Passing Off Question by another company

[Ljw]

Around 4 years ago I set up a company with a friend.

There was never any official agreement between either party. Our partnership failed very early on after around 4-6 months once I figured out his enthusiasm for the business did not match my own. I was the one that set up the company. I was the one doing the logo, the website, the quotes, the daily planning etc and he just turned up when he felt like it and expected half of the profits, majority of the time in cash.

Once I decided It wasn't working we had a conversation, we both agreed he would walk away from the business after I paid him some money to cover a van purchase we had made. I then kept the van and continued with the company.

I've had no contact with him since that day.

I continued with the business and over the last 3 years it has grown significantly and we have a great reputation in our local area with 99% 5* reviews.

Last week it came to my attention my old friend has set up a website and a similar company, same services with a similar name.

On his new website he has used several of the images of the work undertaken 4 years ago when we was working together and his is claiming it is work carried out by this new company he has set up. He has used at least 3 images from 3 different jobs and claiming his new company did the work.

Any advice on where I stand with this?

I'm fairly sure what he has done is not 100% acceptable.

Regards
Lee

[atticus]

You may be able to take action in respect of the use of the name, so as to force him to use a name that does not suggest an association with your business.

As to photographs etc, who owns the copyright? Can you prove this?

Do you have the resources to bring what may be expensive legal action? If not, concentrate on winning in business.

[dslippy]

Did the jobs he refers to originate from before or after the break up?

I note that you did not overtly buy the goodwill - the right to claiim to continue the company.

[Ljw]

Hi guys.

thanks for the replies.

The job originated from when we was working together.

The name the company isnt really my main issue. Its a point that hes claiming his company did the work when it didnt.

There was no goodwill purchased as there was never any official agreements as in contracts. Just a conversation.

Thanks
lee

[Ljw]

Do you have the resources to bring what may be expensive legal action? If not, concentrate on winning in business.

i have a resource for a small amount but also probably not the time etc.

[atticus]

you may well need greater resources than that.

[dslippy]

"Its a point that hes claiming his company did the work when it didnt.

There was no goodwill purchased as there was never any official agreements as in contracts. Just a conversation."
Then at the point when the work was done, he had an interest in the company. Since you did not buy the goodwill, he retains the right to represent himself as carrying on a successor business.

As Atti says, concentrate on doing your work as well as you can and forget this.

[Ljw]

Thanks for the responses guys. Appreciated.

I will concentrate on my own business Luckily enough the work he is displaying is 4+ years old so there is no confusion in anyone seeing this and getting mixed up so will continue to concentrate on my own business and more forward.

thanks
Lee

[R0b]

I would offer a slightly alternative view of things.

First, I do think there is a genuine claim based on the circumstances of passing off, both as to the use of the photographs and also the name of the company. I don't think that goodwill really comes into it here, as it's clear that company A clearly did the work 4 years ago and now the ex-partner by setting up company B is attempting to claim that his now established company actually did the work which is the very definition of passing off.

As for money and resources, it used to be the case that IP claims were expensive but we now have the Intellectual Property Enterprise Court which operates like a claim that is allocated to the small claims track in normal county court proceedings. In other words, claims under £10,000 means that legal costs are not recoverable unless you are behaving unreasonably.

If the company is newly formed, you may raise the issue with the Companies House registrar who could look at the matter. You may also try your hand at the Company Names Tribunal but legal costs are in play and fi you lose then you would be expected to pay costs. A good short guide to all of this can be found on the link below.

Fact-Sheet-Challenging-a-Company-Name.pdf (everymanadvisory.co.uk)

[Ljw]

I would offer a slightly alternative view of things.

First, I do think there is a genuine claim based on the circumstances of passing off, both as to the use of the photographs and also the name of the company. I don't think that goodwill really comes into it here, as it's clear that company A clearly did the work 4 years ago and now the ex-partner by setting up company B is attempting to claim that his now established company actually did the work which is the very definition of passing off.

As for money and resources, it used to be the case that IP claims were expensive but we now have the Intellectual Property Enterprise Court which operates like a claim that is allocated to the small claims track in normal county court proceedings. In other words, claims under £10,000 means that legal costs are not recoverable unless you are behaving unreasonably.

If the company is newly formed, you may raise the issue with the Companies House registrar who could look at the matter. You may also try your hand at the Company Names Tribunal but legal costs are in play and fi you lose then you would be expected to pay costs. A good short guide to all of this can be found on the link below.

Fact-Sheet-Challenging-a-Company-Name.pdf (everymanadvisory.co.uk)

Thanks for this information Rob. This was my initial thought. My company is a landscape company and as such there are plenty of companies called xxx landscapes, yyy landscapes. The name isn't really my issue here but as you point out it's the fact they are claiming company B did the work when it clearly didn't.

I''m now working with a company to track all images on my website and social media pages to ensure this is not happening by others also. (not the company name)
I'm based in the midlands and so far I have found a company based in the north east that is using 2 images from our web site advertising their services and claiming they have also done this work.

Has anyone ever experienced any no win no fee solicitors willing to take on such claims? The company working to take down the images is doing this for free based on a 50% split if they get any fees from legal action they take on my behalf.

Regards
Lee