the respondent’s and the applicant’s companies based on the tone and style of the email. That seems to be just an opinion originating from a company that seems to be operating in the same field in the UK as the respondent…that email would be considered as bias evidence due to the fact that there would exist conflict of interests between the respondent and the sender of the referred email and the suggested opinion is out of competitiveness.”

The applicant’s evidence-in-reply

31. This consists of a further statement, dated 30 October 2019, from Mr Meikle. Insofar as it contains submissions rather than evidence, we shall keep those submissions in mind but do not need to record them here. Mr Meikle refers to the decision of the World Intellectual Property Organization’s (“WIPO”) Administrative Panel, dated 11 May 2019, in a dispute between the same parties in relation to the domain name morrisonsfresh.com, a copy of the decision is provided in exhibit EM3. Although the complaint was denied, we note that in its decision, the Panel states:

“The Panel expressly notes that the present case is one in which future events, including, but not limited to the outcome of the [applicant’s] pending complaint before the Company Names Tribunal, new evidence not presently available, or future conflict between [the parties], may provide justification for a refiled complaint.” 

32. Mr Meikle states that on the same day as the Panel issued its decision, the primary respondent registered the domain name morrisonsfresh.co.uk. He adds that it has come to his attention that the “whois” records for morrisonsfresh.com have been updated with the registrant name recorded as Morrisons Fresh Imports Canada. He states that a search of the Internet in relation to Morrisons Fresh Imports “has produced no results other than a link to the respondent’s co.uk website.” He explains that a search for:

“5…a Federal Corporation on the Government of Canada website suggests that no such entity exists…a search of the address at which the respondent claims its business is registered is not an address at which the import of fresh food could be supported, but rather it is a virtual office address.” 

Documents in support of the various claims made are provided in exhibit EM3.

33. In response to Ms Michael’s comments in paragraph 30 above, Mr Meikle states:

“9...This is incorrect. The email was received by the applicant from a concerned supplier who had been contacted by a number of growers who had received emails from the respondent which appear fraudulent.”

34. That concludes our summary of the evidence filed to the extent we consider necessary.

DECISION

35. 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 primary respondent’s name suggesting a connection between the applicant and the primary respondent. If this burden is fulfilled, it is then necessary to consider if the primary respondent can rely upon defences under section 69(4) of the Act. 

The applicant’s goodwill/reputation

36. Section 69(7) of the Act defines goodwill as a “reputation of any description”. 
Consequently, in the terms of the Act it is not limited to Lord Macnaghten’s classic
definition in IRC v Muller & Co’s Margerine Ltd [1901] AC 217:	
 
“What is goodwill? It is a thing very easy to describe, very difficult to define. It
is the benefit and advantage of the good name, reputation, and connection of
a business. It is the attractive force which brings in custom. It is the one thing
which distinguishes an old-established business from a new business at its
first start.” 

37. The relevant date is the date of incorporation of the primary respondent which, in this case, is 29 December 2017. The applicant must show that it had a goodwill or reputation at this date associated with the name “MORRISONS”.
 
38. The applicant claims it has goodwill/reputation in the name “MORRISONS” in “the field of retail and wholesale, in particular food and drink”. There is nothing to suggest that with the exception of the reference to “wholesale”, the primary respondent takes any issue with that claim. As the evidence shows, there can be no doubt that by the relevant date, the applicant had goodwill in the name “MORRISONS” in relation to, broadly speaking, its operation of a retail supermarket both in physical stores and on-line in relation to the areas identified. 

39. As to the applicant’s activities as a wholesaler, the evidence indicates that its wholesale division was established in 2016 and its 2016/2017 Annual Report indicates that as well as being a retailer the applicant is “a wholesaler providing our products to retail partners and third parties.” In February 2016, it was reported by bbc.co.uk that the applicant signed a deal to “supply fresh, frozen and non-perishable goods to Amazon customers” and in August 2017, the applicant agreed “a long term supply deal with local retailer McColls…”; the deal, which involved 350 McColl’s newsagents and 1,300 convenience stores, began in January 2018. By 3 February 2019, “annualised wholesale supply sales” had reached £700m. 

40. In relation to establishing a goodwill/reputation, this Tribunal routinely looks for guidance to case law developed in trade mark proceedings. In such proceedings, it is well-established that goodwill of more than a trivial nature, even if it is small, is capable of protection (Stacey v 2020 Communications [1991] FSR 49 refers). Although only commencing in 2016, applying the guidance mentioned above, we are prepared to accept that by the relevant date in these proceedings the applicant would also have acquired a protectable goodwill in relation to its activities as a wholesaler of food and drink. However, even if we are wrong in that regard, we shall keep in mind the applicant’s goodwill/reputation mentioned in paragraph 38 above and what we regard as the close relationship between the retail and wholesale of food and drink. 
	
Similarity of names

41. The other initial burden facing the applicant is that the primary respondent’s name is
sufficiently similar to “MORRISONS” to suggest a connection between the primary respondent and the applicant. The primary respondent’s name is Morrisons Fresh Ltd. In addition to the word “Morrisons”, the primary respondent’s name includes the words “Fresh” and “Ltd.” Given the primary respondent’s “nature of business” as disclosed on the Companies House website i.e. “wholesale of fruit and vegetables”, the word “Fresh” would, in our view, be regarded as descriptive of the nature of the goods mentioned and the word “Ltd” simply indicates the primary respondent’s legal status; these words are not distinctive.   

42. As the word “Morrisons” is the only distinctive component of the primary respondent’s name, we are satisfied that the primary respondent’s name is to be regarded as sufficiently similar to the name upon which the applicant relies and in relation to which the applicant has generated goodwill such that its use in the UK would be likely to mislead by suggesting a connection between the primary respondent and the applicant. As the ground specified in subsection 69(1)(b) is established, the onus switches to the primary respondent to establish whether it can rely on any of the defences pleaded in the Notice of defence.

Defences

43. The statutory defences under section 69(4) are set out at the beginning of this
decision. Section 69(4)(b) of the Act indicates that the primary respondent may have a defence if:

“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.”

44. The relevant date in this regard is the date of the filing of the application to this Tribunal i.e. 5 March 2019. We begin by noting that there is no suggestion that the provisions of section 69(5) of the Act are relevant in these proceedings. In its amended Form CNA2 the primary respondent confirmed it is relying upon a defence based upon section 69(4)(b)(i) of the Act. 
   
45. The evidence contains pages from the primary respondent’s websites i.e. morrisonsfresh.com and morrisonsfresh.co.uk, all of which are from after the relevant date. The pages provided portray the primary respondent as a significant commercial entity that works with UK retailers, wholesalers and online supermarkets from what appears to be a base in Kent. It has, it states, “an unparalleled infrastructure” and is “a formidable fresh produce partner for retailers and growers alike.” Contact details including a postal and email address i.e. 8 Albany Street, Edinburgh, EH1 3QB, UK and info@morrisonsfresh.com and info@morrisonsfresh.co.uk respectively are provided.

46. The evidence also contains an email (Annex A)  from the primary respondent to an unknown recipient dated, it appears, 27 June 2018, in which the primary respondent is  enquiring as to whether the recipient can fulfil orders for limes. Although the email of 10 January 2019 (Annex B) appears to cast some doubt on the email of 27 June, the identity of the individual making the comments has not been disclosed nor has any evidence been provided on his/her ability to reach the conclusions he/she has.   

47. The undated Quarantine Release Certificate (which bears a reference to “PH QRC…ver 3.0 oct 2018” in the bottom right-hand corner) contains the primary respondent’s name and address (under the heading “importer”) although we note the exporter’s name and agent details have been redacted.  The goods concerned are identified as 23,760kg of “Limes” with the “Point of Entry”/“Place of Inspection” identified as “London Gateway Port Limited.” Although heavily redacted, the primary respondent is also identified in the supporting paperwork (one page of which is headed “Import Entry Acceptance Advice”) as are references to “Limes” and Felixstowe. The supporting paperwork contains various dates in December 2018 and an “Invoice Total” of “26166,00 GBP”; that is a not insignificant sum.  

48. In relation to the Quarantine Release Certificate issued by DEFRA and the supporting paperwork the applicant states:

“8…Ms Michaels statement refers to documents she describes as “evidence in connection with a bona fide offering of goods by the respondent in addition to evidence that the respondent is known by the company name.” A Quarantine Release Certificate is not evidence that the respondent is known by a particular name. Neither document is a “bona fide offering of goods.” 

49. Although described by the primary respondent as “a sample of the import entry acceptance of some of the respondent’s goods…”, no further evidence or submissions have been provided of other similar transactions that have taken place. That is surprising given the impression conveyed by the primary respondent’s website. We also note that the primary respondent has provided no evidence in support of its comment that it “has received several emails from his suppliers as gratitude and praise for the ongoing business relations…” nor has it responded to the applicant’s claims that its private investigator was unable to place an order by either email or telephone because the primary respondent never replied. 

50. There is, however, no evidence (or submissions) to suggest that the Quarantine Release Certificate and supporting documentation is anything other than genuine. Thus it appears that in December 2018, the primary respondent imported limes into the UK. However, the documentation provided is highly redacted and no evidence or even an explanation is provided as to what happened to the goods once imported, for example, when and to whom they were sold. In addition, there is, for example, no evidence given of the number or type of customers the primary respondent enjoys in the UK nor is any indication given of the revenue generated under the company name or the efforts made to promote it. This, in our view, is the sort of information that ought to have been readily available to the primary respondent, particularly given the manner in which it describes itself on its websites. 

51. Although evidence of what appears to be a single transaction may, in certain circumstances, be regarded as sufficient to make out a defence based upon “operating under the name”, without further evidence of the type mentioned above, we are not persuaded that on the basis of the evidence provided by the primary respondent in these proceedings that defence has been established. As a consequence, the defence based upon section 69(4)(b)(i) of the Act fails.    

The other defences being relied upon

  	Section 69(4)(d) – “that the name was adopted in good faith.”

52. It is evident from the wording of s.69(4) of the Act that the onus is on the primary respondent to show that the contested name was adopted in good faith. The relevant date for this defence is the date on which the company name was adopted i.e. 29 December 2017. 

53. The following principles in relation to good faith can be extracted from the judgments of the Privy Council in Barlow Clowes v Eurotrust International Ltd [2005] UKPC 37 and the Court of Appeal in England and Wales in Niru Battery Manufacturing v Milestone Trading Ltd [2003] EWCA Civ 1446:
(i) Good faith is a broad concept which includes a failure to act in a commercially acceptable way. It includes sharp practice which falls short of outright dishonesty, and also dishonesty itself - see Niru Battery at para 164.

(ii) There is a combined subjective/objective approach to the honesty of a party’s behaviour. This involves (i) a consideration of what the party knew at the time of a transaction and (ii) how that party’s action would be viewed by applying normally acceptable standards of commercial behaviour - see Barlow Clowes paras 15–18, 28–32.
54. Our task is: (a) to determine what the primary respondent knew at the time the contested name was adopted, and (b) whether the adoption of the name would be viewed as commercially acceptable behaviour when judged objectively. This means how reasonable men and women in the field would view the primary respondents’ behaviour (i.e. not simply how the primary respondent viewed its own actions).
What did the primary respondent know when it adopted the name?
55. The primary respondent adopted its name in December 2017. By that time, it would, or should have known that the applicant was conducting a trade in the UK under the name “MORRISONS” and had done so for many years. In addition, by the time the contested name was adopted, “MORRISONS” had become a household name in relation to, at the very least, its operation of a retail supermarket (both in physical form and on line) selling, inter alia, food and drink.  
Were the primary respondent’s actions commercially acceptable?  
56. As we mentioned earlier, the onus is on the primary respondent to show that the contested name was adopted in good faith. Although it is true that “MORRISON” is a not uncommon surname in the UK, no evidence has been provided by the primary respondent which indicates why, when incorporating a company in the UK which intended to conduct a trade in the “wholesale of fruit and vegetables”, the primary respondent selected a company name which incorporated the name “MORRISONS”. This is, for example, not one of those cases where one of the primary respondent’s directors has the surname “MORRISON”. Although the primary respondent places some importance on the fact that it is a wholesaler, as the applicant’s evidence shows, it also provides wholesale services having established a division in this regard in 2016. However, even if that were not the case, we remind ourselves that earlier in this decision we concluded that there is a close relationship between the applicant’s retail services relating to food and drink and the wholesale of foodstuffs. 
57. We now have to decide how a reasonable person in the field would regard the primary respondent’s actions when confronted with that factual matrix. Adopting a company name which contained as its only distinctive component a word which was identical to that used by a long-established and highly successful business in the UK in, at the very least, such a closely allied area of trade (i.e. wholesaling of foodstuffs) would, in our view, be regarded by a reasonable person in the field as falling below commercially acceptable standards. 
58. Finally, insofar as the disclaimer which was added to the primary respondent’s website is concerned, we remind ourselves that this reads: “Morrisons Fresh is not a subsidiary for any company in the UK or in the EU.” Although the primary respondent characterises the inclusion of this disclaimer as indicating its “goodwill and good intention”, the fact that the primary respondent felt it necessary to add such a disclaimer represents, in our view, a prima facie acceptance on its part that its company name was likely to be associated with the applicant. The defence based upon section 69(4)(d) of the Act fails.  
59. The final defence is based upon:
Section 69(4)(e) – “that the interests of the applicant are not adversely affected to any significant extent.”
60. To affect adversely the interests of the applicant to any significant extent the company name must do more than just sit on the register at Companies House. The onus is on the primary respondent to show why its company name does not adversely affect the applicant’s interests to any significant extent. The onus is not on the applicant.
61. The primary respondent’s defence appears to be based upon the fact that there are other registered companies which incorporate the name “MORRISONS” and that the primary respondent is a wholesaler not a retailer. We have already accepted that “MORRISON” is a not uncommon surname in the UK. As a consequence, the fact that the Companies House register contains a range of entries containing this surname (many of which appear to be in unrelated areas of trade), for example, “Morrisons Auto Body Repair Limited”, “Morrisons Bookmakers Limited” and “Morrisons Heating Services Ltd” (to name but a few) is unsurprising; the state of the Companies House register in this regard does not  assist the primary respondent.  As we have already commented upon what we regard as the close relationship between conducting a retail and wholesale trade in, inter alia, foodstuffs, that too does not assist the primary respondent. 
62. That being the case and as the applicant has been a wholesaler since 2016, diversion of trade from the applicant to the primary respondent is a real possibility. However, even if that were not the case, a customer who is dissatisfied with the primary respondent’s products and services might be dissuaded from using the applicant’s retail services, resulting in the applicant losing control over its own reputation. Finally, there is also the injurious association the applicant is likely to suffer if the manner in which the primary respondent conducts its business (not responding to enquiries for example) is below the standards to which the applicant’s customers have become accustomed. As all of the factors we have identified will, in our view, affect the applicant’s interests to a significant extent, the defence based upon 69(4)(e) also fails. 

Overall outcome

63. As we have dismissed all of the defences, the application succeeds.
64. Therefore, in accordance with section 73(1) of the Act, we make the following order:

(a) MORRISONS FRESH LTD shall change its name within one month of the date of this order to one that is not an offending name; 

(b) MORRISONS FRESH LTD, Riham George William Fransis and Therese Elhamy Zaki Michael 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.
65. In accordance with Section 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.
66. 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.
67. All respondents, including Mr Fransis and Ms Michael, have a legal duty under Section 73(1)(b)(ii) of the Act 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

68. As the applicant has been successful, it is entitled to a contribution towards its costs, based upon the scale of costs published in paragraph 10.1 of the Practice Direction:	
	
Filing the application and reviewing the defence:	£400
Fee for filing the application:				£400
Filing evidence and considering the other		£800 
side’s evidence:		
Fee for filing evidence:					£150	
	Total: 								£1750  

69. We order Morrisons Fresh Ltd, Riham George William Fransis and Therese Elhamy Zaki Michael (jointly) to pay WM Morrison Supermarkets PLC the sum of £1750 within 21 days of the expiry of the appeal period, or within 21 days of the final determination of this case if any appeal against this decision is unsuccessful. 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.

70. Any notice of appeal against this decision 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.  

71. The company adjudicator must be advised if an appeal is lodged, so that implementation of the order is suspended.

Dated this 13th day of May 2021

Christopher Bowen		Stephanie Wilson	  	Teresa Perks 

Company Names 		Company Names  		Company Names
Adjudicator   			Adjudicator			Adjudicator

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.

Annex A

Annex B

											

Annex C