Passing-off: can a claimant rely on goodwill in a brand it has not actually used?

Posted: 16/02/2024

In a recent IPEC decision, Prysmian Cables & Systems Limits v M/S Apple International [2023] EWHC 2176 (IPEC), the court had to consider whether the claimant had any goodwill in a brand that had not been used for many years.

The claimant (Prysmian) is a UK-based company which sells cables under the brand BICON. It brought a passing-off claim against the defendant, which used the brand ‘BICC Components’ in relation to its website and/or products. Prysmian was ultimately unsuccessful, because it could not prove it owned goodwill in the BICC name. Additionally, it was not able to show that there was any ‘residual goodwill’ in the BICC name.

Ownership of goodwill in the BICC name was complicated by a series of transactions. The history of the BICC name goes back as far as 1945, but in 1999 the BICC cables business was sold by BICC Plc to General Cable Corp, and then in 2000 the business was sold on by General Cable Corp to Pirelli SpA. Subsequently, shares in Pirelli were purchased by the claimant.

The IPEC held that the goodwill in the BICC name had not been validly transferred to the claimant. Although it was not completely clear from the documents whether goodwill had been transferred by the 1999 and 2000 transactions, the evidence was that Pirelli undertook the rebrand to BICON because it could not use the BICC name.

Even if goodwill had been transferred, the BICC name had not been used since the rebrand, and the claimant had only ever used the BICON name. The court considered whether goodwill could survive such a long period of non-use.

The claimant and its predecessors had made efforts to preserve the reputation of the BICC brand and communicate to consumers that BICON was the successor to BICC. The original brand was still remembered in the industry - which was why the defendant had sought to link its products to the BICC heritage. However, reputation was not the same as goodwill. For goodwill to exist, there must be customers based in the UK. Although many of Prysmian’s customers were UK-based, they were buying products branded BICON, not BICC.

Although Prysmian produced some evidence that a few people in the industry connected BICON with the original BICC brand, this was not sufficient to show that customers did so generally.

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