HomeInsightsHigh Court finds passing off by defendant in relation to Alyssa Smith jewellery business

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Facts

In 2009, Alyssa Smith started to make her own jewellery, operating as a sole trader selling at local events. Later that year, she launched a website at alyssa-smith.com and subsequently at alyssasmith.co.uk. Even whilst the business was in its infancy, Ms Smith, through social media, attracted a good deal of media attention for her business, with her jewellery being worn by celebrities and featured in the national press, including Marie Claire and Vogue magazines. She also won numerous awards. The business continued to grow and the media attention increased. Ms Smith traded by reference to the signs, ALYSSA SMITH JEWELLERY, ALYSSA JEWELLERY and @ALYSSAJEWELLERY (the ASJ Signs).

In 2012, the claimant company, Alyssa Smith Jewellery Ltd (ASJ), was incorporated with a view to taking over the existing business. It continued to design, make, and sell jewellery by retail under the ASJ Signs. A confirmatory assignment to ASJ of Ms Smith’s pre-existing goodwill was signed in May 2019.

The defendant, Alisa Goodstone t/a Alyssa Jewellery Design, was also a designer. She described herself as a serial entrepreneur, having run various businesses in the wedding, children’s parties, greetings cards and cupcake industries. Her wedding business was at one stage run under the name “Lisa Stone”.

Ms Goodstone said that in late 2012 she started making bracelets for friends. She decided to turn this into a business and called it “Alyssa Jewellery Design.” She used that name in a logo form, with a little heart device over the “y” of “Alyssa”. In 2013, she acquired the domain names alyssajewellerydesign.com and alyssajewellerydesign.co.uk. In 2014, she launched a website, designed by her husband. She too used social media to market her business under the name “Alyssa Jewellery Design” and using the Twitter handle @Alyssabracelet. In some media, she used just the name “Alyssa”, with the little heart device (all together, the Goodstone Signs). She also achieved some level of success with her designs, as evidenced by press cuttings from Vogue (December 2016 edition) and Brides Magazine (Jan/Feb 2017 edition) showing her products.

ASJ became aware of Ms Goodstone’s activities in late 2018, when various emails and telephone calls were received from customers who, ASJ said, had confused the two businesses. In August 2019, ASJ issued proceedings against Ms Goodstone for passing off.

Decision

Goodwill

The question was whether ASJ had goodwill before the date when Ms Goodstone started to use the Goodstone Signs.

Ms Goodstone claimed to have started trading under the name “Alyssa Jewellery Design” in December 2012, but there was no supporting documentary evidence. Overall, Miss Recorder Amanda Michaels found Ms Goodstone’s evidence vague, tentative and so unsatisfactory that she could not rely upon any references to dates unless supported by documentary evidence, which was sparse: there was only a single advertisement from September 2013 for a pop-up “boutique” greetings card shop showing the “Alyssa Jewellery Design” sign in logo form alongside a photograph of a charm bracelet. Miss Michaels therefore found that Ms Goodstone did not start using the Goodstone Signs until sometime in 2013.

On the other hand, Miss Michaels had no hesitation in finding that ASJ had goodwill in each of the ASJ Signs before Ms Goodstone had commenced use.

Misrepresentation

Ms Goodstone’s evidence was that, when choosing a name for her jewellery business, she had wished to use a name other than her own name to maintain her privacy whilst at the same time using a name that was close to her own name. She said that “Alyssa” was a known variation of “Alisa” and that the initials of “Alyssa Jewellery Design” were also the same as her daughter’s initials. She did not explain why she would have been identified by use of her own first name, “Alisa”, but not “Alyssa”, or why that mattered for the business. In fact, there was documentary evidence of an advertisement in relation to an earlier business, which showed her name Alisa and mobile telephone number, suggesting that she was not always unwilling to make use of her own name for business purposes. Further, she had used the name Lisa Stone in previous business ventures and did not explain why she could not have used the same name for this business.

When choosing a name, Ms Goodstone’s and her husband’s evidence was that they had carried out a trade mark search, but not any internet searches. In Miss Michaels’ view, in this digital age, this was surprising, especially as her husband was knowledgeable enough to build Ms Goodstone’s website and she had easily signed up to social media and successfully promoted the business on it since 2016.

In Miss Michael’s view, if Ms Goodstone or her husband had carried out more than the most trivial online research using the name “Alyssa” in relation to jewellery, they would have come across the ASJ Signs. In fact, the Twitter handle Ms Goodstone chose suggested she may well have done so. It was more likely than not, therefore, that Ms Goodstone was aware of the ASJ Signs when she chose to call her new business “Alyssa Jewellery Design”, or soon after.

In Miss Michael’s view, given that “Alyssa” was the dominant and distinctive feature in all of the ASJ Signs, the public would be more likely to recall the relatively unusual name “Alyssa” than the other elements of the Signs. All the Goodstone Signs used the identical name and any additional element, i.e., “Jewellery Design” and the minimal design elements of the “logo”, was not intrinsically distinctive. Therefore, the name “Alyssa” was also the most distinctive part of the Goodstone Signs.

Further, both parties were using the Signs in relation to jewellery businesses. The differences between the parties’ respective goods, whether of theme or price point, would not be obvious to the average consumer and would not help them to distinguish between the two businesses.

In addition, neither party had an especially striking web design nor used a particularly distinctive style to present its goods. In Miss Michael’s view, the consumer would not readily identify differences between them, or if differences were discerned, they would not necessarily think they were looking at a different (as opposed to updated) website.

ASJ produced evidence of a couple of incidents of what it said was actual confusion. While not much weight could be attached to this evidence, Miss Michaels said that they could not be ignored. In Miss Michael’s judgment, this was the kind of case in which instances of confusion might well not have come to ASJ’s attention as people who were confused might not have realised their mistake, given the similarity of the products, or might have had no reason to complain. Overall, Miss Michaels had no doubt that Ms Goodstone’s use of such highly similar signs to the ASJ Signs, in relation to essentially identical goods sold in very similar ways, amounted to a misrepresentation, and would be likely to lead to confusion and deception.

Miss Michaels dismissed Ms Goodstone’s argument that the parties had traded in parallel without any difficulties for over six years, as there was little evidence of trading by Ms Goodstone until about 2016 and there were no figures to show the scale of trade before 2019. The only figures presented suggested that the scale of Ms Goodstone’s trade was extremely small (under £6000 for 2019/20), which would be less likely to lead to conflict between the parties. Miss Michaels referred to Phones 4U Ltd v Phone4u.co.uk Internet Ltd [2007] RPC 5 in which Lord Justice Jacob said, “if one has no idea of the extent of side by side use, then the inference of no deception cannot be drawn. You have to show there is a dog who could have barked”.

Accordingly, the claim succeeded. (Alyssa Smith Jewellery Ltd v Alisa Goodstone t/a Alyssa Jewellery Design [2021] EWHC 1482 (IPEC) (9 June 2021) — to read the judgment in full, click here).