A South Yorkshire law firm has been cleared of passing off after it continued to use a former partner’s name to promote its services after she had left the firm.
The dispute started when Juthika Bhayani left her job as a partner at Doncaster and Sheffield-based Taylor Bracewell after three years in the role.
Despite her departure in 2014, the firm continued to use a sub-brand for its employment law offerings called Bhayani Bracewell. The firm also registered a trade mark for the term.
Bhayani alleged passing off and asked for a revocation of the trade mark on the basis that its use was liable to mislead the public that she was still a partner.
Taylor Bracewell applied for a summary judgment and to strike out the claims.
Taylor Bracewell said any goodwill associated with the Bhayani Bracewell trading name is retained by Taylor Bracewell under the terms of its partnership agreements. It also said it stopped trading as ‘Bhayani Bracewell’ following the settlement of an employment claim in April 2015, and used the term only in ‘minor historical references’.
According to the judgment by the Intellectual Property Enterprise Court, Bhayani had acquired a reputation in her field but that reputation is not the same as goodwill and therefore not sufficient for a passing-off action.
Handing down the judgment, His Honour Judge Richard Hacon said Bhayani had ‘no realistic prospect of establishing that in law she owns goodwill on which to base a case of passing off’.
He said that because Bhayani’s reputation had been established at law firms (rather than as a sole practitioner), there was no separate business which could be characterised as belonging to her.
‘Leaving aside sole practitioners, the public are well aware that a solicitor, whether employed or an equity partner, is not a free agent,’ Hacon wrote. ‘Ultimately the quality of services of any individual solicitor is guaranteed by the firm. If the quality falls short, any compensation is available from the firm, not the individual solicitor. The goodwill generated by a solicitor’s work qua solicitor vests in the firm.’
However, Bhayani’s claim that Taylor Bracewell’s use of the ‘Bhayani Bracewell’ trademark was liable to mislead the public that she was still associated with the firm was accepted as having a ‘realistic prospect of success’. Hacon declined to strike out the claim.