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Companies Act 2006

In the matter of application No. 3680 by Thameen Fragrance Limited for a change to the company name of Thameen Priv茅 Limited, a company incorporated under number 13336161

Background and pleadings

1. The company name Thameen Priv茅 Limited (鈥渢he primary respondent鈥�) has been registered since incorporation on 15 April 2021 under number 13336161.

2. By an application filed on 11 November 2021, Thameen Fragrance Limited (鈥渢he applicant鈥�) applied under section 69(1) of the Companies Act 2006 (鈥渢he Act鈥�) for the primary respondent鈥檚 name to be changed.

3. The applicant claims that it has goodwill and reputation in respect of perfumes and fragrances and these are identified by the name and trade mark 鈥淭hameen鈥�. It asserts that this name is not a common word in English. The applicant provides the witness statement of Richard Michael Joseph Baizley, in-house legal advisor to the applicant. He states that the applicant was incorporated on 22 January 2013 and has traded continually since then and its fragrances were first launched in Selfridges in August 2013. It was considered one of the most successful fragrance launches by Selfridges and it achieved daily sales of over 拢90,000 in December 2019 with sales growing to 拢6 million in the year immediately prior to the Covid pandemic. The applicant鈥檚 owner, Thameen Limited registered the trade mark 鈥淭hameen鈥� on 16 December 2012 under number 911429891 and covers, amongst other goods and services, perfumery and fragrances.

4. It is claimed that the primary respondent has applied to have a trade mark registered in various classes including Class 3 that covers perfumes and fragrances. The applicant further asserts that the agent, Brand Trademark Limited, that represented the primary respondent, also represented the applicant and are associated with Notamvis Limited who, until 2020, were employed by the applicant to provide back office, marketing and brand building services. It asserts that, as a consequence, both the primary respondent and Brand Trademark Limited would have been aware of the applicant鈥檚 position and goodwill and it submits that the primary respondent was incorporated to unlawfully exploit the applicant鈥檚 IP and know how.

5. The primary respondent filed a notice of defence and counterstatement. It denies most of what the primary respondent claims. It states that it cannot comment upon the applicant鈥檚 goodwill or its use of the word 鈥淭hameen鈥�. It admits that Brand Trademark Limited was its agent when filing for its UK trade mark 3639405.for the mark THAMEEN PRIV脡 in respect of a list of goods that includes fragrances and perfumery.

6. The primary respondent relies upon the following defences:

• it is proposing to operate and has incurred substantial start-up costs;

• its name was adopted in good faith as demonstrated by:
  - the fact that Mr Abu Kahir is a fluent Arabic speaker and it is well known to him and the primary respondent that THAMEEN is a common adjective in Arabic meaning 鈥減recious鈥� or 鈥渧aluable鈥� and is a common Arabic name for males;
  - The word 鈥淧RIV脡鈥� being a French word meaning 鈥渟ecret鈥�, 鈥減rivate鈥� or 鈥渆xclusive鈥�. The two words were chosen to portray the valuable and exclusive nature of its proposed market offering;
  - The respondent coming across Brand Trademark Ltd from a Google search and the fact that Brand Trademark Ltd also represented the applicant is no more than a coincidence. Further, at no stage did the primary respondent receive any information whatsoever from Brand Trademark Ltd and the extent of Brand Trademark Ltd鈥� awareness of the applicant鈥檚 business is irrelevant;

• The interests of the applicant are not adversely affected to any significant extent because it claims that:
  - the respective marks are sufficiently distinguished from each other by the presence of the word 鈥淧RIV脡鈥� in the primary respondent鈥檚 name;
  - the primary respondent is intended to be a lifestyle business selling clothing, clothing accessories and other lifestyle goods (including fragrances) whereas the applicant鈥檚 business is clearly indicated in its name i.e. a provider of fragrances, and is unlikely to lend itself to use in relation to commercial practices unconnected with fragrances.

7. At the request of the applicant, Mr Kahir, director of the primary respondent, was subsequently joined to the proceedings as co-respondent.

8. Only the applicant filed evidence. The parties were asked if they wanted a decision to be made following a hearing or from the papers. Neither side chose to be heard. The applicant was represented by Richard Baizley of KKVMS LLP and the respondents by Humphreys & Co. I make this decision having carefully considered all the papers.

Evidence

9. The applicant鈥檚 evidence was provided with its Form CNA1 and takes the form of a witness statement by Mr Baizley, in his capacity as in-house legal advisor to the applicant, together with Exhibits RB1- RB8. He states that the applicant served notice of its intention to make an application to this tribunal on 22 September 2021. ^{[footnote 1]}

10. Mr Baizley also provides evidence of the history and activities of the applicant to support his claim that the applicant has substantial goodwill.

11. Mr Baizley also provides evidence in support of the applicant鈥檚 claim that Brand Trademark Limited played a role in the primary respondent鈥檚 choice of name.

Decision

12. Section 69 of the Act states:

鈥�(1) A person (鈥渢he applicant鈥�) may object to a company鈥檚 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 those 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 鈥済oodwill鈥� includes reputation of any description.鈥�

Goodwill/reputation

13. The relevant date for the purpose of proving goodwill/reputation is the date of the registration of the contested company name which, in this case, is the date of incorporation, 15 April 2021.

14. The concept of goodwill was explained in Inland Revenue Commissioners v Muller & Co鈥檚 Margarine Ltd [1901] AC 217 at 223:

鈥淲hat 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.鈥�

15. Sections 69(1) and (7) stipulate that the applicant must have goodwill and/or a reputation in the name associated with it. This must be proven in evidence. The applicant鈥檚 evidence relevant to demonstrating its goodwill/reputation can be summarised as:

• the applicant was incorporated on 22 January 2013 and has traded continually since then and its fragrances were first launched in Selfridges in August 2013; ^{[footnote 2]}

• the applicant鈥檚 owner, Thameen Limited registered the trade mark 鈥淭hameen鈥� on 16 December 2012;[3] ^{[footnote 3]}

• it was considered as one of its most successful fragrance brand launches by Selfridges and it achieved daily sales of over 拢90,000 in December 2019. Sales grew to over 拢6 million in the year immediately prior to the pandemic;[4] ^{[footnote 4]}

• the applicant has a number of highly successful ranges that include extrait de parfum, hair fragrances, body lotions and baby fragrances and it has two main ranges being the Treasure Collection and the Sovereign Collection. ^{[footnote 5]} Screenshots are provided from the applicant鈥檚 website from October and November 2021. Typical of the use shown is shown below:

• only leading department stores and niche perfume boutiques are targeted by the applicant and its principal markets include the UK; ^{[footnote 6]}

• undated photographs are provided of the applicant鈥檚 stands at Selfridges London and Harrods. The former stand is shown below: ^{[footnote 7]}
  - Various articles and editorials support the claimed scale of the presence and impact that 鈥淭hameen鈥� has in the market place are provided: ^{[footnote 8]}
  The first, from unknown origin, is dated 21 December 2019, and reviews 鈥淭hameen Imperial Crown鈥� perfume collection selling for 拢195 for 50ml at the website thameenfragrance.com;
  - The text in the second is illegible but does show a bottle of the applicant鈥檚 鈥淭hameen Imperial Crown鈥� perfume. It is English but I can make little out but there is a reference to a 鈥淪audi entrepreneur鈥� and is not obviously targeted at the UK;br>- At the top of the third is a banner that includes a heading 鈥淐ORONAVIRUS IN KUWAIT鈥�. Therefore, whilst it is in English it is not obviously aimed at UK consumers;
  - The fourth and final extract from HUFFPOST, undated but printed on 11 November 2021, and includes an image of a bottle of the applicant鈥檚 perfume together with images of third party perfumes in an English language article discussing perfumes for when cold weather arrives

16. This evidence suffers from a number of flaws. It is not known how much of the 拢6 million sales occurred in the UK. It is a strong suggestion that the applicant鈥檚 perfumes are sold internationally. Some of the articles relied upon appear to have an international target audience whilst with others, it is just not possible to ascertain their target audience. There is one that shows the applicant鈥檚 perfume with a price shown in pound sterling and there is a reference to 拢90,000 sales a day in Selfridges in December 2019 and also a photograph showing the sales stand in Selfridges. There is a statement that use has been continuous, but it is silent on whether all/any of this use has been in the UK and is silent to what extent the use was in the UK (other than the stated 拢90,000 a day in December 2019).

17. Taking all of the above into account, it is the evidence of sales in Selfridges that is the most persuasive in illustrating that the name relied upon by the applicant attaches to goodwill in the UK. There is an exhibit identifying its perfume being sold for 拢195 and this would suggest that 拢90,000 sales a day in December 2019 would be in the region of 460 bottles equating to approximately 1300 bottles sold that month. I have nothing before me except the claim of 拢90,000 a day and I have been left to guess how this should be interpreted. Information on UK sales over the period the applicant has been trading would have been readily available, but it has provided nothing more to show the extent of its goodwill in the UK. There is also contradictory evidence where Mr Baizley states that the applicant first launched in Selfridges in August 2013 and yet he relies upon sales from what Selfridges considers 鈥渙ne the most successful fragrance launches鈥� in December 2019. This raises the question of when it was launched. Was it in 2013 or 2019, or were there two different launches? No explanation is provided as to why there is reference to these two launch dates. Further the view of Selfridges regarding the success of the 2019 launch is hearsay evidence because there is no direct evidence from Selfridges, itself, to support this and, consequently carries little, if any weight.

18. As a high point of the evidence illustrates uncorroborated sales figures in December 2019 from the Selfridges store and that at some undefinable date, the opponent appeared to have a stand in Selfridges and Harrods. In respect of the latter, I cannot conclude that this was before the relevant date. There is a paucity of evidence showing the extent of goodwill in the UK, evidence of an ambiguous nature (where it is not clear to what extent exhibits or figures relate to the UK), contradictory evidence regarding the date of UK launch, and further, I cannot ascertain what, if any level of sales took place in the UK outside of December 2019. This all leads me to conclude that the evidence is insufficient for me to find that the applicant has goodwill in the UK.

19. I conclude that the applicant does not have the requisite goodwill/reputation as required by section 69(1)(a) and section 69 (7).

20. In light of this finding, it is not necessary that I consider whether the names are sufficiently similar, nor the respondents鈥� defences. However, in case I am wrong, I will comment on these issues briefly.

Are the names 鈥渟ufficiently similar鈥�?

21. The primary respondent鈥檚 name must also be 鈥渟ufficiently similar鈥� to the name in which the applicant enjoys goodwill/reputation in the UK such that it would be likely to mislead by suggesting a connection between them. The name relied upon by the applicant is 鈥淭hameen鈥�. The differences between this name and the primary respondent鈥檚 name 鈥淭hameen Priv茅 Limited鈥� is the presence of the words 鈥淧riv茅 Limited鈥� in the primary respondent鈥檚 name.

22. Owing to the differences the names are not the same (section 69(1)(a)). The names both share the words 鈥淭hameen鈥� and 鈥淟imited鈥� and differ in that the applicant鈥檚 name includes the word 鈥淔ragrance鈥�, whereas the primary respondent鈥檚 name includes the word 鈥淧riv茅鈥�. Therefore, the presence of the word 鈥淧riv茅鈥� is the point of difference. It is not clear to me that the parties鈥� customers and prospective customers will perceive this word as creating a distinction that would differentiate the primary respondent鈥檚 name from a business conducted under the word 鈥淭hameen鈥�. In fact the respondents鈥� own defence contains an explanation that 鈥減riv茅鈥� is a French adjective meaning 鈥渟ecret鈥�, 鈥減rivate鈥� or 鈥渆xclusive鈥�. To those in the UK who understand this, they will see the word as being less dominant than the word 鈥淭hameen鈥�. Taking all of this into account, I find that the names are sufficiently similar under section 69(1)(b) of the Act and that the use of the primary respondent鈥檚 name in the UK would be likely to mislead by suggesting a connection between it and the applicant鈥檚 business.

Defences

23. If subsection 69(1)(b) was in play, the onus would switch to the primary respondent to establish its defence. There are three defences and a comment on each briefly below.

It is proposing to operate and has incurred substantial start-up costs

24. The primary respondent states that it has begun designing its logo, product labels and product packaging and has commenced product development and design for a number of products and has applied for the trade mark THAMEEN PRIV脡. There is no further information and it is not clear how much it has invested in these start-up activities. Consequently, I am unable to conclude that the primary respondent has incurred substantial start-up costs. Therefore, this defence would not have been successful.

Is name was adopted in good faith

25. This defence is relied upon, namely, that under section 69(4)(d) the contested company name was adopted in good faith. The applicant claims that Brand Trademark Limited would have been aware of the applicant鈥檚 position and goodwill and, by extension, so would the primary respondent. This is no more than supposition and, consequently, I consider this claim to be weak and easily rebutted.

26. The primary respondent submits that it is well known to Mr Kahir, being a fluent Arabic speaker, that THAMEEN is a common adjective in Arabic meaning 鈥減recious鈥� or 鈥渧aluable鈥� and is a common Arabic name for males. It is further submitted that the word PRIV脡 is a French word meaning 鈥渟ecret鈥�, 鈥減rivate鈥� or 鈥渆xclusive鈥� and that the two words were chosen to portray the valuable and exclusive nature of its proposed market offering. It is evident from the wording of s.69(4) of the Act that the onus is on the respondents to show that the contested name was adopted in good faith. Whilst the primary respondent as offered no corroboratory evidence to support this claim, the applicant has not sought to challenge his statements. Further, it strikes me as a plausible explanation and I keep this in mind when considering the applicant鈥檚 assertion that both the primary respondent and Brand Trademark Limited would have been aware of the applicant鈥檚 position and goodwill because Brand Trademark Limited has previously represented the applicant and because it is associated with another company that provided back office, marketing and brand building services to the applicant. In the absence of any evidence to support what is no more than supposition and, keeping in mind the plausible alternative explanation of how the primary respondent chose its name and its unchallenged statement that it obtained no 鈥渋nformation whatsoever about the Applicant鈥� from Brand Trademark Limited, I conclude that there is no basis for concluding that the reliance on a 鈥済ood faith鈥� defence would not have been successful.

The interests of the applicant are not adversely affected to any significant extent

27. The primary respondent submits that the respective marks are sufficiently distinguished from each other by the presence of the word 鈥淧RIV脡鈥� in the primary respondent鈥檚 name. I have already dismissed this when considering whether the marks were sufficiently similar. I need say no more about this.

28. The primary respondent also claims that it is intended to be a lifestyle business selling clothing, clothing accessories and other lifestyle goods (including fragrances) whereas the applicant鈥檚 business is clearly indicated in its name i.e. a provider of fragrances, and its name is unlikely to lend itself to use in relation to commercial practices unconnected with fragrances. This is not persuasive for several reasons. Firstly, these two business models overlap and, therefore, identifying differences does not negate the effect that the contested name may have upon the interests of the applicant. Secondly, the applicant may choose to broaden the scope of its business model. The mere fact that its name includes the word 鈥淔ragrance鈥� would not prevent it from doing this. Therefore, the remains a real risk that the applicant鈥檚 interests are adversely affected and this defence would fail.

Outcome

29. The applicant has failed to demonstrate that it has the requisite goodwill or reputation and, therefore, its application fails. Even if it had the requisite goodwill or reputation, the respondents would have had a successful defence based upon good faith under 69(4)(d).

Costs

30. The Tribunal awards costs from the published scale at paragraph 10 of the Tribunal鈥檚 Practice Direction. This is intended to provide a contribution to costs, but not to recompense the successful party. It is the respondents who have been successful in these proceedings and who are entitled to a contribution towards their costs. The award breakdown is as follows:

Considering the Form CNA1 and filing the Form CNA2 拢400
Fee for filing the Form CNA2 拢150
Considering the other side鈥檚 evidence 拢350

Total 拢900

31. Thameen Fragrance Limited is ordered to pay Thameen Priv茅 Limited and Abu Kahir the sum of 拢900. This sum is to be paid within twenty-one days of the expiry of the period allowed for appeal or, if there is an appeal, within twenty-one days of the conclusion of the appeal proceedings (subject to any order of the appellant tribunal).

32. 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. Any notice of appeal 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. The Tribunal must be advised if an appeal is lodged.

Dated 25 January 2023

Mark Bryant
Company Names Adjudicator