Jewellery designer wins passing off claim against rival

A jewellery designer who had built up a strong brand reputation has won a passing off claim against a new business using a similar name.

Sam Lyon Head of Corporate & Commercial reports on this recent case.

The Intellectual Property Enterprise Court heard that Alyssa Smith started out as a sole trader in 2009, using the trading signs Alyssa Smith Jewellery, Alyssa Jewellery and @alyssajewellery.

She attracted media attention, with her jewellery being worn by celebrities and winning numerous awards. She used social media to market her products and launched a website.

In June 2012, the business was incorporated, and it began trading using the same signs the following month.

Smith then discovered that another jewellery designer, Alisa Goodstone, was trading under Alyssa Jewellery Design, or simply Alyssa with a little heart design, and with a Twitter handle @Alyssabracelet

Goodstone told the court that she started making bracelets for family and friends in December 2012 and that she had wished to use a name for her business other than her own name Alisa, but close to it, to maintain her privacy.

She was unable to specify when she chose her trading name or began using it.

The court found in favour of Alyssa Smith.

It held that Smith had goodwill in the signs before December 2012, so prior to Goodstone commencing use. Smith had traded in a modest way using those signs from 2009 to 2012 as a sole trader then as a company.

Although turnover had been low between 2009 to 2012, the level of interest in the business had been disproportionately high and the awards had raised the profile, and thus the goodwill, of the business.

Despite the court’s conclusion that it was more likely than not that Goodstone had been aware of Smith’s signs, it was not persuaded that she had chosen the name for her business with the deliberate intention of passing off her business as that of Smith.

However, it was not necessary to prove that she had intended to misrepresent her goods if there was a likelihood that the public had been or was likely to be deceived by her acts. Members of the public were more likely to recall the relatively unusual name Alyssa than the other elements of Smith’s signs which were commonplace or descriptive; and that name was also the most distinctive part of the Goodstone’s signs.

Both parties were using the signs in relation to jewellery businesses. The differences between their goods, whether of theme or price, would not be obvious to the average consumer or help them distinguish between the two businesses.

They both sold from their websites and social media. Neither had an especially striking web design or used a particularly distinctive style to present their goods, and consumers would not necessarily think that they were looking at a different (as opposed to an updated) website.

They were also unlikely to look closely at a domain name or differences in the purchasing process to distinguish them.

Overall, there was no doubt that Goodstone’s use of such highly similar signs in relation to essentially identical goods sold in very similar ways, amounted to a misrepresentation and would be likely to lead to confusion and deception.

If you would like advice about litigation and protecting your business please contact Sam on 01228 516634.