The respondent had built up a funeral directors business under the name of “Richard T Adlem Funeral Director”. In 1993 the respondent sold the business to a Mr Beckwith, who continued to use the name “Richard T Adlem Funeral Director”.

In 2000 Mr Beckwith sold the business and goodwill to the appellant. The appellant continued to use the name Richard T Adlem. The respondent assisted the appellant in the new business.

In 2001 the respondent re-commenced his own business under the name Richard T Adlem and subsequently started objecting to the appellant using the name. In 2002 the respondent succeeded in registering the name “Richard T Adlem Funeral Director” as a trademark.

In legal proceedings the appellant alleged that the respondent was passing off the respondent’s business as an undertaker as and for the appellant’s business. The appellant claimed that he had acquired title to the goodwill of the business and accordingly all the goodwill in the name was vested in him. The respondent was not therefore entitled to use the name and further the trademark registration was invalid.

The court at first instance held that the name did not denote either the appellant or the respondent exclusively – they had concurrent rights to use it and therefore the passing off claim failed. However the court held that the trademark was unenforceable against the appellant.

The appellant appealed against the first instance decision and the respondent cross-appealed against the finding of non-infringement of his trademark.