Bhayani & Anor v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 December 2016)

Bhayani & Anor v Taylor Bracewell LLP [2016] EWHC 3360 (IPEC) (22 December 2016)

Ms Bhayani does not own any relevant goodwill generated during her employment or partnership with Taylor Bracewell; such goodwill vests in the firm. Therefore, she has no realistic prospect of success in her passing off claim. However, the claim for revocation of the trade mark under s.46(1)(d) of the Trade Marks Act 1994 has a realistic prospect of success and should proceed to trial.

Citation
[2016] EWHC 3360 (IPEC)
Parties
Claimant: Juthika Bhayani; Claimant: Bhayani Law Limited; Defendant: Taylor Bracewell LLP
Jurisdiction
England and Wales
Judgment Date
22 December 2016
Procedural Posture
Intellectual Property and Passing Off Claim / Application for Summary Judgment/strike Out
Outcome
Summary judgment granted in favour of Taylor Bracewell on the passing off claim; claim for trade mark revocation to proceed to trial.
Legal Topics
Passing Off, Goodwill Ownership, Trade Mark Revocation, Partnership Agreements
Intellectual Property Contract Law Employment Law Passing Off Goodwill Ownership Trade Mark Revocation Partnership Agreements

Case Brief

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Parties

Juthika Bhayani

Claimant

Bhayani Law Limited

Claimant

Taylor Bracewell LLP

Defendant

Procedural Posture

Intellectual Property and Passing Off Claim / Application for Summary Judgment/strike Out

Legal Issues

  1. 1 Whether Ms Bhayani owns goodwill sufficient to found a passing off claim against Taylor Bracewell
  2. 2 Whether Taylor Bracewell is entitled to use the 'Bhayani Bracewell' trading name under the partnership agreements
  3. 3 Whether the 'Bhayani Bracewell' trade mark is liable to mislead the public and should be revoked under s.46(1)(d) of the Trade Marks Act 1994

Ratio Decidendi

Ms Bhayani does not own any relevant goodwill generated during her employment or partnership with Taylor Bracewell; such goodwill vests in the firm. Therefore, she has no realistic prospect of success in her passing off claim. However, the claim for revocation of the trade mark under s.46(1)(d) of the Trade Marks Act 1994 has a realistic prospect of success and should proceed to trial.

Court Disposition

Summary judgment granted in favour of Taylor Bracewell on the passing off claim; claim for trade mark revocation to proceed to trial.

Orders

  • Judgment for Taylor Bracewell on the passing off claim
  • Claim for revocation of the trade mark not struck out and to proceed