UK: Who Has The Right To Use The "Asprey" Name?

Asprey & Garrard v WRA (Guns) Ltd (t/a William R Asprey Esq) (unreported, 18 May 2001) demonstrates the limits of the defence to trade mark infringement under s 11(2)(a) Trade Marks Act 1994.

The claimant was an established family business which, following a merger in 1995, had traded under the name Asprey & Garrard. The defendant was directly descended from the original founder of the company and had worked for the company for nine years. For the last three years of his employment he had run their gunroom. He left the company in 1999 (blaming the merger) and set up his own company specialising in guns, trading under the name William R Asprey Esq.

The defendant sold many products featuring the name "Asprey", including guns (for which Asprey had a UK registered trade mark). His shop was based in the West End of London, near the claimant's shop. The defendant also displayed a showcase at the Dorchester Hotel, which the claimant had previously done. The claimant brought proceedings for trade mark infringement and passing off. The defendant raised the defence of "use of own name" under section 11(2)(a) Trade Marks Act 1994. The claimant applied for summary judgment.

Granting the application, the Court reiterated that an individual was entitled to carry on his business under his name, provided he did not do anything more than that to cause confusion with the name of the business of another and so long as he did so honestly. The defendant, by continuing to use the name, despite instances of proved confusion, had made deceptive use of the name "Asprey" and therefore failed the objective test of honesty. He therefore had no arguable defence under section 11(2).