The recent decision of Recorder Amanda Michaels in Prysmian v M/S Apple International & Ors (https://www.bailii.org/ew/cases/EWHC/IPEC/2023/2176.html) shows the importance of keeping track on where goodwill is assigned and who owns it. It is common for companies to assign goodwill, whether through a sale or internal re-organisation and unless someone identifies the sources of that goodwill and the various brands generating it, it can be lost or not assigned at all. This is what happened to the Claimant in this case. Complex sale agreements and internal re-organisations failed to include the goodwill for what was once one of the leading brands in UK manufacturing.
This case also shows the brutal consequences of goodwill being abandoned. Evidence of reputation and of a fondness for a historical brand does not constitute goodwill. Unless a business is trading using a brand, i.e. the attractive force to bring in custom, the protectable goodwill will be lost.
The Claimant’s claims for passing off and registered trade mark infringement were dismissed.
Andrew Norris KC and Jonathan Moss appeared for the successful Defendants.
