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IN THE COURT OF APPEAL

Before: Lord Justice Peter Gibson

Lord Justice Chadwick
Lord Justice Kay

ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

October 11, 20011

[2001] EWCA Civ 1499; [2002] F.S.R. 31

H1 Trade mark—Infringement—Passing off—“Own name” defences—

Application for summary judgment—Appeal—Whether quia timet
injunction against personal defendant too wide.

H2 Trade Marks Act 1994, ss.10(1), (2), 11(2).

Civil Procedure Rules, Part 24.

H3 The claimant, then known as Asprey Ltd, had traded as a family run
company from 1781 until 1995 when it was sold to the owner of another
well-known company, Garrard Ltd. The business of the two companies
merged and the claimant’s name was changed to its present name in
September 1998. The claimant had premises in Bond Street, London
and dealt in inter alia, jewellery, guns and watches, all at the luxury end
of the market and its clientele included some of the richest people in the
world. It was a world-wide business. It was also the registered
proprietor of the trade mark ASPREY for the goods in which the
defendants dealt.
H4 The personal (second) defendant, William Asprey, a member of the
Asprey family, used to work for the claimant, particularly in the gun
market. He had a detailed knowledge of that side of the business and
had a number of personal contacts with clients around the world. After
the takeover of the family business, he left and set up the first defendant
of which he was a 70 per cent shareholder and the managing director.
The first defendant opened a shop in Mount Street, London and the full
name of the second defendant “William R. Asprey, Esquire” ran across
the top of the shop. The second defendant also traded otherwise than
through the shop by seeing clients and, for a short time, by having a
showcase at the Dorchester Hotel, London. In the first defendant’s
promotional material and in press interviews, the second defendant
relied heavily on his connection with the long-standing family firm.
1
Paragraph numbers in this judgment are as assigned by the court.

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488 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

H5 The claimant brought proceedings for passing off and for trade mark
infringement and sought summary judgment under CPR Part 24 and
relied on evidence of actual confusion. The first defendant argued that
the name under which it traded and by which it was called, namely
“William R. Asprey, Esquire”, was in reality its name and that both it
and the second defendant were entitled to trade under their own names.
The defendants pointed to the fact that other family members had in the
past traded under their own names without confusion having occurred.
In relation to trade mark infringement, the defendants argued that the
trading name was not the same sign as the trade mark ASPREY and
that they were entitled to rely on section 11(2) of the Trade Marks Act
1994 as a defence to infringement.
H6 At first instance, the judge held that both passing off and trade mark
infringement under section 10(1) of the Trade Marks Act 1994 had been
established and that whilst section 11(2) of that Act might prove a
defence as to past acts, it could not do so for the future once a defendant
knew that his conduct was likely to lead to deception.2 The judge
granted an injunction restraining infringement of registered trade
marks and an injunction restraining the defendants from using the
names “Asprey” or “William R. Asprey, Esquire” or any other name
likely to lead to passing off “without clearly distinguishing their
business or goods from the goods of the claimant”. The defendants
appealed.
H7 The claimant conceded that the summary judgment of trade mark
infringement under section 10(1) of the 1994 Act could not stand in the
light of the referral by the Paris Regional Court to the European Court
of the question whether there was identity between the mark and the
sign when the sign used the trade mark in combination with other
words.3
H8 Held, dismissing the appeal but varying the injunction against the
second defendant:
H9 (1) The judge properly recognised that many customers would not be
confused. Nevertheless there was a likelihood of confusion and
deception produced by a number of factors in addition to the common
factor of the name “Asprey”. The goods sold by the parties were the
same and they competed in a similar field and used similar methods of
promotion. The most significant factor was the use made by the
defendants in their publicity material of the second defendant’s
connection with his forebears as traders in luxury goods. The goodwill
generated by the six generations of Aspreys unquestionably belonged
to the claimant. Any goodwill resulting from the second defendant’s
work for the claimant as its employee belonged to the claimant and he
could not properly seek to associate any business in which he was now
interested with the claimant’s goodwill. (paras 35, 36 and 52)
2
[2002] F.S.R. 30.
3
S.A. Société LTJ Diffusion v. S.A. Sades Vertbaudet, June 23, 2000, Paris Regional Court.

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H10 (2) The Court of Appeal should be slow to interfere with the
conclusion of a lower court on what was essentially a question of fact. In
the light of the evidence it did not appear that the judge had reached an
incorrect conclusion in finding a misrepresentation by the defendants
through the use of the name “William R. Asprey, Esquire” in
connection with the first defendant’s business. (para. 38)
Designers Guild Ltd v. Russell Williams (Textiles) Ltd [2001] F.S.R.
11 applied.
H11 (3) The “own name” defence had never been held to apply to the
names of new companies as otherwise the route to piracy would be
obvious. For the same reason, a trade name, other than its own name,
newly adopted by a company could not avail it. (para. 43)
H12 (4) There were real problems in supporting the judge’s approach of
considering the “own name” defence on the basis of the second
defendant trading on his own account. The injunction granted against
the second defendant was very wide and extended far beyond
restraining him acting as a joint tortfeasor with the first defendant. The
Court would have to look very carefully at what the second defendant
was actually doing by way of trading (or threatening to do) to satisfy
itself that his agreed entitlement to carry on business in his own name
was to be limited in some defined way or denied him altogether. There
was no factual material before the Court to form a judgment on this
point. It was inappropriate to grant an injunction in such wide terms
against the second defendant who could be restrained only from acting
as a joint tortfeasor. (paras 45 and 53)
H13 (5) (obiter) However honest a defendant’s subjective intentions were,
any use of his own name which amounted to passing off would not be in
accordance with honest practice in industrial or commercial matters
and the section 11(2) defence would not be available in such
circumstances. (para. 49)
H14 (6) The injunction against the second defendant would be varied to
one restraining him from causing or procuring the first defendant or any
other person to do any of the acts prohibited in the injunction against
the first defendant.

H15 The following cases were referred to in the judgments:

Aktiebolegat Volvo v. Heritage (Leicester) Ltd [2000] F.S.R. 253.
BACH and BACH FLOWER REMEDIES Trade Marks [2000] R.P.C. 513.
British Sugar plc v. James Robertson & Sons Ltd [1996] R.P.C. 281.
Decon Laboratories Ltd v. Fred Baker Scientific Ltd [2001] R.P.C. 17.
Designers Guild Ltd v. Russell Williams (Textiles) Ltd [2001] F.S.R. 11.
Joseph Rodgers & Sons Ltd v. W. N. Rodgers & Co. (1924) 41 R.P.C. 277.
Parker Knoll Ltd v. Knoll International Ltd [1962] R.P.C. 268.
Reckitt & Colman Products Ltd v. Borden Inc. (“JIF LEMON”) [1990]
R.P.C. 341, HL.
S.A. Société LTJ Diffusion v. S.A. Sades Vertbaudet, June 23, 2000, Paris
Regional Court.
H16 Michael Bloch Q.C. and Heather Lawrence instructed by Speechly Bircham

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490 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

appeared on behalf of the appellants/defendants. Simon Thorley Q.C.

and Richard Meade instructed by Willoughby & Partners appeared on
behalf of the respondent/claimant.

1 PETER GIBSON L.J.: The name Asprey has been associated for many
years with selling luxury goods. In 1781, the Asprey family began trading in
Mitcham, moving to Bond Street in 1841 and in 1847 to 166 Bond Street, now
New Bond Street. There has been a shop there bearing the name Asprey
ever since. The business was incorporated in 1909. Until 1995, members of
the Asprey family ran the business. In 1995, the claimant company owning
the business was acquired by, in effect, Prince Jefri of Brunei. In 1990, the
claimant had acquired Garrard & Co. The business of Garrard & Co. was
merged with that of the claimant, the company’s name being changed to the
claimant’s present name, Asprey & Garrard Ltd, in September 1998. On
July 4, 2000, the ownership of the claimant changed again and its shares now
belong to a company representing the interests of two individuals, Lawrence
Stroll and Silas Chou. The claimant sells (amongst other things) jewellery,
antiques, objets d’art, silverware, glass, crystal, porcelain, watches, clocks,
luggage and leather goods. It also has a gun room, selling guns. It has many
trade mark registrations, including, for the word ASPREY, registrations in
class 13 for firearms and ammunition and in class 14 for jewellery and
precious metals.
2 Members of the Asprey family have run or helped to run the business of
the claimant from the outset, although only one Asprey is still employed by
the claimant. The second defendant, William Asprey, joined the claimant as
an employee in about April 1990. He showed particular interest in the
claimant’s gunroom and early in 1996 took over its running. But by 1998 he
became disaffected with the claimant. He did not like the way the business
was going. He was unhappy about the merger of the Asprey and Garrard
brands and felt that the quality of the claimant’s customer service and of its
products was declining.
3 In 1998, William Asprey caused two companies to be incorporated, the
first defendant to which the name William Asprey (Guns) Ltd was given, and
another company which was given the name William Asprey Ltd. The
claimant learnt of this in August 1998. Its managing director, Ian Dahl, wrote
to William Asprey on August 19, 1998. He drew attention to the fact that the
claimant was the registered owner of the ASPREY word mark in relation to
several classes of goods and services including firearms, to the considerable
reputation and goodwill in the trade mark and to the claimant’s right to
prevent the unauthorised use of the mark by others. He said that the
claimant was advised that the use by the two new companies of the name
Asprey could lead to confusion and that this would amount to passing off.
He asked for the prompt change of the companies’ names. Thereupon, the
two companies’ names were changed to WRA (Guns) Ltd and WRA
(Sporting Agents) Ltd.
4 In early July 1999, William Asprey gave the claimant notice of his
resignation and left its employment on August 5, 1999. He asserts in his
evidence that he informed the claimant that he would be setting up in a new
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business under the name “William R. Asprey, Esquire”, which would

compete with the claimant, though with an emphasis on guns. Although that
assertion is disputed, for the purpose of the proceedings in the court below
and on this appeal his version of events has had to be taken as correct.
5 Once he left the claimant he visited as many as possible of the claimant’s
customers with whom he had dealt personally while he worked for the
claimant to explain what he was doing. His evidence makes clear that he told
such persons of his intention to compete with the claimant in the same field
of luxury goods. In the Peterborough column of the Daily Telegraph on
Novembeer 13, 1999, it was reported that William Asprey was starting his
own business called William Asprey Esq. in competition with the claimant
and was looking for premises in the Bond Street area. In September 2000, a
shop bearing the name “William R. Asprey, Esq.” was opened in Mount
Street which, like the claimant’s shop, is also in Mayfair. In the press release
which was issued in advance of the opening, this was said:
William R. Asprey Esq. was established in 1999 by William Asprey, seventh
generation of the renowned Asprey family who established their first luxury
business in 1781. Since the business was first established at the end of the 18th
century . . . many changes have tested the strength and commitment of its family
forebears.
Continuing his family tradition, William Asprey is now opening a new luxury
goods store in Mayfair . . . The new store will have specialist luxury goods
ranging from fine jewellery, leather goods and objets d’art, watches . . . and
sterling silverware, shotguns and sporting rifles, shooting accessories and
clothing . . .
William Asprey comments ‘My dream to create an exclusive store for luxury
products has been realised with the opening of No. 10 Mount Street, where the
Asprey family heritage and traditions are rekindled, ensuring a superior quality
service to our clients, whilst supporting refined British craftsmanship.’
The habitués of this exceptional signature will be delighted to see William R.
Asprey, Esq. open in September 2000 . . .
6 Although the language of the press release might suggest that William
Asprey was opening the shop as a sole trader, in fact it is the shop of the first
defendant, trading as William R. Asprey, Esquire. William Asprey holds
70 per cent of the shares of the first defendant of which he is the chairman
and managing director, but it cannot be said that the first defendant is merely
his alter ego. He himself has not traded and does not trade.
7 A party to mark the opening of the shop was reported in the “Hello!”
magazine for December 5, 2000 under the heading “ASPREY LAUNCH”.
The magazine described William Asprey as “a seventh generation member
of the renowned Asprey family, whose first luxury goods business was
founded way back in 1781”, and other publicity material referred to the store
as being one which “rests confidently on seven generations of experience in
the luxury business”, to William Asprey “continuing the family’s tradition”
and to “the tradition rekindled”.
8 On 8 December 2000, solicitors for the claimant wrote a letter before
action to William Asprey. They complained of the adoption by the first
defendant of a trading style which incorporated the name Asprey, they
alleged that there had been passing off and the infringement of the
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claimant’s trade marks and they demanded that the first defendant should
cease to use any name which incorporated Asprey. Solicitors for William
Asprey and the first defendant replied on December 15, disagreeing with the
allegations made by the claimant and saying that they would be more than
willing to give very serious consideration to any steps which the claimant
might like to propose, short of ceasing the use of the name Asprey
altogether, to minimise the risk of confusion.
9 Proceedings were commenced by the claimant on January 22, 2001, the
action being framed as one in passing off and trade mark infringement and
the primary relief claimed being an injunction against both defendants. On
February 20, 2001, the claimant applied for summary judgment under CPR
Part 24.
10 That application was supported by a witness statement from the
claimant’s company secretary, Fiona Morrison. In it she said that the
claimant learnt about mid-2000 that William Asprey was proposing to open
a retail shop in Mayfair, that the claimant took legal advice and was advised
to wait and see how he traded, and that if he were to trade under his own
name and in a manner which did not unfairly take advantage of the
claimant’s goodwill, it could have no objections. She said that the claimant
believed that it had purchased, at significant cost, the business of the Asprey
family and the goodwill acquired by the long period of trading, that the
defendants by their trading style and press releases were passing themselves
off as being in some way associated with the claimant and that by using the
name Asprey in relation to their goods they were infringing the claimant’s
trademarks. In that and a later witness statement, Ms Morrison gave
evidence of a number of instances of confusion between the first defendant
and the claimant.
11 Following the receipt of Ms Morrison’s first witness statement, the
defendant’s solicitors in correspondence with the claimant’s solicitors
suggested that William Asprey would be prepared to trade as a sole trader in
his own name, and they sought to ascertain whether that would be
acceptable to the claimant. But the claimant’s solicitors refused to commit
themselves as to the manner in which the defendants might be able to trade
in the future without causing passing off.
12 The defendants resisted the Part 24 application, relying on evidence from
a number of witnesses. This included a detailed witness statement from
William Asprey. He made clear his pride in his family’s heritage and
tradition and declared that he was more than happy to say so. He said that he
did not wish to be thought of as associated in any way with the claimant and
had tried very hard to avoid such association. He himself gave an example of
the first defendant being confused with the claimant and stated what he did
to correct the mistake. In para. 24 of his witness he said this:
When I left the claimant’s employ to set up my own business I was anxious to be
in a position to build upon the goodwill which I had established with customers
with whom I had personal dealings. It was therefore important to me that my
new business’ name should be, or incorporate, my own name. I was equally
concerned to distinguish my new business from that of the claimant. That is why
I chose the name William R. Asprey, Esquire.
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13 In paragraph 26 of his witness statement, William Asprey stressed that

most of the turnover generated by a business such as William R. Asprey,
Esquire derived from personal relationships between the business’s lead
retailers and its major customers. He said:
In each case (and this certainly applies to the eight Middle Eastern customers
who account for 84 per cent of the sales of William R. Asprey, Esquire) the
customer’s relationship is with a particular individual—be it me, Mr Cooper or
Mr Argles—not a business. My customers in this category will follow me
whether I am working for Asprey & Garrard, Harrods, Tiffany’s or on my own.
The same applies to personal customers of Mr Argles and Mr Cooper . . . It
should not be thought, however, that the presence of my name in the trading
name of the first defendant is unimportant. It identifies me as the “boss” of my
company, demonstrates that I wish to be seen to take pride in my family name,
and is of particular relevance to my ability to present and promote the first
defendant’s business to prospective new distinguished and high value clients.
14 In paragraph 27 of his witness statement, William Asprey described the
remaining 16 per cent of sales as made to customers most of whom were
personally known to him or his colleagues with very few off-the-street
customers. He said of his customers:
All or nearly all of our customers are wealthy, sophisticated and discriminating
people who know all about the successive changes of ownership of the claimant
and are well aware that the claimant’s business and the first defendant’s have no
connection.
But he said that, to cater for those who might mistakenly associate the two
businesses, in January 2001 he caused a disclaiming notice to be displayed in
the Mount Street shop.
15 Other evidence put in by the defendants included evidence relating to
three other members of the Asprey family who left the claimant to set up in
competition with it. In 1970, Algernon and Harry Asprey opened a luxury
goods shop under the name Algernon & Harry Asprey Ltd in Bruton Street
in Mayfair. In 1980, the claimant purchased that business. In 1982, Maurice
Asprey set up a competing business in a shop in Duke Street, London SW1
under the name Maurice Asprey Ltd. The claimant purchased that business
in 1992. The defendants’ evidence is that there were no instances of
confusion between those companies and the claimant.
16 The Part 24 application came before Jacob J. on May 18, 2001. It was listed
for two days, but the hearing only lasted one morning, the judge delivering
judgment that afternoon. He dealt first with the passing off claim. He
referred to “the defence (if defence it be) of use of one’s own name”. He
noted that the first defendant’s name was WRA (Guns) Ltd and did not
accept an argument of Mr Michael Bloch Q.C. for the defendants that
because the first defendant had adopted the trading name William R.
Asprey, Esquire, the own name defence applied to the adopted name. The
judge said that Mr Block had recognised the difficulty over the first
defendant and had concentrated on the fact that the claimant had applied for
an injunction to restrain William Asprey from himself passing off. The judge
treated the case as a claim against William Asprey, because the first
defendant could easily transfer its assets to him. The judge proceeded on the
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basis of what would be the position if William Asprey were himself to trade
under his own name.
17 The judge said:
10 Before looking at the details of the instances of confusion which the
claimants rely on, I think it is worth standing back. Aspreys is a world famous
name. As matters stand it is unique in its trade. It has therefore an individuality
about its name, and it is that name and individuality to which forms its goodwill
is attached. Passing off is an action intended to protect deceptive invasions of
goodwill. Whenever there is such an invasion the distinctiveness of the name is
likely to be eroded and the attractive force which brings in custom is likely to be
eroded.
11 It follows, I think, without even looking at the details of this case, that
anyone who sets up in the same field of business with the name Asprey as part of
their name is likely to erode the claimant’s goodwill and is likely to create a
situation where, however much that situation is unintended, people will make
mistakes and muddle one company for the other. Of course there will be very
many other people who will not: the friends of the individual concerned will
know perfectly well that they were two companies; the suppliers will know
exactly who they are dealing with. So the evidence that I have here from
suppliers to the defendants does not really help me as to what the position is
with people who may not know Aspreys very well but who have come to
London and see the name Asprey on the defendant’s shop. If you have an
international trade, you must take your international customers as you find
them. Some will speak English well, others will not speak English well. Some
will know London well, others not.
12 In this case, the shop was opened in September last year. There have been
instances of confusion. I completely accept that Mr William Asprey does not
want any, and as soon as they happen he seeks to put things right. All his
conduct throughout this case suggest that he is a very honest and honourable
man. But, nonetheless, these incidents have happened.
18 The judge then referred to the incidents, and said:
19 Those are incidents that have come to light. I ask myself: are they unique or
are they only those that have come to light but there are others where somebody
has thought there was a connection but never said it? Instances of confusion are
seldom conclusive. The court has to make such use of them as it can in assessing
the global impact of what the defendant is doing. I think that there are bound to
be others. It is, I think, always difficult for the defendant fully to appreciate the
impact of what he is doing on people who are not nearly as aware of the situation
as he is. So although, as I have already said, I entirely acquit Mr William Asprey
of any intention to pass off, I fear that what he is doing would lead to just that
that, the deception of some customers.
19 The judge next considered Mr Bloch’s reliance on the own name defence.
The judge called that “a tricky area of passing off law”. He referred to Joseph
Rodgers & Sons Ltd v. W. N. Rodgers & Co. (1924) 41 R.P.C. 277 at p. 291,
where Romer J. said:
It is the law of this land that no man is entitled to carry on his business in such a
way as to represent that it is the business of another, or is in any way connected
with the business of another; that is the first proposition. The second
proposition is, that no man is entitled so to describe or mark his goods as to
represent that the goods are the goods of another. To the first proposition there
is, I myself think, an exception: a man, in my opinion, is entitled to carry on his
business in his own name so long as he does not do anything more than that to

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cause confusion with the business of another, and so long as he does it honestly.
It is an exception to the rule which has of necessity been established.
To the second rule, to which I have referred, I think there is no exception at
all; that is, that a man is not entitled so to describe his goods as to lend to the
belief that they are the goods of somebody else. It is not necessary that there
should be an exception to that. It is perfectly legitimate for a man in the cutlery
business to carry on business under his own name whatever that name may be,
but I can see no necessity for his marking his cutlery with a name (although it be
his own name) which may have the effect of passing off those goods as the goods
of the plaintiffs.

20 The judge said that the defendants were doing more than carry on
business in their own name to cause confusion because they were actually
causing deception and were using the name as a trade mark. He also said that
the basis of Romer J.’s exception was necessity and that was not satisfied
here. The judge dismissed the defendant’s evidence that there was no
confusion when Algernon & Harry Asprey Ltd and Maurice Asprey Ltd
were competing with the claimant, saying that those companies were
probably doing something different from what happened in the present case
or perhaps more likely the family were prepared to tolerate it at a time when
the claimant was a family business. The judge concluded on passing off by
saying that notwithstanding William Asprey’s evident honesty, what had
been done by him was on the wrong side of the line.
21 The judge then turned to trade mark infringement. The claimant had
alleged infringement under section 10(1) or (2) Trade Marks Act 1994
(implementing the Trade Marks Directive 89/104 of December 21, 1988),
whilst the defendant relied on the defence provided by section 11(2)(a).
Those provisions are as follows:
10(1) A person infringes a registered trade mark if he uses in the course of trade
a sign which is identical with the trade mark in relation to goods or services
which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a
sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or
services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or
services identical with or similar to those for which the trade mark is
registered,
there exists a likelihood of confusion on the part of the public, which includes
the likelihood of association with the trade mark.
...
11(2) A registered trade mark is not infringed by—
(a) the use by a person of his own name or address,
...
provided the use is in accordance with honest practice in industrial or
commercial matters.

22 In relation to the claim of infringement under section 10(1) the defendants

denied that they were using a sign identical to the mark ASPREY because
their sign was William R. Asprey, Esquire. The judge rejected that defence
on the basis of three decisions of the High Court: his own decision in British
Sugar Plc v. James Robertson & Sons Ltd [1996] R.P.C. 281, the decision of
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496 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

Rattee J. in Aktiebolaget Volvo v. Heritage (Leicester) Ltd [2000] F.S.R. 253

and the decision of Pumfrey J. in Decon Laboratories Ltd v. Fred Baker
Scientific Ltd [2001] R.P.C. 17. Those decisions are to the effect that where a
defendant in the course of trade uses as his sign a word which constitutes the
registered trade mark of another in combination with other words, the sign is
identical with the mark for the purposes of section 10(1). Accordingly the
judge held that there was infringement under section 10(1).
23 The judge did not consider section 10(2) separately as he accepted the
claimant’s argument that, as there was passing off, section 10(2) was
satisfied.
24 The judge then considered whether section 11(2)(a) provided William
Asprey with a defence. The judge held that whilst it might provide a defence
for the past, it could not do so for the future, because, once it was known that
deception in what William Asprey was doing was likely, it could not be in
accordance with honest practice in industrial and commercial matters to
continue to do it. The judge therefore held that there was trade mark
infringement to which section 11(2)(a) provided no defence.
25 The judge accordingly granted an injunction. This was in the following
form:
The defendants and each of them must not do the following acts or any of them,
that is to say
(a) infringe the registered trade marks set out in Annexe 1 hereto; or
(b) carry on any business in jewellery, antiques, silverware, glass, porcelain,
watches, clocks, luggage, guns, objets d’art or other similar goods at the
luxury end of the market under the name or using the mark “Asprey” or
“William R. Asprey, Esquire” or any other name or mark which by reason
of its similarity to the name “Asprey” is likely to cause confusion or
deception and to lead to the business or goods of the defendants being
passed off as the business or goods of the claimant without clearly
distinguishing their business or goods from the goods of the claimant; or
(c) cause or procure any other person, firm or company to do any of the
aforesaid acts.

26 The judge ordered an enquiry as to damages. He refused permission to

appeal but granted a stay of the injunction pending the defendants’
application to this court for permission to appeal and, if permission was
granted, pending the outcome of the appeal. Robert Walker L.J. granted
permission to appeal.
27 Before this Court, Mr Bloch submitted that the judge erred as a matter of
fact and law in relation to passing off and trade mark infringement. On
passing off, he argued that the judge was wrong to proceed on an a priori
assumption that the setting up of a business in the same field as the claimant
with Asprey as part of the name of the new business was likely to lead to
confusion, particularly when Algernon and Harry Asprey and Maurice
Asprey had previously done so without confusion. Further, he submitted
that the evidence of actual confusion was unsatisfactory. He said that having
regard to the manner in which the defendants conducted business, to the
importance of personal contacts in the business and the wealthy,
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sophisticated and discriminating customers of the first defendant, the judge

could not properly have found that the passing off claim succeeded,
particularly on a Part 24 application. If wrong on that, he argued that both
the first defendant and William Asprey could avail themselves of the own
name defence, which in any event raised difficult questions of law unsuitable
for determination on a Part 24 application. He also prayed in aid Article 10
(freedom of expression) and Article 14 (prohibition of discrimination) of the
European Convention on Human Rights and Article 1 of the First Protocol
to the Convention (protection of property) and submitted that they
supported the availability of the own name defence. On trade mark
infringement, Mr Bloch submitted that there was no infringement under
section 10(1), the judge’s construction of section 10(1) being incorrect, and
that in any event as a French court had referred to the European Court of
Justice the like question of construction of the Trade Marks Directive, the
point was not one appropriate for summary judgment. On section 10(2), Mr
Bloch relied on the same arguments as he did on passing off. Further, on
both section 10(1) and (2), he submitted that the defence to infringement
which was afforded by section 11(2)(a) was applicable.
28 Mr Thorley Q.C. for the claimant submitted that the judge reached the
right conclusion on each point determined by him. On Mr Bloch’s arguments
relating to the Convention which had not been advanced to the judge, Mr
Thorley contended that none of the Articles relied on had any application.
29 I start with passing off. The general principles of the law of passing off are
not in dispute. The judge considered the applicable principles to be those
enunciated by Lord Oliver in the JIF LEMON case (Reckitt & Colman
Products Ltd v. Borden Inc. [1990] R.P.C. 341 at p. 406). In short they require
three elements to be established by a claimant: reputation,
misrepresentation and damage.
30 There can be no doubt that the claimant has a world-wide reputation
which extends to a wide range of luxury goods. This was rightly accepted by
Mr Bloch. In my judgment the name Asprey is recognised by the public as
distinctive of the claimant and its goods.
31 The second and third elements are in controversy in the present case. Lord
Oliver said in the JIF LEMON case (at p. 406) of a plaintiff:
Secondly, he must demonstrate a misrepresentation by the defendant to the
public (whether or not intentional) leading or likely to lead the public to believe
that goods or services offered by him are the goods or services of the plaintiff.
Thirdly, he must demonstrate that he suffers or, in a quia timet action that he is
likely to suffer, damage by reason of the erroneous belief engendered by the
defendant’s misrepresentation that the source of the defendant’s goods or
services is the same as the source of those offered by the plaintiff.

32 One part of the judge’s reasoning is open to valid criticism. He dismissed

the evidence that the rival businesses set up by Algernon and Harry Asprey
and by Maurice Asprey had produced no confusion. He did so on the basis of
speculation that they were probably doing something different from that
which has happened here. He might have referred to the explanation
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498 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

provided by Andrew Sutton, who worked for the claimant before and after
working for Algernon and Harry Asprey Ltd, as to why there was no
confusion between that company and the claimant:
I believe that this was because the differences in scale and image between the
two businesses were so marked, and because all or nearly all of the customers of
Algernon and Harry Asprey Limited were personally acquainted with Mr
Algernon or Mr Harry or one of the members of staff, or were introduced to the
business by someone having such personal acquaintance.

Maurice Asprey gave evidence of the care which he took to avoid confusion
between Maurice Asprey Ltd and the claimant. But I would accept that on
the evidence before the court, which must be treated as correct for the
purposes of the Part 24 application, both Algernon & Harry Asprey Ltd and
Maurice Asprey Ltd provide examples of trading having been conducted by
competitors of the claimant, using Asprey as part of their name, without
confusion having occurred.
33 Mr Bloch also criticised the reliance by the judge on seven instances of
confusion in the present case. Those instances were the following:

(1) In February 2001 Mr Vivo from Mexico, who had been a customer of
the claimant in the past asked the claimant for a “pill box” which he said
that he had seen in the claimant’s catalogue or showcase in the
Dorchester Hotel. The item was not in that catalogue and the claimant
ceased in November 2000 to have a showcase in that hotel, but the first
defendant had two such showcases. Mr Vivo was directed to the first
defendant’s shop, Mr Vivo saying “Why two Aspreys?” There was
evidence from William Asprey that no pill box was ever exhibited in a
showcase at the Dorchester. However, the evidence relating to this
incident suggests that Mr Vivo saw an Asprey showcase in the hotel,
noticed the name Asprey and assumed that it was the claimant’s
showcase, even though Mr Vivo misdescribed as a pill box the item in it.
(2) The second instance was provided by William Asprey in his witness
statement. It concerned an article in “Country Illustrated” in March
2000 written by the head of Christie’s sporting gun department, which
stated that “Asprey of Bond Street” was poised to open a new gun
showroom in Mount Street. Mr Bloch points out that there is no
evidence of how the mistake was made and that the writer may have
been misinformed by another. But this incident shows that either the
writer or the source of the information given to the writer has assumed
that the new Asprey gun room in Mount Street belonged to the
claimant.
(3) Two American men, who had seen a watch in one of the first
defendant’s showcases in the Dorchester Hotel, were directed to the
claimant’s shop from the Dorchester.
(4) A shipping company submitted to the claimant’s New York office
documentation relating to the freighting of the defendants’ guns to a
gun fair in the United States.
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(5) An American customer of the claimant responded to an invitation

issued by the defendants to a polo match in Cirencester. That response
was sent to the claimant.
(6) There was a delivery to the claimant of a painting intended to be
delivered to the defendants.
(7) A Kuwaiti man approached the claimant after seeing an
advertisement issued by the defendants for a watch.
34 It was not suggested by the claimant to the judge nor to this court that
these instances of mistakes sufficed to establish passing off. As Mr Bloch
rightly pointed out, none of the incidents has been explored to see how the
mistake arose and they do not show a single case of a sale being diverted
from the claimant to the defendants. However they do provide some support
for the judge’s view, based on the fact that Asprey is such a well-known name
as distinctive of the claimant, of what was likely to happen as a result of a
competitor setting up in the same field of business with Asprey forming part
of the competitor’s name. True it is that the evidence relating to the
companies of Algernon and Harry Asprey and of Maurice Asprey in earlier
years points the other way. But these instances of confusion in the short
period between the opening of the first defendant’s shop in September 2000
and the hearing in May 2001 seem to me to be illustrative of the likelihood,
which the judge found, that people will make mistakes and muddle one
company with the other. It seems to me inevitable that, in a trading name of
William R. Asprey, Esquire, Asprey will be the dominant feature of that
trading name and will be that to which the trading name is shortened by
many when referring to the first defendant or its shop, as happened in the
“Hello!” article.
35 The judge properly recognised that many would not be confused. The
personal contacts, about whom William Asprey gave evidence, would not,
nor would suppliers. But even the wealthy—and wealth is likely to be the
chief common characteristic of the customers of both the claimant and the
first defendant—may muddle the two companies, as some of the instances of
confusion show, particularly when the customers include many foreigners,
again as those instances illustrated. One does not have to postulate other
than a “reasonably well informed and reasonably observant and
circumspect” customer (to use Chadwick L.J.’s phrase in BACH and BACH
FLOWER REMEDIES Trade Marks [2000] R.P.C. 513 at p. 535) as the
typical customer of both the first defendant and the claimant to recognise
that there is still a likelihood of confusion and deception, as the judge found,
of the public including but not limited to customers who happen to pass by in
Mount Street.
36 That likelihood is produced by a number of factors in addition to the
common factor of the name Asprey. First, all the goods sold by the first
defendant are of a type sold by the claimants: the first defendant competes in
a similar field. Secondly, the two shops are in a similar location. Thirdly,
there is a similarity in the methods of promotion, such as by having
showcases in the Dorchester Hotel, aimed at similar target customers. A
fourth and, to my mind, significant factor is the use made by the defendants
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500 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

in their publicity material of William Asprey’s connection with his forebears

as traders in luxury goods. The goodwill generated by the six generations of
Aspreys previous to William Asprey, trading for two centuries and more,
unquestionably belongs to the claimants. No doubt that was reflected in the
price paid in 1995 to the Asprey family for their shares in the claimant. Any
goodwill resulting from William Asprey’s work for the claimant as its
employee also belongs to the claimant and he cannot properly seek to
associate any business in which he is now interested with the claimant’s
goodwill. Of course, the fact that he established personal contacts whilst so
employed cannot be taken from him and in the absence of a restrictive
covenant restraining him from making use of such contacts he is free to do
so. But what he cannot do by reason of the law of passing off is to present any
business in which he is now interested as in some way associated with that of
the claimant. Despite his protestations that he does not want to be associated
with the claimant, it appears to me that he does wish the first defendant to be
associated with the goodwill of the claimant. Given his own evidence in
paragraph 26 of his witness statement, which I have already quoted in
paragraph 13 above, that the customers of Mr Argles, Mr Cooper and
himself will follow them personally, whoever may be their employer, and
that those customers account for the lion’s share of the first defendant’s
business, it is hard to understand why the defendants think it important to
trade under a trading name incorporating the name Asprey unless it be to
obtain the benefit of an association with the Aspreys’ trading past and hence
with the claimant’s goodwill. In the light of his evidence of customers’
personal loyalty, I do not find convincing his explanation that the trading
name’s purpose is to identify him as the boss of his company. He does that by
the use of his own initials in the first defendant’s actual name, though I can
well understand that he finds the use of the Asprey name in the first
defendant’s trading title of assistance in promoting the first defendant’s
business. That is achieved through association with the claimant’s goodwill.
37 The fact that William Asprey has sought to correct any instance of
confusion, by properly drawing attention, for example, to the error in the
article “Country Illustrated”, and the fact that he has put up a disclaiming
notice in the Mount Street shop, are to his credit. But the judge was entitled
to draw on his considerable experience in this field to say that such
disclaimers hardly ever work.
38 It has repeatedly been said that a conclusion on misrepresentation is a
matter for the judge and not for the witnesses, and evidence of actual
confusion is not a precondition of a finding of misrepresentation. As the
House of Lords has recently reminded us, this Court should be slow to
interfere with the conclusion of the lower court on what is essentially a
question of fact (see Designers Guild v. Russell Williams (Textiles) Ltd
[2001] F.S.R. 11). In the light of all the evidence before the judge, I am not
persuaded that the judge reached an incorrect conclusion in finding a
misrepresentation by the defendants through the use of the name William R.
Asprey, Esquire in connection with the first defendant’s business.
39 As for the third necessary element for passing off, damage, the judge
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found damage in the erosion of the distinctiveness of the Asprey name and
the deceptive invasion of the claimant’s goodwill. I did not understand Mr
Bloch to contend that the judge was not entitled to find damage if the second
element was satisfied.
40 It follows therefore that in my judgment the judge’s conclusion that
subject to the own name defence there was passing off by the defendants
should be upheld. The tort was committed by the first defendant trading
under the name William R. Asprey, Esquire. But William Asprey, by reason
of his prominent role in the first defendant’s use of that name, was a joint
tortfeasor with the first defendant.
41 I come now to the own name defence. Although doubts were expressed in
the House of Lords in Parker Knoll Ltd v. Knoll International Ltd [1962]
R.P.C. 268 on the correctness of certain aspects of Romer J.’s statement of
that defence in the Rodgers case, Mr Thorley was content to proceed before
the judge and in this Court on the footing that Romer J. had correctly stated
the conditions of the defence in the passage which I have cited from his
judgment in para. 19 above.
42 The first question that arises on this is whether the first defendant can take
advantage of this defence. I can answer the question shortly as Mr Bloch,
while not abandoning his submission that it could, recognised the difficulties
in that submission and did not press it. In my judgment it is plain that the
defence is not available to the first defendant. Its own name is WRA (Guns)
Ltd. The fact that it has chosen to adopt the trading name of William R.
Asprey, Esquire does not enable it to rely on the own name defence.
43 As the judge said, the defence has never been held to apply to names of
new companies as otherwise a route to piracy would be obvious. For the
same reason a trade name, other than its own name, newly adopted by a
company, cannot avail it. Further, as the judge also pointed out, because a
company can choose to adopt any trading name, there could be an own name
defence in almost every case if Mr Bloch were right. In my judgment he is
not.
44 That leads me to the question whether the judge was right to consider the
position which would obtain if the trade of the first defendant were
conducted by William Asprey himself. Whilst the possibility of that
occurring was raised by the defendants in correspondence, as I have noted in
para. 11 above, and whilst the judge may be correct in saying that the transfer
by the first defendant to William Asprey of its assets could easily be arranged
(subject to obtaining the consent of the minority shareholder in the first
defendant), the evidence before the judge disclosed no present threat that
such a transfer would occur. The judge’s pragmatic approach, however,
appears to have received the support of the parties and in this Court the
question only surfaced when Chadwick L.J. raised the point in the course of
the argument before us.
45 There is a real difficulty in supporting the judge’s approach. On the agreed
basis that Romer J.’s statement of the own name defence is correct, the
general rule that no man is entitled to carry on his business in such a way as to
represent that it is the business of another is subject to a limited exception.
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502 ASPREY AND GARRARD LTD v. WRA (GUNS) LTD

That is that he is entitled to carry on business in his own name subject to two
conditions: (1) he must not do anything more than to cause confusion with
the business of another, and (2) he must do it honestly. Given that prima
facie entitlement to carry on business in his own name, it is important that
the court should know precisely what he is doing (or threatening to do) if he
is to be denied that entitlement. In the present case, we do not know
precisely how William Asprey would trade in his own name. The judge has
assumed that there would be no change in the mode of trading, but he has
done so without evidence in order to answer a hypothetical question.
Moreover, the form of injunction granted by the judge against William
Asprey is very wide. It extends far beyond restraining him from being a joint
tortfeasor with the first defendant: he is prohibited from carrying on business
at all under his own name in the luxury goods specified in the order. In my
judgment the court would have to look very carefully at what William
Asprey was actually doing in his trading (or actually threatening to do) to
satisfy itself that his agreed entitlement to carry on business in his own name
was to be limited in some defined way or denied him altogether. I do not
think that the judge had, or this Court has, the factual material to form a
judgment on this point. In my opinion, whilst the first defendant can be
restrained by a permanent injunction against passing off on this Part 24
application, it was inapproprite to grant such an injunction against William
Asprey, who can only be restrained from acting as a joint tortfeasor.
46 In the circumstances it is unnecessary to say anything about the points
which would arise on the application to William Asprey of Romer J.’s
statement of the own name defence, nor need I deal with Mr Bloch’s highly
optimistic attempt to obtain assistance from the Convention.
47 I turn next to trade mark infringement.
48 On the question whether the judge was right to find infringement under
section 10(1) (implementing Article 5(1) of the Trade Marks Directive), Mr
Thorley conceded that, because the Paris Regional Court in S.A. Société LTJ
Diffusion v. S.A. Sades Vertbaudet on June 23, 2000 had referred to the
European Court of Justice the question whether there is identity between
the sign of an alleged infringer and a registered trade mark when the sign
uses the word constituting the trade mark in combination with other words,
the judge’s decision to give the claimant summary judgment under this head
could not stand.
49 On the question whether the judge was right to find infringement under
section 10(2), subject to section 11(2)(a) Mr Bloch did not add to his
submissions on passing off, and it is sufficient for me to say that for the
reasons already given in relation to passing off, the defendants have
infringed and are infringing the claimant’s trademarks. As for section
11(2)(a), that provision can afford the first defendant no defence as it is not
using its own name. William Asprey is not himself trading and so section
11(2)(a) cannot avail him. I would add that, however honest his subjective
intentions may be, any use of his own name which amounts to passing off
cannot be in accordance with honest practice in industrial or commercial
matters.
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50 For these reasons I would dismiss the first dependant’s appeal and vary the
injunction against William Asprey so that it is limited to one restraining him
from causing or procuring the first defendant or any other person to do any
of the acts referred to in paras (a) and (b) of the injunction granted by the
judge.
51 CHADWICK L.J.: I agree with the order proposed by Peter Gibson L.J.,
for the reasons which he has set out.
52 I wish to associate myself, in particular, with the views which Peter Gibson
L.J. has expressed, in paragraph 36 of his judgment, as to the significance of
what may be described as the “ancestral heritage” element; a feature which
receives much emphasis in the publicity material generated in order to
promote the business now carried on by WRA (Guns) Ltd under the name
“William R. Asprey, Esquire”. While accepting that Mr William Asprey
does not wish that business to be confused or associated with the business
now carried on by the claimant company, Asprey & Garrard Ltd, it seems to
me impossible to avoid the conclusion that he does seek to take the benefit of
goodwill which has been built up by generations of his family in relation to
the business in which they have been engaged for some two hundred years.
But, as Peter Gibson L.J. has pointed out, that goodwill now belongs to the
claimant company. It is reasonable to suppose that those who now own the
claimant company have paid handsomely for it; and they are entitled to
expect that the company’s assets will not be eroded by use made of that
goodwill in another business.
53 I am conscious that some will think this Court unhelpful and over-
pedantic in its refusal to follow Jacob J. in his pragmatic approach to
anticipatory relief in relation to Mr William Asprey’s own future business
activities. But I am satisfied that the Court should resist the temptation to
decide hypothetical future questions on an inadequate foundation of
existing facts. A court should be careful not to make orders which restrain
anticipated future conduct unless satisfied, with the degree of conviction
which is properly required, both (i) that it can identify with some precision
what it is that the person against whom such relief is sought will do unless
restrained and (ii) that the order can be made in terms which will enable the
person restrained to know, without ambiguity, what it is that he is restrained
from doing. Those conditions are not satisfied in relation to whatever
business (if any) Mr William Asprey may choose to carry on in the future in
his own name and on his own account.
54 KAY L.J.: I agree with both judgments.

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