The court found that the elements to establish passing off were satisfied:
- There was significant goodwill associated with the McAlpine name which was shared by the claimant and the defendant;
- The removal by the defendant of its distinguishing first name amounted to a misrepresentation that its business was associated with the claimant's business given the large area of overlapping business activities between the claimant and the defendant;
- There was damage to the claimant's business as a result of the possibility of deception of the public over whether work done by the defendant was done by the claimant and over whether there was one or more than one owner of the goodwill.
*Full case details
Sir Robert McAlpine Ltd vs Alfred McAlpine plc, 31 March 2004, High Court Chancery Division, Judgment of Mr Justice Mann.
The three elements that the claimant had to prove in this case to establish the tort of passing off were progressively more contested. There was no dispute that there was significant goodwill attaching to the name McAlpine. The claimant then had to show a misrepresentation that would lead the purchasing public to believe that the services offered by the defendant were those of the claimant. There was argument as to whether the "relevant public" was informed members of the construction industry or the public at large.
The judge found that there was a misrepresentation, which operated even upon professionals in the industry and employers placing business. This was because of the evidence of different members of the industry that references to "McAlpine" or "McAlpines" would commonly be references to the claimant. The damage this misrepresentation would cause to the claimant was the most problematic element. The judge acknowledged that part of the damage feared by the claimant (an example of which was being left off a tender list because the defendant trading as McAlpine had been implicated in a railway accident because of failure to perform a maintenance contract and the bad publicity had rubbed off on the claimant) was speculative. He considered, however, that it was a real possibility in the modern commercial world, and therefore that it was the sort of damage that the law of passing off is intended to prevent.
The judge used the analogy of the defendant "elbowing out" the claimant from enjoying his share of the goodwill of the name and found that the other part of the damage alleged had been made out also. The judge acknowledged in passing the defendant's aim to "be McAlpine in the marketplace", and affirmed it as a commercially perfectly legitimate objective. This objective had to be achieved by normal commercial forces, however, and not by the defendant representing itself as being what it was not by the cosmetic exercise of re-branding.