Sir Robert McAlpine Ltd. v Alfred McAlpine Plc [2004] EWHC 630 (Ch) (31 March 2004)

Sir Robert McAlpine Ltd. v Alfred McAlpine Plc [2004] EWHC 630 (Ch) (31 March 2004)

Alfred's use of 'McAlpine' without a distinguishing prefix constitutes a misrepresentation in the relevant commercial areas, as the name is capable of referring to Robert and the rebranding creates a real likelihood of damage to Robert's goodwill through dilution and false association. The law of passing off protects against such misrepresentation and damage, even absent direct loss of sales.

Citation
[2004] EWHC 630 (Ch)
Parties
Claimant: Sir Robert McAlpine Limited; Defendant: Alfred McAlpine Plc
Jurisdiction
England and Wales
Judgment Date
31 March 2004
Procedural Posture
Passing Off Action / Final Judgment After Speedy Trial
Outcome
Claim upheld; injunction granted
Legal Topics
Passing Off, Goodwill, Misrepresentation, Branding, Joint Ownership of Goodwill
Intellectual Property Commercial Law Passing Off Goodwill Misrepresentation Branding Joint Ownership of Goodwill

Case Brief

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Parties

Sir Robert McAlpine Limited

Claimant

Alfred McAlpine Plc

Defendant

Procedural Posture

Passing Off Action / Final Judgment After Speedy Trial

Legal Issues

  1. 1 Whether Alfred McAlpine Plc's rebranding to 'McAlpine' without a distinguisher amounts to passing off against Sir Robert McAlpine Limited
  2. 2 Whether the use of 'McAlpine' by Alfred constitutes a misrepresentation to the relevant public
  3. 3 Whether Sir Robert McAlpine Limited is likely to suffer damage as a result of Alfred's rebranding

Ratio Decidendi

Alfred's use of 'McAlpine' without a distinguishing prefix constitutes a misrepresentation in the relevant commercial areas, as the name is capable of referring to Robert and the rebranding creates a real likelihood of damage to Robert's goodwill through dilution and false association. The law of passing off protects against such misrepresentation and damage, even absent direct loss of sales.

Court Disposition

Claim upheld; injunction granted

Orders

  • Alfred McAlpine Plc is restrained from carrying on business in construction, civil engineering, Private Finance Initiative, property development and capital projects services under or by reference to the name 'McAlpine' without the addition of 'Alfred' in substantially equal prominence or some other adequate...
  • Alfred McAlpine Plc is restrained from passing off services not associated with Sir Robert McAlpine Limited as those of or associated with the Claimant.