Decision

Decision on Buoyant Group Limited

Published 26 March 2024

Companies Act 2006

In the matter of application No. 4210 by Buoyant Upholstery Limited for a change to the company name of Buoyant Group Limited, a company incorporated under number 09531457

Background and pleadings

1. The company name Buoyant Group Limited (“the primary respondent”) has been registered since a name change to company number 09531457 on 18 July 2022. It was originally registered on 8 April 2015 as Pay Weekly Limited.

2. By an application filed on 24 February 2023, Buoyant Upholstery Limited (“the applicant”) applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.

3. The applicant claims that it was founded in 1909. It employs 700 people at its production facility. It has a registered UK trade mark for BUOYANT UPHOLSTERY for, amongst other things, “furniture, fittings for furniture …, sofas and chairs”. It changed its name to its current name in 1999. It is claimed that the company has a strong relationship with a number of industry leading businesses and, in 2022, it was as “Highly Commended” by the British Furniture Awards for the Best of British category. It claims that its company name has goodwill in the field of home upholstered furniture for sale by retailers.

4. The applicant claims that the primary respondent’s name, Buoyant Group Limited, is confusingly similar to its own name. The primary respondent is located less than 40 miles from the applicant and trades in the renting and leasing of other personal and household goods, according to their listed business activity. It changed its name in July 2022 and was previously known as Pay Weekly Ltd. The applicant claims that this recent change of name may result in a substantial proportion of the public taking the products sold under the primary respondent’s name as being an official product of the applicant and/or assume an association between the two companies.   

5. The applicant also states that is contacted the primary respondent on 1 August and 28 November 2022 to warn it that if it did not change its name the applicant would commence proceedings against it.

6. The primary respondent filed a notice of defence and counterstatement. It denies most of what the primary respondent claims. It points to the addition of the word “Upholstery” in the applicant’s name claiming that this makes it clear that it is in the upholstery business and that it is a reference absent in its own name. It further claims that there are over thirty other registered company names that use the word “Buoyant” in their name.

7. The primary respondent relies upon the following two defences:

• its name was adopted in good faith as demonstrated by:
  
  - when the primary respondent expanded its activities from the “financially challenged” sector to a “whole of market” approach it secured a facility with a finance company in order to offer customers interest free credit. The finance company would not trade with a company called “Pay Weekly” as it was against their ethos and, consequently, insisted that the primary respondent change its name;
  
  - the primary respondent’s managing director, Scott Addy always considered himself to be a very positive and upbeat person and he “googled” the word “upbeat” and found that the word “buoyant” was a synonym for “upbeat”;
  
  - Mr Addy used the Companies House availability checker and “Buoyant Group” was available “and not deemed similar”. Consequently, the primary respondent’s name was changed to the contested name;
  
  - Mr Addy states he had never heard of the applicant until he was contacted by its representatives who demanded that the primary respondent change its name.
  
  

• the interests of the applicant are not adversely affected to any significant extent because:
  
  - the primary respondent’s name is not a trading name but, rather, it is a holding company for its many trading brands and, therefore, there is no possibility of the public being confused;
  
  - the primary respondent’s name does not appear anywhere on any of its websites or advertising thus there is no danger of confusion.
  
  - the claim that the primary respondent is local to the applicant is “nonsense” as it is not even in the same county.

8. At the request of the applicant, Mr Addy and his wife, Sharon Louise Addy, also a director of the primary respondent, were subsequently joined to the proceedings as co-respondents.

9. The parties both filed evidence and the applicant also filed written submissions. These are taken into account and will be referred to as necessary. A hearing was held on 13 March 2024. The applicant was represented by Alan Harper of Walker Morris LLP and the respondents were represented by Karen Taylor, a sole practitioner barrister, engaged directly by the respondents.

Evidence

10. The applicant’s evidence takes the form of a witness statement by Antony Robert Darley, a director and secretary of the applicant (“Mr Darley’s first witness statement”), together with Exhibits ARD1 – ARD27. He provides evidence regarding the extent of the applicant’s reputation and a response to the defences put forward by the primary respondent.

11. The respondents’ evidence is in the form of a witness statement of Mr Addy (“Mr Addy’s first witness statement”), dated 12 September 2023, in his capacity as managing director of the primary respondent, together with Exhibits SDA1 – SDA20. He provides evidence in support of the claim that the primary respondent’s name was adopted in good faith and he also provides information regarding communications between the parties.

12. At the hearing, reference was made to a further short witness statement of Mr Addy, dated the day after his first statement. It did not appear to be in the Tribunal records but as the other side acknowledged that they had received it, I admitted it and requested a copy to be provided to the Tribunal. This was done the day after the hearing. The purpose of this second witness statement was to disclose the proportion of the primary respondent’s turnover that arises from the sale of furniture.

13. The applicant filed evidence-in-reply in the form of a further witness statement of Mr Darley (“Mr Darley’s second witness statement”) together with Exhibits ARD28 – ARD29. He provides new evidence regarding an actual instance of confusion, and he provides a response to Mr Addy’s evidence.   

Decision                                                   

14. At the time the application was received, Section 69 of the Act stated:

“(1) A person (“the applicant”) may object to a company’s 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 “goodwill” includes reputation of any description.”

15. As a result of Statutory Instrument 2024 No. 234,^{[footnote 1]} section 69 has been amended as follows:

• Section 69(1)(b) has been amended so that consideration of similarity between the applicant’s name (in which he has goodwill) and the registered company name is extended to use outside of the United Kingdom, where such use would likely mislead members of the public outside the United Kingdom

• Section 69(3) has been amended so that persons who were members or directors of the registered company at the time at which the name was registered may be joined as respondents

• Section 69(4)(b) has been repealed in its entirety. This means that a defendant will no longer be able to defend the challenge against its registered company name on the basis that (i) it is operating under the name, (ii) it is proposing to do so and has incurred substantial start-up costs in preparation, or (iii) it was formerly operating under the name and is now dormant (users should note that all other defences provided under section 69(4)(a), (c), (d) and (e) remain unchanged)

Preliminary issue

16. Whilst the applicant made no refence to passing off in its pleadings, it did so in its written submissions and Mr Harper mentioned it in his skeleton argument. Prior to the above changes to the legislation an “operating” defence under section 69(4)(b)(i) provided a rebuttal to any claim to passing off. Following the legislative changes, section 69(4)(b)(i) is deleted and the barrier to a passing off claim removed. However, in the current case, the respondents did not rely on an “operating” defence and, therefore, the parts of the legislation in play in the current proceeding remain unchanged despite the legislative change.

17. The respondents rely upon two defences, one of which is the “good faith” defence. If they are able to make good this defence then it would defeat the application.  

18. The parties were in agreement that the changes did not impact these proceedings and Mr Harper did not pursue the unpleaded case relating to passing off.  

Goodwill/reputation

19.  The relevant date for the purpose of proving goodwill/reputation is 18 July 2022 which is the date on which the company changed its name to the contested name .   

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

What 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.

21. 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’s evidence relevant to demonstrating its goodwill/reputation can be summarised as:

• the applicant has been trading in the furniture industry since 1909, registered as a company on 30 December 1998, changed its name to Buoyant Upholstery Limited on 12 March 1999 and has traded under that name except when its name is abbreviated to Buoyant; ^{[footnote 2]}

• the applicant has created its own state-of-the-art production factory which employs over 700 people. A letter is provided from Nick Garrett in his capacity as chairman of the British Furniture Manufacturers in which he states that the applicant “is a long established, leading UK manufacturer of furniture” and it is “a valued, long-standing member of BFM and have consistently been a big contributor to the organisation”;^{[footnote 3]}

• the applicant trades nationwide and also attends many trade shows across the UK;^{[footnote 4]}

• it also appears in a number of industry trade magazines such as “Interiors Monthly” and “Furniture News”. A number of examples from between January 2023 to June 2023 of these are provided that consist of articles championing the applicant’s British-made furniture together with full page advertisements. One other discusses the applicant’s appearance at the January 2023 Furniture Show. The applicant is referred to as “Buoyant Upholstery” and uses the domain name www.buoyant-upholstery.co.uk. ^{[footnote 5]}

• extracts from its website that show the applicant’s address details includes its full company name as part of the address. ^{[footnote 6]}

• the applicant has many partnerships with global bodies that have resulted in its own substantial reputation in the UK. ^{[footnote 7]}

• the applicant was the first company to receive a FSC Furniture Award, declaring it a sustainable future champion; ^{[footnote 8]}

• further extracts from its website proclaim “a century’s worth of knowledge, experience and quality” and “[w]e are proud of our heritage and our part in British manufacturing history”; ^{[footnote 9]}

• the applicant’s products are sold through reputable vendors ^{[footnote 10]} such as Relax Sofas and Beds, ^{[footnote 11]} Furniture Direct UK, ^{[footnote 12]} and Choice Furniture Superstore. ^{[footnote 13]} The applicant’s sofas are identified by the names “Buoyant” or “Buoyant Upholstery” and the website of the first of these retailers also provides information about the applicant;
• The applicant has a registered trade mark for the name Buoyant Upholstery filed in August 2022, ^{[footnote 14]} filed to protect its position after the applicant became aware of the primary respondent; ^{[footnote 15]}

22. At the hearing, Ms Taylor submitted that goodwill must emanate from a source but the evidence fails to illustrate this.

23. Wadlow on the Law of Passing Off 6th Ed. contains the following helpful guidance as to the ownership of goodwill as between manufacturers and distributors when there is no agreement covering the ownership of goodwill:

“3-293 The factors which influence the ownership of goodwill were encapsulated by Lord Reid in Oertli v Bowman [[1959] R.P.C. 1, 7 HL]:

“Bowmans made and marketed the Turmix machines without the appellants [plaintiffs] having controlled or having had any power to control the manufacture, distribution or sale of the machines, and without there having been any notice of any kind to purchasers that the appellants had any connection with the machines.”

“3-294 There are two distinct, and not necessarily consistent, standards in this passage. One is to ask who is in fact most responsible for the character or quality of the goods; the other is to ask who is perceived by the public as being responsible. The latter is (perhaps surprisingly) the more important, but it does not provide a complete answer to the problem because in many cases the relevant public is not concerned with identifying or distinguishing between the various parties who may be associated with the goods. If so, actual control provides a less decisive test, but one which does yield a definite answer.”

“3-295 To expand, the following questions are relevant as to who owns the goodwill in respect of a particular line of goods, or, mutatis mutandis, a business for the provision of services: (1) Are the goods bought on the strength of the reputation of an identifiable trader? (2) Who does the public perceive as responsible for the character or quality of the goods? Who would be blamed if they were unsatisfactory? (3) Who is most responsible in fact for the character or quality of the goods? (4) What circumstances support or contradict the claim of any particular trader to be the owner of the goodwill? For example, goodwill is more likely to belong to the manufacturer if the goods are distributed through more than one dealer, either at once or in succession. If more than one manufacturer supplies goods to a dealer and they are indistinguishable, the dealer is more likely to own the goodwill. [See Gromax v Don & Low [1999] R.P.C. 367 (Lindsay J)].”

24. Ms Taylor pointed to the third-party websites advertising for sale the applicant’s sofas as shown at Exhibits ARD 18 – ARD20 and submitted that it is not clear that these goods emanate from the applicant. It was argued that the consumer would only link the goods to the retailer advertising the sofas. Ms Taylor argued that, consequently, the goodwill would not be identified by the consumer as attaching to the applicant.

25. In light of the evidence and also the guidance in Wadlows, this line of reasoning is not persuasive. Firstly, there is evidence that the applicant’s sofas are provided through numerous retailers and as discussed in Wadlows, this increases the likelihood that the goodwill will be perceived as being that of the manufacturer. Secondly, the web pages from the retailer “Relax Sofas and Beds” includes the following text clearly identifying that the promoted Buoyant sofas are not its own:

… Buoyant are one of the UK’s oldest upholstery manufacturers. Founded in 1908, this Lancashire based company, use their knowledge and experience to make outstanding sofas at exceptional value.

26. Whilst retailers such as John Lewis may offer sofas from a number of manufacturers the applicant’s sofas are very likely to be distinguishable from these because of the use of its name “Buoyant” or “Buoyant Upholstery”. Certainly, there is no evidence that these retailers only provide Buoyant-branded sofas. If they did sell only these, it may increase the likelihood of the consumer perceiving “Buoyant” or “Buoyant Upholstery” as being a “house brand” and the retailer being responsible for such goods. Upon encountering Buoyant or Buoyant Upholstery sofas on these retailers’ websites or in their stores, the consumer is likely to believe that the person responsible for the goods is not the retailer, but an entity identified as Buoyant or Buoyant Upholstery. Finally, even if this were not the case, in light of the substantial sales to these retailers, the applicant will have a goodwill/reputation from the perspective of the retailers themselves who, for the purposes of assessing goodwill, are also customers of the applicant. Taking all of this into account, I dismiss Ms Taylor’s submission that the evidence fails to show that any goodwill attaches to the applicant.

27. Further, as shown in the respondent’s own evidence, for the year ending September 2022, the applicant had sales of £51.4 million ^{[footnote 16]} and “sells furniture to large retailers such as DFS, Sofology, Argos and John Lewis…” ^{[footnote 17]}. This is additional to online retailers Relax Sofas and Beds, Furniture Direct UK and Choice Furniture Superstore shown in the applicant’s evidence. It is inconceivable that a long-standing business with such a turnover selling to these retailers does not benefit from goodwill or reputation.

28. I also dismiss Ms Taylor’s criticism that the applicant’s evidence of its sofas appearing on third party websites does not demonstrate that there had been any sales. It is clear from the evidence that the applicant supplies its sofas to a good number of furniture retailers and that it has a turnover of £51 million. Such criticism cannot stand up against this evidence that clearly shows the applicant has significant sales and that these appear to be through or to a number of different retailers.

29. Ms Taylor also pointed out that the three retailers, Relax Sofa and Beds, Furniture Direct UK and Choice Furniture UK, shown in Exhibits ARD 18 – ARD20 are dated after the relevant date in these proceedings. They were accessed on 16 June 2023, but I notice that the first has a 2002 copyright notice and the third has a 1998 – 2023 copyright notice. Taking this into account together with the evidence regarding the long history of the applicant, that it has used its current name for 25 years and that at least some of these web extracts relate to content that was on the website prior to the relevant date, I dismiss Ms Taylor’s criticism of the evidence.  

30. Ms Taylor also criticised these exhibits for failing to show whether there were any sales of the applicant’s sofas. It is extremely unlikely that despite providing sofas to numerous retailers, it has not achieved any sales. In light of the applicant’s turnover as referred to by Mr Addy, when viewing the evidence as a whole, despite the applicant not providing turnover figures, it is clear that it has a reasonably large, long standing business and this has been under its current company name since 1999.

31. In summary, taking all this evidence into account, despite there being an absence of figures to illustrate the extent of the applicant’s goodwill, it is clear that its activities under the name have been going on for many years and that it has an established footprint in the furniture sector at least in respect of providing sofas. I conclude that the applicant has the requisite goodwill/reputation as required by section 69(1)(a) and section 69 (7).

Are the names the same or “sufficiently similar”?

32. The primary respondent’s name must also be “sufficiently similar” 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 “Buoyant Upholstery Limited”. The differences between this name and the primary respondent’s name “Buoyant Group Limited” is the presence of the word “Upholstery” in the applicant’s and the word “Group” in the primary respondent’s name. Owing to these differences, the names are not the same (section 69(1)(a)) and I must consider whether they are “sufficiently similar” as required under section 69(1)(b).

33. The word “Limited” is merely descriptive of the legal nature of the respective businesses and is present in both parties’ company names but it can play no role in either increasing similarity or distinguishing between the two names.

34. In respect of whether the names are “sufficiently similar”, Mr Harper submitted that the words “Upholstery” in the applicant’s name and the word “Group” in the primary respondent’s name carry less significance because the former is used to indicate the relevant industry that the applicant operates within, and the latter merely indicates a group of companies. He concluded by asserting that the word “Buoyant” has no meaning in the industry and is the dominant and distinctive part of both parties’ names and upon encountering the names, it is the word “Buoyant” that will be recalled and the other words will be disregarded. On the other hand, Ms Taylor submitted that the word “Upholstery” is underplayed in the other side’s submissions and that its use in the applicant’s name “is absolutely key”. Ms Taylor continued that the word describes the industry and what the applicant does, and that it differentiates the names.

35. I agree with Mr Harper. The word “Upholstery” being descriptive of the industry involved will play a lesser role in the minds of both the applicant’s business and retail customers and it is the word “Buoyant” that creates the memorable part of its name. The same can be said of the primary respondent’s name where the word “Group” and “Limited” will play a lesser role in identifying the entity. Consequently, both parties are likely to be recalled by the word “Buoyant”.

36. In circumstances where a customer or potential customer does recognise the differences between the two names, it is reasonable to conclude that Buoyant Group Limited is likely to be perceived as the over-arching company for a group of “Buoyant” named companies of which the applicant could be one. Therefore, in such circumstances, the customers or potential customers are likely to believe there is an economic connection between the parties.    

37. 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’s name in the UK would be likely to mislead by suggesting a connection between it and the applicant’s business.

Defences

38. The applicant has successfully demonstrated that it has the requisite goodwill/reputation and I have found that the respective names are sufficiently similar. Therefore, the onus switches to the respondents to establish their defence. There are two defences relied upon and I consider these below.

Is name was adopted in good faith

39. 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.

40. This defence is relied upon, namely, that under section 69(4)(d) the contested company name was adopted in good faith. The reason that the primary respondent changed its name is explained by Mr Addy ^{[footnote 18]} and can be summarised as follows:

• the primary respondent changed its name from Pay Weekly Limited” because one of its finance partners required that it have a name which did not suggest to customers that they must pay weekly for their goods and a letter from the finance partner is provided to confirm this; ^{[footnote 19]}

• the reason the name was chosen is because he wanted a name which reflects the upbeat nature of the team at the primary respondent despite being hit hard by the pandemic. After conducting a Google search for the word “upbeat” the word “buoyant” appeared. This search appears to have been repeated ^{[footnote 20]} for the purposes of supporting the witness statement and the top listing is “entitled “149 Synonyms & Antonyms of UPBEAT” and the word “Buoyant” appears as the fifth word in a list of synonyms;

• Companies House name checker found no exact matches for “Buoyant Group” and offered up a link to purchase the name;

• Mr Addy did not search for the names “Buoyant Furniture Limited” or “Buoyant Sofas Limited” that, he claims, would have been the natural choices if he was not acting in good faith;

• at the same time Mr Addy purchased the domain name “buoyantgroup.co.uk”. He made no attempt to purchase “buoyantfurniture.co.uk” or “buoyantsofas.co.uk” that were also available and he claims this is further evidence that he was acting in good faith;

• Mr Addy had no knowledge of the applicant until he received the letter of claim dated 1 August 2022 from the applicant’s representative. He claims that his absence of knowledge of the applicant is not surprising because the applicant sells to large retailers who then sell the sofas under their respective brands. He supports with extracts from the applicant’s website that show the applicant identifying the retailers “we work with” but there is nothing in the exhibit that even suggests that its sofas are branded by the retailers and further Mr Addy’s claim runs contra to the applicant’s evidence that illustrates retailers selling “Buoyant” or “Buoyant Upholstery” branded sofas. He concludes that this evidence illustrates that “Buoyant Upholstery is not a household name”;

• Mr Addy identifies that fact that the applicant did not register “Buoyant Upholstery” as a trade mark until August 2022 as an indication that it has not been a brand name that it needed to protect and supports his claim that it is not a household name and that it is not a name that he would have known;

• Mr Addy states that because selling furniture is not the primary respondents’ main area of business it does not subscribe to furniture trade magazines and this is a further reason why he was unaware of any goodwill possessed by the applicant;

• the parties’ offices, whilst only being 15 miles apart, are in different counties and may also explain why Mr Addy had not heard of the applicant and, further, it is claimed that the applicant does not sell furniture from its premises;

41. The applicant claims that in light of the goodwill it enjoys, the respondents’ claim that they had no knowledge of it cannot be true. Mr Harper also submitted that the primary respondent’s reluctance to give up its name can only be because it does benefit from it being similar to the applicant’s name. Ms Taylor countered this by explaining that there is a large amount of administration around changing a name such as having to inform suppliers and banks, and this is a reason not to give up the name. The applicant’s interpretation of the impact of its goodwill/reputation upon the respondents’ knowledge of it and of the reasons why the primary respondent has resisted changing its name are noted, however, equally, there could be reasons consistent with good faith.  

42. Mr Addy provides a plausible explanation of how he came to choose the name and a contemporaneous Google search still brings up the word “Buoyant” as a synonym for “Upbeat” lending credibility to his explanation. Further, that fact that the applicant does not appear to have a sales premises at its base increases the likelihood that Mr Addy would have not come across the applicant despite it being based only 15 miles away. Without such sales premises, the benefit to a third party of copying the name is no greater than if copying a name of a company based much further away. This is another pointer to it being coincidence that the primary respondent’s name happens to share the same distinctive element as the applicant. It is relevant that the primary respondent’s name, whilst in use to identify the company, is not the name used to promote its goods. Mr Addy states that it trades under the names “Pay Weekly Carpets, Carpet Monster, Blind Giant and The Great British Sofa Company. ^{[footnote 21]} This reduces the chances of any unfair benefit accruing to the primary respondent resulting from its choice of name and is a further pointer of good intentions when the primary respondent’s name was chosen. Finally, I also note Mr Addy’s unchallenged narrative evidence ^{[footnote 22]} that he conducted clearance searches in respect of the Companies Register and found that “Buoyant Group” was available.  This is also consistent with good faith actions.       

43. Therefore, whilst I am not persuaded by some of Mr Addy’s statements, his evidence supporting his claim of good faith is persuasive and when the above points are taken into account, I am satisfied that the primary respondent’s name was adopted in good faith.

44. The primary respondent has, therefore, made out a defence to the claim against it and this decides the proceedings in favour of the respondents. However, for completeness, I will also comment on the respondents’ second defence.  

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

45. The primary respondent submits that the respective marks are sufficiently distinguished from each other by the presence of the word “Group” in its name and the word “Upholstery” in the applicant’s name. I have already dismissed this when considering whether the marks were sufficiently similar. I need say no more about this other than to make it clear that for the same reasons that the marks are sufficiently similar, this is a prima facie reason why, upon encountering the primary respondent’s name, a customer or potential customer may believe that it is economically connected to the applicant and creates a possibility that the applicant’s interests will be affected.

46. The primary respondent claims that it supplies directly to the public but that the applicant does not, and this is relied upon as a reason why the applicant’s interests cannot be affected. Further, it also points out that only 17.87% of its turnover arose from furniture sales. This amounted to 1163 items of furniture sold, or which only 132 arose from new business (as opposed to customers who had previously transacted with the primary respondent). It claims that, consequently, its activities do not adversely impact the applicant. ^{[footnote 23]}

47. I am not persuaded by this reasoning. Whilst the interests of the applicant may not yet be affected, because of the similarity between the names there is a likelihood of its interests being affected in the future. The applicant is identified at “Buoyant” or “Buoyant Upholstery” when its goods are sold by retailers and so the public will be exposed to the name. This negates the fact that the applicant does not sell directly to the public. Further it is clear that both parties sell the same goods and whilst the majority of the primary respondent’s sales of furniture is to existing customers, this may change in the future and further increases the likelihood of impacting upon the interests of the applicant in the future.

48. Ms Taylor also sort to persuade me that the parties operate in different fields. She supported this submission by pointing to the SIC codes used by the respective companies when declaring their field of business on the Companies Register. The applicant’s SIC code 31090 relates to “Manufacture of other furniture” and the primary respondents SIC code 77299 relates to “Renting and leasing of other personal and household goods”. I note that, on the face of it, there may be overlap between furniture and household goods and even if I am wrong, there are closely aligned goods. Further, a company is at liberty to change its business focus and so the use of these SIC codes is not determinative in any way. Finally, as already mentioned, Mr Addy states that 17.87% of the primary respondent’s turnover arose from furniture sales. This demonstrates that the primary respondent has already branched out from the activities listed in its SIC code and into the same field as the applicant.

49. Therefore, there remains a real risk that the applicant’s interests are adversely affected and this defence fails.

Outcome

50. The applicant has demonstrated that it has the requisite goodwill or reputation but the respondents have a successful defence based upon good faith under 69(4)(d).  

Costs

51. The Tribunal awards costs from the published scale at paragraph 10 of the Tribunal’s 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 respondent was not represented at the time it filed its Form CNA2 and defence. Litigants in person are awarded costs based on an hourly rate of £19 (being in line with the guidance of CPR 46.5). I consider four hours is a reasonable time for the respondents consider the applicant’s Form CNA1 and provide a defence and I will award £76 as a contribution to this element of their costs. The award breakdown is as follows:  

Considering the Form CNA1 and filing the Form CNA2: £76

Fee for filing the Form CNA2: £150

Filing evidence and considering the other side’s evidence: £700

Preparing for, and attending Hearing: £750

Total: £1676

52. Buoyant Upholstery Limited is ordered to pay Buoyant Group Limited, Scott David Addy and Sharon Louise Addy the sum of £1676.  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 appellate tribunal).

53. 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 26 March 2024

Mark Bryant
Company Names Adjudicator                 

1. the Limited Liability Partnerships (Application of Company Law) Regulations 2024, the commencement date of which being the same as that for section 1 of the Economic Crime etc Act, namely 4 March 2024 ↩

2. Mr Darley’s first witness statement at [3] ↩

3. Ditto at [4], [5] and Exhibit ARD1 ↩

4. Ditto at [6] and Exhibits ARD2, ARD4 and ARD5 ↩

5. Ditto at [7] and Exhibits ARD6 – ARD12[ ↩

6. See Exhibits ARD3 and ARD4 ↩

7. Mr Darley’s first witness statement at [8] ↩

8. Ditto at [8.3] and Exhibit ARD16 showing an undated page of the applicant’s website (but carrying a 2023 copyright notice) ↩

9. Exhibit ARD17 ↩

10. Mr Darley’s first witness statement at [9] ↩

11. Exhibit ARD18 showing Buoyant branded sofas (undated but bearing a 2022 copyright notice) ↩

12. Exhibit ARD19 being undated extracts from the website of Furniture Direct UK showing Buoyant branded sofas ↩

13. Exhibit ARD20 again showing Buoyant branded sofas for sale on the third party website. Again, this is undated but carries a 1998 - 2023 copyright notice ↩

14. Mr Darley’s first witness statement at [10] and Exhibit ARD21 ↩

15. Mr Darley’s first witness statement at [14] ↩

16. Mr Addy’s first witness statement at [18ii] ↩

17. Mr Addy’s first witness statement at [18i] ↩

18. At [5] and [6] – [17] of his first witness statement ↩

19. At Exhibit SDA1A ↩

20. Exhibit SDA2: It carries the date “Fri 1 Sep” and this corresponds to the same day of the week when 1 September fell in 2023, the month the witness statement was provided. I also note that the company name change took place in July 2022 and that this is a further pointer that the search was conducted for the purposes of compiling evidence in these proceedings. ↩

21. His first witness statement at [3] ↩

22. See [7] of his first witness statement ↩

23. Mr Addy’s second witness statement at the third bullet point ↩