Decision

Decision on Botanica Ltd

Updated 21 July 2023

Companies Act 2006

In the matter of application No. 3294 by Botanica Agriculture and Extraction Ltd for a change to the company name of Botanica Ltd, company registration no. 12562150

Background and context

1. The facts on which the following decision is taken have previously been considered by the Company Names Tribunal, whose previous decision was published under the reference BLO/809/21. An appeal by Botanica Agriculture and Extraction Limited of that Tribunal decision was heard in the High Court on 26 October 2022, where Mr Justice Leech allowed the appeal and remitted the Appellant’s application to the Tribunal to be determined again. ^{[footnote 1]}

2. This present decision is taken by a Company Names Tribunal composed of different adjudicators from those who decided the matter previously. This decision will re-present the essential details of the Application and is made having given close attention to the appeal judgment, points from which are referenced to the extent the Tribunal considers warranted in determining the matter afresh.

3. The basic facts of the case were set out in the decision BLO/809/21. Since the parties took no direct issue with the essential facts of the case, it is convenient at points in this decision to recycle some of that content from the previous decision, more or less directly.

4. Section 69 of the Act states:

(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 these 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.

5. Company 12562150 (“the Primary Respondent”) was incorporated on 17 April 2020 with the name Botanica Ltd. On 29 September 2020, an application was made to the Company Names Tribunal under section 69 of the Companies Act 2006 (“the Act”) by filing a Form CNA1 seeking to change the name of the Primary Respondent.

6. As to the identity of the applicant, as was noted in the earlier decision, box 3 of the Form CNA1, which reads: “Name and address of the applicant”, was completed in the following manner:

Sembu Gbla – Botanica Agriculture and Extraction Ltd, 17 Trafalgar Road, Clacton-on-Sea, Essex, United Kingdom, CO15 1LR.

7. Section 60(1) of the Act affords a right of objection to a person - “the applicant” - who considers a company’s registered name to be misleadingly similar to a name associated with the applicant in which he has goodwill. It appears that Mr Gbla filed the Application on behalf of and in his capacity as an officer of Botanica Agriculture and Extraction Ltd. This was the conclusion of the adjudicators in the previous decision, which identified repeated references in the Form CNA1 to “the company”. ^{[footnote 2]} Moreover, Botanica Agriculture and Extraction Ltd is named as the appellant in the High Court case, and for the purposes of this present decision, it is also regarded as “the Applicant” (not Mr Gbla personally).

8. In the Application (completed by Mr Sembu Gbla), it was requested that the Primary Respondent’s secretaries/directors - namely Aman Dulay, Atul Sharma and Sandeep Singh Varaich - be joined to the proceedings under the provisions of section 69(3) of the Act. The named individuals were given notice of this request and an opportunity to comment or to object. As the Tribunal received no comments or objections they were joined to the proceedings as co-respondents on 4 February 2021 and made jointly and severally liable with the Primary Respondent for costs.

9. In response to question 10 on the Form CNA1 which reads, “What is the name associated with you which has caused you to make this application?”, it is stated:

Botanica Agriculture and Extraction Ltd is the full name of our company, the company has also recently registered Botanica Pharmacueitics [sic] Ltd due to the threat posed by the formation of Botanica Ltd.

10. In relation to “goodwill or reputation” (question 11 on the Form CNA1), it is stated:

The company has worked extremely hard to develop a strong brand reputation and good social presence. We are now registered in four countries and counting, and are recognised by our trading name (which is the prefix of our full name) Botanica. The company has research partnerships pending with the University of Westminster life science department and UCL. These are, of course, relationships we worked very hard to develop and do not wish to jeopardise. We are also working very hard to acquire various licences abroad which will benifit [sic] our UK based business tremendously, the situation at present however remains highly sensative [sic] and any ambiguity such as this may cause irreparable damage to our brand which has taken many years to develop.

11. It is stated that that the field of business in which the names relied upon have goodwill/reputation is: “Life sciences, pharmaceutical preperation [sic], cultivation of medicinal crops.”

12. It is stated that the company name is objected to because:

Careful investigation has revealed severe concerns about the credibility, integrity and conduct of the defendants as they both display some very perculiar [sic] online activity. A company Mr Sharma was recently appointed director of Sappire Independant Finance Limited has overdue accounts even though the appointment was only made this year. Scott Thomas Findlay who was supposedly born in June 1988 resigned on the 3rd of July 2020 and was replaced by Mr Sharma. What is most peculiar about this is that the two gentleman seem to share the same personal address. Which of course may give rise to the consideration that this name, may in fact simply be an allias [sic] used by Mr Sharma. Scott Thomas Findlay was actually a rifleman in the Auckland war who died in September 1916. Sandeep Singh is the director of another company, Property No.6- which in 5 years has only reported losses, on the 1st of September he started another business, the spice fox, which is in the catering industry. The true occupation of this individual is not known in addition to being involved in catering this individual has also declared himself a property investor and now a pharmacist. Most respectfully, above is the clear activity of fraudsters, as such the company wishes to have no affiliation with any persons concerned [sic].

13. In response to question 15 on the Form CNA1, which read “What action do you want the Tribunal to take?”, it is stated:

For Botanica Ltd to be dissolved or instructed to change their name so that the defendants are not able to claim association with our group. Botanica Ltd appearing as dissolved on the register is also not ideal as this may give rise to further confusion where our brand name is concerned. With this being said a complete removal of the listing would be ideal so as to avoid any confusion in the future. It would indeed be bizarre [sic] for there to be two pharmaceutical companies, both based in the UK, both called Botanica. Furthermore, the above may lead to a situation where an automatic assumption is made, whereby Botanica Ltd is considered to be part of our group. For obvious reasons, it is crucial [sic] for the company to mitigate any chance of this being possible for the opportunists. We are also very concerned that they may continue carrying out their fraudulent activities while using our name and we have no means of doing anything to prohibit them from what they are doing. The action of them forming Botanica Ltd is considered by us to be a case of Corporate Identity [sic] Fraud.

14. In response to question 16 on the Form CNA1, which read “Please provide any other relevant information you may have that you consider relevant to this application” respectively, it is stated:

It is our clear understanding that the individuals concerned are opportunists who registered Botanica Ltd after seeing us online, with the intention of trying to use our brand name/reputation for their financial gain and/or to prevent us from later acquiring the name for ourselves. With respect I believe it would certainly seem to be an ill willed move on their part in either case.

15. It is stated that costs are sought, and in response to question 7 on the Form CNA1 which reads: “Did you warn the company that if it did not change its name that you would start legal proceedings against it? If “yes”, when did you warn the company?”, it is further stated:

We have not made any contact with the individuals due to several highly concerning truths which have been discovered about them. We have appealed with Companies [sic] House and recently heard back from a case manager in the breaches team. Unfortunatley however, there were some complications with regard to instructing a change of name under section 67(1). [sic]

The defence

16. On 17 December 2020, the Primary Respondent filed a notice of defence (signed by Atul Sharma). Mr Sharma states:

Every statement made by Mr Sembu Gbla is inaccurate, unjustified and some instances contradictory based on how he seems to interpretate [sic] his areas of concern. We deny every part of his claim.

We are very disappointed to have received correspondence from the claimant, specifically as to how you can make a charge for filing a defence when we followed all legal channels in setting up our company. There is no evidence of any wrong doing, and the allegations raised.

Prior to setting up the company, companies house was researched to determine the name of our company was available, and we have set about the usual and legal process in setting up this company. The names and addresses filed are accurate with no wrong-doing having taken place…

17. Mr Sharma asked that the Applicant provide proof of a range of the allegations made in the Form CNA1 - which relate, broadly speaking, to the business being relied upon and the claims made in relation to, inter alia, himself and Messrs. Varaich and Findlay. Attached to the Form CNA2 are four appendices (to which we shall return to the extent necessary). Insofar as the business being relied upon is concerned, we note that the Primary Respondent asked for proof of the following:

1). Registrations details of the 4 countries they are working in, as Botanica with dates preceding the 12th Nov 2019 if possible.

2) Proof of pending Partnership with Westminster University and ULC [sic] under the name of Botanica, Email trails with date and or such proof would be sufficient. Any sensitive information can be censored.

3) Contact details for a person with significant authority to prove a pending partnership is in the pipeline as Botanica.

4) Proof of strong social presence as Botanica with a time stamp. Preferably for dates preceding 12th Nov 2019 and for the years of brand building?.

18. In its Notice of Defence, the Primary Respondent indicated that it relies on defences based upon sections 69(4)(a), (c), (d) and (e) of the Act. It also requested its costs.

Option for re-hearing and further filings

19. In the appeal ruling, Mr Justice Leech suggested that in the light of his judgment the parties might be able to take a view about the correct outcome without the need for it to be considered a second time by the Tribunal. In view of this, the Tribunal wrote to the parties on 21 February 2023 as follows:

I refer to the appeal judgment of Mr Justice Leech in the matter of BOTANICA AGRICULTURE AND EXTRACTION LIMITED (“the Appellant” / “the Applicant”) – and - BOTANICA LIMITED (“the Respondent”).

A copy of that appeal judgment is attached for ease of reference. (For completeness, and further ease of reference, the original decision of the Tribunal published on the GOV.UK website is also attached.)

The parties will have read the appeal judgment and noted the Judge’s order that the matter be remitted to the Company Names Tribunal for a re-hearing by a different panel of adjudicators.

A new panel has been convened and stands ready to consider matters afresh if the parties wish it to do so, although it is noted that at the final sentence of his judgment, His Honour, Mr Justice Leech raised the possibility that the parties may agree a view without further recourse to the Tribunal. It is also noted that Companies House shows that Botanica Ltd applied to strike off the company on 9 February 2023.

The purpose of this letter is to invite the parties:

(i) ACTION: To confirm by Tuesday 14 March 2023 whether
(a) the parties wish for the new Tribunal panel to look at matters afresh; and
(b) if so, whether the parties request an oral hearing before the Tribunal panel or are content for matters to be determined from the papers;

If the parties wish for the new Tribunal panel to look at matters afresh:

(ii) they are encouraged to consider closely the content of the appeal judgment in full.

With regard to points made at paragraph 24(1) – (7) of the appeal judgment, the Tribunal confirms as follows:

• the Tribunal will first consider whether the Applicant has established its ground under section 69(1) of the Companies Act. This will require the Tribunal to determine whether the name associated with the Applicant in which it claims to have goodwill is the same as or sufficiently similar to the name of the Respondent. The relevant date for assessment of the claimed goodwill is 29 September 2020, which is the date on which the Applicant filed Application No. 3294 for a change of company name. (Paragraph 24(4) of the judgment therefore need not concern the parties);

• only if the ground under section 69(1) is established will the Tribunal move on to consider the separate issue of whether the respondent has proved the defences on which it relies under section 69(4) - (a), (c), (d) and (e) of the Act;

• it is noted that the Respondent has chosen to file no evidence in the proceedings. ^{[footnote 3]} The merits of a defence under section 69(4)(a) of the Act may be determined based simply on the publicly accessible register of Company Names taken with the evidence that has been filed by the Applicant. However, the defences under 69(4)(c), (d) and (e) cannot succeed without evidence

• with regard to paragraph 17 of the appeal judgment it is noted that the additional documents that the Appellant sought to adduce on appeal were not apparently admitted into those proceedings and they clearly do not form part of any proceedings before the Tribunal. Those documents included a ‘without prejudice’ letter dated 28 November 2021; in this regard, see paragraph 24(6) of the appeal judgment

• it is noted that at paragraphs 33 and 34 of the original decision by the Tribunal, the panel referred to the content of the Form CNA1 which had asked: “What is the name associated with you which has caused you to make this application?”. The response was: “Botanica Agriculture and Extraction Ltd is the full name of our company, the company has also recently registered Botanica Pharmacueitics [sic] Ltd due to the threat posed by the formation of Botanica Ltd.” However, looking wider across the Form CNA1 and the Respondent’s Form CNA2, the panel was content to proceed on the basis that the Applicant relied also on the word “Botanica” solus

• ACTION: If the parties wish to proceed with the re-hearing (oral or paper-based), the Applicant should clarify what are the name(s) associated with the goodwill that the Applicant claims to have had at the relevant date.

Any submissions that the parties wish to make to the Tribunal in light of any of the above points, including those at paragraph 24(1) - (7) of the appeal judgment, should also be filed by Tuesday 14 March 2023.

20. On behalf of the Applicant, Mr Sembu Gbla, responded to the above correspondence from the Tribunal, but his email reply addressed none of the above points and simply attached the judgment of Mr Justice Leech (the same document that the Tribunal had included in its correspondence). There is consequently no documentation filed on behalf of the Applicant before this second Tribunal beyond that which was before the previous Tribunal.

21. On behalf of the Respondents, Mr Atul Sharma replied to the Tribunal correspondence to confirm that they were content for a decision to be made from the papers. Mr Sharma’s email also included an account in support of the Respondents’ consistent position that the company name was registered in good faith. The content of what Mr Sharma filed was not presented under a signed statement of truth, nor framed as a witness statement. As such, what he says in his correspondence may not be regarded as properly filed evidence, though it may have some weight as submission. Mr Sharma’s account includes the following points:

(i) He provides a brief outline of the company’s evolving business plan to provide workshops promoting health and wellbeing and essential-oil-based hand-sanitiser, but that the enterprise was thwarted by dramatic rises in the price of ethanol.

(ii) The Respondent had originally wished for the company to be called “The Organic Chemist LTD”; his accompanying inclusion marked ‘Exhibit 1’ appears to be an invoice, dated 11 March 2020, addressed to Mr Sandeep Varaich (who is one of the Co-Respondents) in respect of company formation in the name of The Organic Chemist Limited. However, Mr Sharma explains that correspondence with the General Pharmaceutical Council had identified an obstacle to the use of the word “Chemist” in its company name. ^{[footnote 4]} Mr Sharma states that they therefore decided to change the name to “Botanica LTD”, intended to portray a “natural and organic” ethos and reference the plant- and herb-based organic oils Mr Sharma says the company was using. He provides a definition of “Botanical” from Oxford Languages dictionary: “a substance obtained from a plant and used typically in medicinal or cosmetic products”.

(iii) The Respondent had concluded that its original plan was not financially viable, and had decided to dissolve the company. Shortly after the appeal judgment, Mr Sharma states that Mr Gbla wrote to the Respondent in reference to a trade mark registration 3537239. This is the trade mark “Botanica” in Class 5 for Cannabis for medical purposes, filed on 25 September 2020 and standing registered in the name of Botanica Pharmaceutics Ltd (Mr Gbla’s company). Appendix 9 shows an invoice marked as originating from Botanica Pharmaceutics Ltd, which is addressed to the Respondent and seeking payment for 3 x “Trade Mark License Agreement Fees” along with interest, which together totalled £17,311,580.68.

22. While the Tribunal has noted the above various points put forward by Mr Sharma, it will become apparent later in this decision that the weight to be afforded to those submissions is not strictly a matter to which this Tribunal needs to give its consideration.

23. As noted in paragraph 13 above, Mr Gbla had referred to the possibility that the Applicant’s concerns might, at least to some extent, have been satisfied were the Primary Respondent to be dissolved. However, in later correspondence, Mr Gbla wrote:

Contrary to our previously proposed resolution we have now decided that we do not wish for the respondent’s company name to be struck off the register.

When a company is struck off the name of that company remains on the register as dissolved for a period of 6 years. - This will likely be very damaging to the reputation of our brand and may result in additional damages being sought;- as we feel such an instance should be averted we have decided not to opt for this course of action.

We would instead like to request an order requiring the respondent’s name to be changed under Section 73.

24. Although the Respondent’s application to Companies House for strike off had been referenced in bold in the previous Tribunal correspondence (presented at paragraph 19 above) the Applicant does not appear to have taken any steps to contest the application for strike off before Companies House. Having waited for the outcome of the Primary Respondent’s application to Companies House for strike off, the Tribunal provided the parties with the following update on 18 May 2023:

The Tribunal notes that the challenged company no. 12562150 was dissolved on 9 May 2023.

The (dissolved) respondent company, in response to previous correspondence from the Tribunal had indicated that it would be content for a decision to be made from the papers.

Before the Tribunal proceeds to make such a decision from the papers, the parties are asked to confirm whether (1) that is indeed their wish, or (2) whether in view of the fact that the challenged company is now dissolved, the parties would be content to discontinue the company name proceedings by mutual agreement.

…

25. Both parties confirmed that they wished for the Tribunal to proceed with this present second decision.

The Evidence

26. Decision BLO/809/21 set out a solid and thorough summary of the evidence, and since the parties took no issue with that summary, it is convenient to reproduce it here, again more or less directly.

The Primary Respondent’s evidence

27. The appendices attached to the Form CNA2 included:

(i) Appendix 1 - This consists of details obtained from Companies House in relation to Botanica Agriculture and Extraction Ltd. This shows that company no.11020673 was originally incorporated under the name ACAS INTERNATIONAL LTD with the change to its current name being agreed by special resolution on 11 November 2019;

(ii) Appendix 2 – of this exhibit Mr Sharma states: “There is a website under the name of www.botanicamedicare.co.uk which is linked to his [Mr Gbla’s] companies. That website is not live and is under construction, which is to be made live in JAN 2021, as suggested by the page….”. The page provided from the website mentioned contains a printing date of 17 December 2020. It contains the word “Botanica” at the top left-hand side of the page and the following text: “This website is under construction and will be live in January 2021 - Thank you for visiting” and “Botanica MediCare a devision of Botanica Pharmaceutics goes by the trading name Botanica, and forms part of the Botanica Agriculture and Extraction Ltd (UK) Group, registered in England and W…Companies Act 2006. Companies House Registration No. 11020673. Copyright © 2020. All rights reserved”;

(iii) Appendix 3 - is said to be a page from botanicamedicare’s Instagram account. It contains a printing date of 17 December 2020 and looks like this:

Mr Gbla’s evidence

28. Mr Gbla’s evidence consists of a witness statement, dated 30 March 2021. Mr Gbla is a director of Botanica Agriculture and Extraction Ltd. He confirms the source of information in his statement is “personal knowledge & company records.” A good deal of this statement contains submissions rather than evidence of fact. Although we will only record evidence of fact here, for the avoidance of doubt, we have read the statement and bear its contents in mind when reaching a conclusion. Insofar as Appendix 2 to the Form CNA2 is concerned (in relation to the domain name botanicamedicare.co.uk), Mr Gbla explains that this “is an old domain no longer in use”, adding that botanicapharmaceutics.co.uk is the new domain name, though he does not say when the new domain name was first used.

29. In relation to the Instagram account, he states: “The reputation to which we refer is one which has been established with prospective clients in our field. Relevant consumers to our business will be licensed pharmaceutical manufacturers only and as such, the company has no interest in developing a presence directed toward members of the general public.”

30. Exhibit 1 consists of details obtained from the Companies House website in relation to Botanica Agriculture and Extraction Ltd (the Applicant), and to company no. 12899845 “Botanica Pharmaceutics Ltd”, which was incorporated on 23 September 2020. We note that Mr Gbla is a director of both companies.

31. Mr Gbla’s witness statement describes Exhibit 2 as “Confirmation of incorporation in the Netherlands (complete)”. The cover page of the exhibit itself describes its source as “Email from Westerdok Notary”, but in the email the details of the sender have been redacted. The top of the email refers to “…Botanica Pharmaceutics B.V.”, is dated 19 November 2020 and is addressed to Mr Gbla. The text of the email includes the following: “Your company is established and registered…”. The email also states that a certified copy of incorporation and an English translation of the articles of association are attached, but neither is exhibited.

32. Exhibit 3 (from the Corporate Affairs Commission, Sierra Leone), indicates that “Botanica Agriculture and Extraction Limited” was registered in Sierra Leone on 3 September 2020.

33. Exhibit 4 consists of what appears to be part of a contract between Botanica Agriculture and Extraction Ltd (with an address in the UK) and a lawyer (whose name has been redacted) in relation to a “Legal opinion on the German legal framework and preconditions for import of medical cannabis, international obligations, EU-GMP, contact with BfArM etc.”

34. Also provided is what Mr Gbla describes as a “retainer invoice”, dated 26 August 2020 (in the amount of €2500) issued to Botanica Agriculture and Extraction Ltd (at an address in the UK), in relation to “our fees contract…from 26th of August 2020, 10h, as from 8/26/20.”

35. Exhibit 5 consists of an email exchange between “Sembu Gbla Botanica” and an individual from a “Portuguese Law firm” (whose name has been redacted). It appears that Mr Gbla’s email was dated 3 November 2020. It reads: “Dear xxx thanks for this. It was indeed a pleasure talking with you. We look forward to working with you also and will be in touch in due course.”

36. The response from the unnamed individual (which appears to be dated 3 February 2021) reads: “Dear Sembu, I hope you are doing well. I wonder if you have any developments on your decision to incorporate in Portugal…”. Mr Gbla adds that this process was “…delayed by Covid-19.”

37. Exhibit 6 consists of an email exchange between Mr Gbla and a “Senior Lecturer in Molecular Pathology” at the University of Westminster whose name has been redacted. The title of the email exchange is “University of Westminster – Research partnership proposal.”

38. On 26 February 2020 Mr Gbla wrote to the unnamed individual stating: “Dear Dr xxxx. Please find attached correspondence which we hope will be of interest to you…”

39. The unnamed individual responded to Mr Gbla on the same date stating: “Dear Sembu, Thank you for the email, this sounds a good opportunity and I am copying our office for research partnerships in at this point to discuss further…”

40. Exhibit 7 consists of what Mr Gbla describes as “our brand logo.” The two undated images provided consist of the word “Botanica” presented in title case in the colour blue and the same word presented in the colour white against a blue rectangular background.

41. That concludes the summary of the evidence filed (to the extent considered necessary by the present panel of adjudicators). It is, however, also pertinent to reproduce the helpful chronology of events presented in the previous decision of the Tribunal. The chronology summary is fair and accurate and in the appeal case Mr Gbla himself referred the judge to the chronology, which the appeal judgment also reproduced.

18 October 2017	Applicant incorporated in the UK as ACAS INTERNATIONAL LTD
11 November 2019	Applicant’s name changed to Botanica Agriculture and Extraction Ltd
26 February 2020	email exchange with the University of Westminster regarding a research partnership proposal
17 April 2020	Botanica Ltd incorporated in the UK i.e. the primary respondent
August 2020	Agreement on fees between an unnamed German lawyer Botanica Agriculture and Extraction Ltd (from which an invoice appears to have followed on 26 August 2020.)
3 September 2020	Botanica Agriculture and Extraction Limited registered in Sierra Leone
23 September 2020	Botanica Pharmaceutics Ltd incorporated in the UK
29 September 2020	Application made to this Tribunal under section 69 of the Act
3 November 2020	Initial enquiries regarding incorporation in Portugal
19 November 2020	Botanica Pharmaceutics B.V. incorporated in the Netherlands

42. It is also worth noting that at paragraph 24(7) of the appeal judgment, the judge stated that in remitting the matter to be heard afresh by the Tribunal, the Applicant would “have the opportunity to rely on its existing trademarks as evidence of goodwill at the relevant date even though those trademarks were registered very soon after and had not been registered by the date of the application (although they were registered only four days later).”

43. As noted earlier in this decision, no evidence or further submissions were filed on behalf of the Applicant subsequent to the appeal judgment. It does not therefore appear that the Applicant has actively sought to rely on trade marks as evidence of goodwill at the relevant date. Nonetheless, it is clear that the Applicant has raised the potential significance of its trade marks, both in email correspondence with the Tribunal case worker immediately after the publication of the first decision of the Tribunal, and as an issue before the appeal judge. Therefore, taking into account that the trade mark register is a public register, this Tribunal has accessed the register and notes that it includes the following trade mark registration in the name of Botanica Pharmaceutics Ltd, whose Clacton-on-Sea address matches that of the Applicant (as given at paragraph 6 above). Given the details of the registration, and the materials filed by Mr Sharma, it may reasonably be assumed that this is the trade mark that Mr Gbla has referred to.

Trade Mark No. UK00003537239 for the following series of four Marks:
Botanica
Botanica Pharmaceutics

Registered in Class 5: Cannabis for medical purposes
Filing date: 25 September 2020
Publication date: 5 February 2021
Registration date: 16 April 2021

44. In making the present decision, the Tribunal shall additionally take into account the existence of the above trade mark registration.

45. A central point of the appeal judgment was that the Tribunal had been in error in identifying the relevant date for establishing a claim under section 69(1) of the Act as “the date of incorporation of the primary respondent which, in this case, is 17 April 2020.” ^{[footnote 5]} As the appeal judge pointed out, that is inconsistent with the approach taken in other Company Names Tribunal cases, which correctly identify the relevant date as the date of the application for the change of a contested company name. For instance, in its decision in MB Inspection Ltd v Hi-Rope Ltd [2010] RPC 18 at [43], the Tribunal stated:

The applicant must show that it has a goodwill or reputation under the name at the date of the application, in this case 7 October 2008. If this is established, the respondent has a prima facie defence if it can establish that the name was registered prior to the commencement of the activities upon which the applicant relies, as per section 69(4)(a) of the Act. This is not the same as establishing that the goodwill or reputation must have been established before the name was registered. Such an approach will militate against a successful application being brought where a company name was registered in anticipation of a goodwill or reputation being established.” ^{[footnote 6]}

46. Section 69(1) of the Act is framed in the present tense, giving a person the right to object to a company name that it is (a) the same as a name associated with the applicant in which he has goodwill, or (b) 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. It is therefore entirely logical that the date for assessing any goodwill claimed by an applicant is the date on which it applies to change the third-party company name. If the evidence bears out an applicant’s claim under section 69(1), then there exist the various potential defences under section 69(4) on which a respondent may seek to rely (the first three of which – 69(4) (a), (b) and (c) - are subject to the constraint of section 69(5), which provision exists as a safeguard against opportunistic profiteering).

47. As the judge noted at paragraph 24(1) of his appeal judgment, and as expressly emphasised in the Tribunal correspondence quoted at paragraph 19 above, the first consideration is whether the Applicant has established its claim under section 69(1) of the Act. This requires the Applicant to prove that as at the relevant date - which is 29 September 2020, when it applied to change the name of the Primary Respondent – the Applicant could lay claim to goodwill associated with a name that is the same as or misleadingly similar to “Botanica Ltd”. Although the Tribunal had asked the Applicant to clarify what are the name(s) associated with the goodwill that the Applicant claims to have had at the relevant date, it did not do so. The previous Tribunal faced the same lack of clarity, and gave its decision in the following terms:

What names is the applicant relying upon?

33. In its application, the applicant identifies Botanica Agriculture and Extraction Ltd and Botanica Pharmacueitics Ltd as the names which has caused it to make its application. Notwithstanding the misspelling, we are satisfied given the information provided in exhibit 1 to Mr Gbla’s statement, that this should have read Botanica Pharmaceutics Ltd. The applicant also states:

Botanica Agriculture and Extraction Ltd is the full name of our company…”(response to question 10);

And:

We are now registered in four countries and counting, and are recognised by our trading name (which is the prefix of our full name) Botanica…” (response to question 11).

34. Having reviewed the evidence as a totality, it is clear that the applicant should also have identified “Botanica” solus when it responded to question 10. However, it appears that the primary respondent was fully aware of this when, in its Form CNA2, it asked for proof the applicant is working “as Botanica”, “under the name of Botanica…”, “is in the pipeline as Botanica” and has “strong social presence as Botanica.” As a consequence, we shall proceed on the basis that the applicant is also relying upon the word “Botanica” solus. The applicant must show that it had a goodwill or reputation at the date mentioned which is associated with one or other of the names indicated.

48. It is the view of the present Tribunal that the above approach is generous; this name was not mentioned at all in the CNA1 and the Applicant has not responded to the tribunal’s request for clarification. The question to which the present tribunal gives its focus is therefore whether the Applicant has shown that it had the necessary goodwill/reputation associated with (i) Botanica Agriculture and Extraction Ltd and/or (ii) Botanica (solus). For completeness, we also note the references in the evidence to Botanicamedicare and to Botanica Pharmaceutics Ltd.

49. Section 69(7) of the Act defines goodwill as a “reputation of any description”; so for the purposes of the Companies Act 2006, goodwill is not limited to the classic description given in the House of Lords judgment in IRC v Muller & Co’s Margarine Ltd [1901] AC 217:

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.

50. In relation to establishing a goodwill/reputation, this Tribunal routinely looks for guidance to case law developed in trade mark proceedings. In such proceedings, it is well established that goodwill of more than a trivial nature, even if it is small, is capable of protection. ^{[footnote 7]} The Applicant has made no challenge to either of those case law principles as to the nature of goodwill and what extent of goodwill is protected, and the appeal judge considered it right not to have done so.

51. In his evidence, Mr Gbla refers to “…the initial establishment of our brand with the formation of Botanica Agriculture and Extraction…”. That, in the view of this Tribunal, is an admission that there was no use of any of the names being relied upon (particularly Botanica solus) prior to the date on which the Applicant changed its name from ACAS INTERNATIONAL LTD to its current name i.e. 11 November 2019. There is in any event no evidence of the Applicant’s use of any of the ‘botanica’ names before that date, nor even any claim to that effect. Thus, it appears that, at best, the Applicant’s use of some of the names being relied upon commenced only a little over ten months before the Application on 29 September 2020 to change the name of the Primary Respondent.

52. The Primary Respondent requested certain evidence in its notice of defence, which prompted the Applicant to question the legitimacy of that request for information about “the affairs of our brand”. Whilst respondent(s) cannot dictate the evidence to be filed by an applicant, the Applicant does have an obligation to establish before the Tribunal that it has goodwill/reputation in one or more of the names being relied upon. Whilst that is a relatively low hurdle, the Tribunal would normally expect to see that prior to the relevant date the Applicant had made outward-facing use of one or more of the names being relied upon, together with, for example, an indication of the nature and extent of the Applicant’s customer base, turnover figures achieved and promotional efforts. The requirement for the use to be more than merely internal use arises from the requirement in section 69(1) of the Act for use of the offending name to be likely to mislead by suggesting a connection between the company and the applicant. If there is only internal use, no one will be misled.

53. As is clear from the chronology set out in the table at paragraph 41 above, the evidence from the Applicant regarding its claimed goodwill or reputation is very limited indeed. The evidence taken as whole falls far short of substantiating Mr Gbla’s claim to have established a reputation with “prospective clients in our field” where “relevant consumers to our business will be licensed pharmaceutical manufacturers only”. There is no evidence of any significant commercial activity at all at any stage.

54. The redacted email exchange of 26 February 2020 between Mr Gbla and an individual at the University of Westminster regarding a “Research partnership proposal” (exhibit 6) is of no assistance. It contains an upper case letter “B” on the left hand side of the page, but shows no references to any of the names relied on by the Applicant. It does not indicate the content of the correspondence enclosed with that bare email and, frankly, the response may be no more than a polite referral onwards to another department of the university. Mr Gbla’s mention of “research partnerships pending with the University of Westminster life science department and UCL” are entirely unsubstantiated.

55. The retainer invoice for 10 hours’ work from an unspecified German lawyer addressed to the Applicant as Botanica Agriculture and Extraction Ltd is not evidence that shows that the Applicant had outward facing goodwill or reputation in Botanica solus or any significant goodwill or reputation in Botanica Agriculture and Extraction Ltd.

56. It is not sufficient to generate goodwill or reputation merely to have registered a company, whether in the UK or elsewhere, whose name features the word “Botanica”. The evidence that “Botanica Agriculture and Extraction Limited” was registered in Sierra Leone and Botanica Pharmaceutics Ltd was incorporated in the UK is of no assistance. Nor, clearly, are the enquiry about incorporation in Portugal and the incorporation of Botanica Pharmaceutics B.V. in the Netherlands, not least since they date from after the relevant date.

57. Similarly, merely filing for a trade mark before the relevant date does not establish goodwill or reputation at the relevant date. In passing off law it is well established that the acquisition of goodwill requires public recognition of the sign relied on by the claimant. ^{[footnote 8]} The ‘Botanica’ trade mark series is registered in the name Botanica Pharmaceutics Ltd – not in the name of the Applicant. The account in the appeal decision appears inaccurate; the register shows that the trade mark was applied for on 25 September 2020, just four days before the relevant date, and it was not until February 2021 that the trade mark application was made public (by its inclusion in the Trade Marks Journal). We acknowledge that the goodwill required under the Act may incorporate aspects of reputation that would not qualify for protection under the law of passing off. Nevertheless, it is difficult to see how a reputation can be acquired before a name has been exposed to public-facing use. Although the trade mark became registered in April 2021 (long after the relevant date) the Applicant has filed no further evidence suggesting that through use of any of its Botanica-based signs the Applicant has acquired goodwill or reputation under that name, even since the relevant date.

58. The evidence filed by the Primary Respondent shows the botanicamedicare website as not due to be operational until January 2021. Although Mr Gbla explains that the relevant website is now botanicapharmaceutics.co.uk, the Applicant filed no evidence as to the content or reach of that website, whether at the relevant date or subsequently, and nor is it stated when the new domain name was first used, so the evidence does not establish that it was used before the relevant date. The evidence filed by the Primary Respondent also shows an Instagram account only dated from December 2020 (showing 3 followers of the ‘botanicamedicare’ account, which had just a single post). None of this therefore assists the Applicant in establishing, as at the relevant date, a goodwill/reputation in one or other of the names relied upon. The Applicant itself filed no evidence to support its claim to have established a “good social presence”.

59. In the absence of the necessary goodwill/reputation, the application falls at the first hurdle and is dismissed accordingly.

60. The Tribunal would also wish to note that the Applicant has filed no evidence that would suggest there is any basis at all to the various allegations it has freely cast against the Respondents. Therefore, there seems no prima facie reason to doubt that the name of the Primary Respondent was anyway adopted in good faith.

Outcome: The application has failed and, subject to any successful appeal, no order is made to change the name of the Primary Respondent (now anyway dissolved).

Costs

61. As the Respondents have been successful, they are entitled to a contribution towards their costs, based upon the scale of costs published in paragraph 10.1 of the Practice Direction which indicates that those without representation will normally receive 50% of the published scale, but will receive the full expenses.

62. Proceeding on that basis, the Primary Respondent is entitled to an award in the amount of £600, which is the total of the following elements:

£200 - reviewing of the Application and the preparation of its defence;

£250 - preparing its submissions ahead of this decision of this matter remitted by the appeal judge;

£150 - the official fee for filing its defence.

63. Ordinarily this £600 sum would be payable to the Primary Respondent, but since Botanica Ltd is now dissolved, we instead order Botanica Agriculture and Extraction Ltd to pay £200 to each of the joined respondents. These sums are to be paid within 21 days of the expiry of the appeal period, or within 21 days of the final determination of this case if any appeal against this decision is unsuccessful. Under section 74(1) of the Act, an appeal can only be made in relation to the decision to dismiss the application; there is no right of appeal in relation to costs.

64. Any notice of appeal against this decision 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.

65. The company adjudicator must be advised if an appeal is lodged, so that implementation of the order is suspended.

Dated 18 July 2023

Beverley Hedley
Company Names Adjudicator

Allan James
Company Names Adjudicator

Matthew Williams
Company Names Adjudicator

1. The appeal decision has Neutral Citation Number: [2022] EWHC 2957 (Ch). ↩

2. See for example the phrases: “The company has worked extremely hard…” and “The company has research partnerships…” in response to question 11 on the Form CNA1, as presented at paragraph 13 of the present decision. ↩

3. Paragraph 21 of the appeal judgment reads: “Both Mr Varaich and Mr Sharma accepted openly and frankly before me that they put in no evidence at all in front of the Tribunal and Mr Varaich gave a number of explanations for his decision to do so”. This must refer to the Respondent’s having filing no evidence during the evidence rounds in the initial tribunal proceedings. However, as has been noted, the Respondent did file appendices with its Form CNA2); since that form is accompanied by a statement of truth, the Tribunal accepts those appendices as evidence on behalf of the Primary Respondent. ↩

4. Emails from April 2020 are appended tend to support this assertion. ↩

5. Paragraph 35 of BLO/809/21 ↩

6. See also Zurich Insurance Co v Zurich Investments Ltd [2011] RPC 6, in which the Tribunal also relied on the decision of the Court of Appeal in Reed Executive plc v Reed Business Information Ltd [2004] EWCA Civ 159 ↩

7. Stacey v 2020 Communications [1991] FSR 49 refers. ↩

8. Jif Lemon, House of Lords [1990] RPC 341 per Lord Oliver “First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’ (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.” ↩