Decision

Decision on Signed Security Limited

Published 21 February 2023

Companies Act 2006

In the matter of application No. 3786 by Brian Hamill and Perfect Memorabilia Limited for a change to the company name of Signed Security Limited, a company incorporated under number SC692378

Background and pleadings

1. The company name Signed Security Limited (“the primary respondent”) has been registered since incorporation on 16 March 2021 under number SC692378.

2. By an application filed on 24 February 2022, Brian Hamill and Perfect Memorabilia Limited (“the applicants”) applied under section 69(1) of the Companies Act 2006 (“the Act”) for the primary respondent’s name to be changed.

3. The applicants claim that they have goodwill and reputation in respect of a management agency and as a provider of sports memorabilia under the name “Signed Security”. In support of the claim to goodwill and reputation they state that they represent famous sporting personalities and, as an example, point to trade mark proceedings CA503425 where the applicant is identified as the famous footballer Henrik Larsson who has provided an address in Glasgow that begins “c/o Signed Security”. The applicants claim that “Signed Security” is their trading name.

4. The applicants claim that the primary respondent’s controlling mind, Mr Jim Dear, issued a letter, dated 8 December 2021, to the Trade Marks Registry in respect of those proceedings where he stated: “Mr Hamill is not of Signed Security never was, I registered the company Signed Security to prove he is not associated with this company and therefore misrepresented himself.” The applicants assert that this demonstrates that Mr Dear registered the primary respondent without an intent to use it or its name. They claim that, consequently, the primary respondent was registered in bad faith to block or, in an ill-judged attempt to embarrass the applicants in front of their clients and cause damage to their goodwill.

5. The primary respondent filed a notice of defence and counterstatement. It denies the applicants’ claims including that it represents famous sporting personalities and required proof of this. It is claimed that use of “c/o Signed Security” within a trade mark invalidation action does not constitute evidence of goodwill. The primary respondent relies upon the following defences:

• it is operating under the name;

• its name was adopted in good faith. Mr Dear carried out searches over a period of six months and continually found no reference to the name “Signed Security” in connection with the applicants. He was, therefore, aware that the company name was available for use and registered it for his own legitimate interests. The fact that the primary respondent has filed a trade mark application and is challenging another is referred to as proof that it is trading;

• the interests of the applicant are not adversely affected to any significant extent.

6. The primary respondent states that the applicants have not provided any evidence that the primary respondent has attempted to obtain money (or other consideration) from it and, consequently, has no claim under section 69(5) of the Act.

7. At the request of the applicant, James Robbie Dear (the aforementioned Mr Jim Dear), director of the primary respondent, was subsequently joined to the proceedings as co-respondent.

8. The parties have both filed evidence. A hearing was held on 1 February 2023 where the applicants were represented by Phillip Hannay of Cloch Solicitors. The respondents were represented by Mr Dear after Thorntons Law LLP notified the Tribunal, five weeks before the hearing, that it was no longer representing them.

Evidence

9. The applicants’ evidence takes the form of the witness statement of Mr Hannay, in his capacity as the representative of the applicants in these proceedings, together with Exhibits PAH-01 – PAH-07. This evidence is intended to support the claim that the applicants have the requisite goodwill/reputation and to support the claim that Mr Dear was not acting in good faith when incorporating the primary respondent.

10. The respondents’ evidence takes the form of the witness statement of Mr Dear in his capacity of sole director of the primary respondent. He provides information regarding his activities, how and why he was already aware of Mr Hamill prior to these proceedings and his plans for the primary respondent.

11. The applicants also provided evidence-in-reply in the form of a second witness statement by Mr Hannay together with Exhibits PAH-08 – PAH-10

Decision

Preliminary issues

The applicants’ request to file further evidence

12. By email of 27 January 2023, Mr Hannay made a request to admit further evidence in the form print outs, screenshots of registrar/registrant communications and a print from a website to support the applicants’ claim that since 6 September 2016 the applicants have registered the domain names signedsecurity.com and signed security.co.uk and so had earlier rights to the name Signed Security, and to rebut the respondents’ claim that Mr Dear had carried out internet searches and been unable to find any reference to that name. At the tribunal’s request, a draft copy of the evidence was provided. This consisted of a further witness statement from Mr Hamill introducing exhibits to support his claim that the domain names were registered in September 2016 and that these “opened up the use of private email addresses in order to communicate with clients”. Mr Hamill also states that the intention in 2016 was to create a suitable website and social media accounts to improve communication under the Signed Security name. However, he explains that these plans were delayed until May 2021 when early designs were published on the .com url, a blog was started, and Facebook and Twitter accounts were set up in the name of Signed Security.

13. At the hearing, Mr Hannay submitted that:

(a) If the evidence was not admitted there was a risk of duplicate proceedings;

(b) there is a reluctance to disclose to the respondents the nature and extent of the applicants’ business and assets used for high profile sporting clients, and this is why it was not produced earlier.

14. Mr Dear made a number of technical criticisms of the evidence, and we keep these in mind.

15. When considering the request, we keep in mind the findings of the court in Property Renaissance Ltd v Stanley Dock Hotel & Ors (2016) EWHC 3103 (CH)). The Trade Mark Tribunal and the Company Names Tribunal both operate sequential evidence rounds and, consequently, we consider the following guidance to apply equally to the issue before us:

• the materiality of the evidence in question to the issues that we have to determine;

• the justice and fairness of subjecting the opposite party to the burden of evidence in question at the stage that the proceedings have reached, including the reasons why the evidence was not filed earlier;

• whether the admission of the further evidence would prejudice the other party in ways that cannot be compensated for in costs (for example excessive delay); and

• the fairness to the applicants of excluding the evidence in question, including prejudice to the applicant if it is unable to rely on such evidence

16. We pressed Mr Hannay to explain the purpose of the additional evidence. He sought to establish that domain name registrations are commercial instruments that, like a trade mark can be considered evidence for the purposes of demonstrating goodwill/reputation. He relied on the comments of Aldous LJ in British Telecommunications Plc v One in a Million Ltd. [1999] 1 WLR 903, pages 923 - 925. This discusses domain names being used as an instrument of fraud and as a way to benefit from another party’s goodwill/reputation where the domain name is so similar as to create an association with the party owning the goodwill/reputation. The relevant paragraph reads as follows:

I also believe that domain names comprising the name “Marks & Spencer” are instruments of fraud. Any realistic use of them as domain names would result in passing off and there was ample evidence to justify the injunctive relief granted by the judge to prevent them being used for a fraudulent purpose and to prevent them being transferred to others.

Whilst the decision states that use of domain names may result in passing off, it is important to note the reference to use, rather than mere registration. The decision was considering a situation where domain names were registered in respect of extremely well-known companies such as Marks and Spencer and where there was no doubt that goodwill was associated with these names. Whilst this illustrates that domain names can be instruments of fraud, it does not follow that there is goodwill associated with the domain name separate from that associated with the well-known company name. We are, therefore, of the view that this authority fails to support the claim that the mere registration of domain name is sufficient evidence of goodwill/reputation.

17. Mr Hannay also referred to comments obtained from Hansard when the bill relating to the Act was debated in the Lords ^{[footnote 1]}. In particular, there was a suggestion that there should be a procedural rule to indicate what evidence of reputation will be required in order to bring a case under section 69. The proposed amendment gives the example of “a registered trade mark in current use [our emphasis]”. Mr Hannay submitted that a domain name is another commercial instrument that should serve the same purpose as a trade mark in the proposed amendment. We reject this because, firstly, this amendment was not adopted ^{[footnote 2]} and, secondly, the example required the trade mark to be in current use. The evidence presented does not demonstrate that the domain names are in use. In fact, it is stated that plans to develop the website and social media accounts did not commence until May 2021, being after the relevant date in these proceedings. Further, it is not clear that a domain name (that serves as an online address) will have the same status as a trade mark (indicating trade origin) when considering goodwill/reputation. Such considerations would be very fact dependent and, at the very least, would require use of the domain names. This is not the case here. The evidence also shows that the Twitter account bearing the Signed Security name has no followers and neither is there any evidence that the Facebook page demonstrates an active account.

18. In light of these shortcomings we informed Mr Hannay that we were rejecting the request to admit this evidence because when considering goodwill (being a lower hurdle to demonstrate than for reputation) it requires an attractive force that brings in custom. This evidence wholly fails to show that the domain names, Twitter account and Facebook page have been used outwardly and publicly to bring in custom by the relevant date, or at any time since.

The respondents’ written submissions

19. Ahead of the hearing, the respondents provided written submissions. These submissions made reference to ten exhibits. These exhibits introduced documents and information not otherwise in the proceedings and are not introduced by way of a witness statement. We drew this to Mr Dear’s attention. He accepted that these exhibits were not admissible, and he informed us that he would make submissions without reference to them.

20. For the avoidance of doubt, we were also of the view that all these exhibits were not relevant or did not advance Mr Dear’s case in these proceedings. Very briefly, it is our view that:

• some related to the actions of Mr Hannay in trade mark cases unrelated to these proceeding;

• some related to Mr Hamill’s claimed lack of motive for using “Signed Security”. Mr Dear holds a strongly held view that he should not be able to do this. We do not consider this evidence advances Mr Dear’s case;

• one exhibit showing the comments of Mr Geoffrey Hobbs, sitting as the Appointed Person where he found that the trade mark filing activities of Mr Dear did not amount to bad faith. In the current case we are considering his incorporation of the first respondent which is a different issue. This exhibit is, therefore, not relevant;

• one exhibit provides information regarding Mr Hamill’s other companies. This is not relevant to these proceedings

The substantive issues

21. 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 those 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.”

Goodwill/reputation

22. The relevant date for the purpose of proving goodwill/reputation is the date of the registration of the contested company name which, in this case, is the date of incorporation, 16 March 2021.

23. The concept of goodwill was explained in Inland Revenue Commissioners v Muller & Co’s Margarine Ltd [1901] AC 217 at 223:

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 [our emphasis]. It is the one thing which distinguishes an old-established business from a new business at its first start.

24. Sections 69(1) and (7) stipulate that the applicant must have goodwill and/or a reputation of any description in the name associated with it. This must be proven in evidence. The applicant’s evidence relevant to demonstrating its goodwill/reputation can be summarised as:

• Perfect Memorabilia Limited (“PML”) was incorporated on 3 February 2015 and Mr Hamill is recorded as one of three officers of the company; ^{[footnote 3]}

• PML’s Facebook page was created on 19 October 2015 and as of 29 June 2022 had nearly 1600 followers. It describes itself as “[t]he Best Sports Memorabilia on the Planet”. The extracts also show, what Mr Hannay states, are photos of Mr Hamill with sporting stars such as Mike Tyson and Paul Pogba; ^{[footnote 4]}

• the filed accounts for the year ending 31 July 2020 are provided for the first applicant. These record net assets of just under £5,000; ^{[footnote 5]}

• two undated printouts of pages from PML’s website are provided ^{[footnote 6]} that make the claim that it is “the best sports memorabilia on the planet” and provide a list of football players that, Mr Hannay states, PML represents; ^{[footnote 7]}

• one of the listed players is Henrik Larsson and Mr Hannay states that further information is provided about him; ^{[footnote 8]}

• a printout of the details of trade mark registration UK00003366320, incorporating the name Larsson is provided. The trade mark was applied for on 11 January 2019 and the proprietor is recorded as Global Trademark Services Limited. Mr Hannay states that this is another of Mr Dear’s companies. The mark is currently subject to cancellation proceedings brought by PML who is recorded as having an address for service that includes, in its first line, “c/o Signed Security” and with the same address as PML; ^{[footnote 9]}

• a witness statement by Mr Dear, originally filed in trade mark cancellation proceedings CA000503425 is provided. ^{[footnote 10]} In it, Mr Dear states the intention to incorporate a company with the exact same trading name being used by the current applicants and by Mr Larsson in the trade mark cancellation proceedings ^{[footnote 11]}

25. Mr Hannay took us to each exhibit provided under cover of Mr Hamill’s witness statement, many of which relate to the creation and activities of the first applicant. We record here that Mr Dear accepted that the first applicant has goodwill/reputation in respect of its activities, but he submitted that this does not attach to the name Signed Security. He maintained that the applicants have not used the name Signed Security.

26. Focussing on the evidence relied upon to demonstrate that goodwill/reputation attached to the name Signed Security, Mr Hannay relied upon the official record for trade mark registration UK00003366320, incorporating the name Larsson, where the address for service for the cancellation applicant includes “c/o Signed Security”. The official record will reflect the details provided on the cancellation application form, but it is not clear whether the cancellation applicant (Henrik Larsson, ex-professional footballer) has ever had sight of this or the official record because it is normal for such forms to be filed on behalf of a party and we have no evidence to illustrate that he has seen the form or the official record. Mr Larsson is the only customer of Signed Security that has been specifically identified by the applicants, but this exhibit falls short of demonstrating that he has encountered the name Signed Security. Mr Hannay directed us to a tab entitled “Larsson Official” visible in the screenshot of the first applicant’s website ^{[footnote 12]} as evidence that Mr Larsson is indeed a client. There is no indication the Signed Security name is used on the website or in respect of any products related to Mr Larsson. The impression created is that Mr Larsson has links with PML under the name “Perfect Memorabilia” and not “Signed Security” Therefore, this does not support the claim to goodwill/reputation attaching to “Signed Security”.

27. It is claimed that PML is trading as “Signed Security” yet there is no direct evidence of this. There are no indications at all regarding the scale or scope of its activities separate from those provided under the name PML, if any.

28. Whilst the evidence illustrates that Mr Hamill has an interest in the name Signed Security, there is absolutely no evidence of it being used in trade and therefore, no evidence of it being used as an attractive force to bring in custom. Taking all of this onto account, the evidence falls a long way short of illustrating the goodwill/reputation required by section 69(1) of the Act. We conclude that the evidence is wholly insufficient to demonstrate that either Mr Hamill personally, or PML has any goodwill or reputation identified by the name “Signed Security”.

29. Even if we were wrong and the evidence should be interpreted as Mr Larsson being aware that he was in a business arrangement with a company that traded under the name “Signed Security”, such limited use of the name would be insufficient to demonstrate goodwill/reputation. Mr Hannay appeared to suggest the fame of Mr Larsson in some way magnified the use for the purposes of assessing goodwill/reputation. We do not agree. To have just a single customer and where the scale of use with that customer is unknown, falls a long way short of demonstrating the existence of any attractive force that would bring in custom from anyone other than Mr Larsson. Such minimal use would be insufficient.

30. Mr Hannay made submissions regarding the policy aim of making company law as simple and accessible as possible for smaller firms and their advisers. He went further and submitted that this approach should be applied when considering the minimum requirements of who may form an “applicant” under the terms of section 69(1). Whilst we take no issue with the first limb of this submission, we do not accept the second limb. Section 69 is drafted with the policy aim in mind, namely, that it generously permits applicants with any goodwill or reputation. However, such an approach does not permit a party with no proven relevant goodwill or reputation to benefit from section 69. It is normally a lower hurdle for a party to demonstrate goodwill than it is reputation, but we keep in mind that the use must be sufficient to create an attractive force referred to in Muller & Co’s Margarine. We have found that there is no such evidence.

31. PML may have goodwill identified by its name and we recognise that goodwill may attach to a second name more easily than if there was no pre-existing goodwill. However, before this tribunal, applicants in that position must still show that their goodwill also attaches to the new name. In the current case, PML may have generated goodwill as a result of its activities, but it is a question of fact whether any goodwill attaches to the name “Signed Security”, and we have found that it does not.

32. Mr Hannay, clearly alert to the frailties of the applicant’s evidence, sought to rely upon a cloak of secrecy apparently not wanting to disclose commercial information to the other side. Further, he claimed that the existence of a reputation was the only reason the respondents were interested in the name. It is clear to us that this was not the motivation for Mr Dear. Rather, the registration of the primary respondent appears to have been motivated by his desire to prove that the applicants, and Mr Hamill in particular, had no claim over the name. Why Mr Dear wished to do this is not clear beyond a misconceived belief that a company cannot have a trading name that is not registered at Companies House. In his submissions, Mr Dear refers to “Signed Security” as a “trading company” rather than a “trading name” which lends further support for this being Mr Dear’s belief. Mr Dear states that he conducted searches for the existence of “Signed Security” but found nothing. Whilst Mr Hannay submitted that he did not do this because, if he had, the applicants’ domain name registrations would have been discovered. We consider that it may equally be a reflection of the scope of Mr Dear’s searches. Mr Dear believed that contrary to Mr Hannay’s submission, the applicants were not actually using the name. Therefore, we do not accept Mr Hannay’s submission that we should interpret Mr Dear’s actions as an indication that he was aware of the applicants’ goodwill/reputation in the name “Signed Security”.

33. We also comment that even if we had accepted the applicants’ request to file additional evidence, it would not have influenced our findings. The evidence illustrated two domain names incorporating the name “Signed Security” and the possibility (there is no evidence that they were actually used) of using email addresses linked to these domain names when communicating to clients. Putting Mr Dear’s criticisms regarding the unclear ownership of these domain names aside, the high point would have been the print out from the .com website. Such meagre evidence was not accompanied by other information to illustrate the scale and scope of use (in any) of the name. This evidence would fall a long way short of demonstrating the necessary goodwill/reputation.

34. In response to the claim that there has been no public use of the name “Signed Security” he directed us to a case ^{[footnote 13]} decided under the Trade Marks Act 1994 point. This case deals with scenario where a sign used by the party responsible for the products being sold is different to the party’s name. Insofar as it might have any application to the scenario before us here, it is that whether the public is aware of the identity of PML as the provider of products provided under the name “Signed Security” is immaterial. We accept that this is the case, but the point does not circumvent the fact that, under section 69(1)(a) and section 69(7), the first applicant must demonstrate goodwill/reputation that attaches to the name “Signed Security”. We have found that this has not been established.

35. In summary, we conclude that the applicants do not have the requisite goodwill/reputation as required by section 69(1)(a) and section 69(7).

36. In light of this finding, it is not necessary that we consider whether the names are sufficiently similar, nor the respondents’ defences. However, we feel compelled to make some comments regarding Mr Dear’s motivations in incorporating the primary respondent.

37. The evidence illustrates that, whilst the applicants have failed to demonstrate that any goodwill/reputation attaches to the name “Signed Security”, it does support a view that, nonetheless, the applicants have a legitimate interest in the name. It does not appear to be disputed by Mr Dear that the genesis of the name was with Mr Hamill. The applicants provided a letter from Mr Dear (on behalf of the proprietor of the Larsson trade mark, Global Trademark Services Limited)^{[footnote 14]} that was provided in the trade mark cancellation proceedings, and it shines light on Mr Dear’s motivation:

“…Mr Hamill is not of Signed Security never was, I registered the company Signed Security to prove he is not associated with this company and therefore has misrepresented himself.

… I do not believe Mr Larsson would be aware that Mr Hamill filed the form with the IPO as Mr Hamill of Signed Security. If Mr Larsson is aware then this moves from Misrepresentation to Conspiracy to Misrepresent…

38. These comments appear to illustrate a number of misconceptions on the part of Mr Dear, namely that:

• Mr Hamill reference to “Signed Security” is a reference to a registered company (the “misrepresentation” that he was referring). This has never been the claim of Mr Hamill, but rather that it is a trading name, being a sign not necessarily requiring registration of any kind;

• Mr Hamill or PML have no right to use the name “Signed Security”. Contrary to Mr Dear strongly held belief, there is no basis for such a claim. It is permissible for a company or other legal entity to choose a trading name subject to not offending under trade mark law of the law of passing off, neither of which are in play here

• incorporating the name “Signed Security Limited “proves” that Mr Hamill is not associated with name and that he was misrepresenting himself. This is not the case and neither does it prevent Mr Hamill from using it as a trading name. The first time Mr Dear came across the name “Signed Security” was when it was used by Mr Hamill. There is no evidence whatsoever that Mr Hamill was misrepresenting himself. He clearly has an interest in the name as evidenced by the fact that he appears to have “coined” the name and used it in an address for service on an official document. The absence of a proven goodwill/reputation associated with the name does not change that. The name appeared to have been unknown and of no interest to Mr Dear before he became aware of its very limited use by Mr Hamill

39. Taking all these points into account, it is clear to us that the contested company name in these proceedings was incorporated solely as a misguided act. However, despite this, the applicants have failed to demonstrate that they have the requisite goodwill or reputation identified by the name “Signed Security” and, therefore, their application fails.

Costs

41. In light of our finding that the application fails, the respondents are entitled to an award of costs. The Tribunal awards costs from the published scale at paragraph 10 of the Tribunal’s Practice Direction. This is intended to provide a contribution to costs, but not to recompense the successful party. The respondents are, therefore, entitled to a contribution towards their costs. We keep in mind that they were professionally represented until five weeks prior to the hearing. Therefore, the amount awarded in respect of the hearing takes into account that the respondents did not accrue any legal fees. The award breakdown is as follows:

Considering the Form CNA1 and filing the Form CNA2: £400

Fee for filing the Form CNA2: £150

Considering the other side’s evidence: £500

Preparing for, and attending hearing: £375

Total: £1425

42. Brian Hamill and Perfect Memorabilia Limited are ordered to pay Signed Security Limited and James Robbie Dear the sum of £1425. This sum is to be paid within twenty-one days of the expiry of the period allowed for appeal or, if there is an appeal, within twenty-one days of the conclusion of the appeal proceedings (subject to any order of the appellant tribunal).

43. Under section 74(1) of the Act, an appeal can only be made in relation to the decision to uphold the application; there is no right of appeal in relation to costs. Any notice of appeal 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. The Tribunal must be advised if an appeal is lodged.

Dated 15th February 2023

Mark Bryant
Company Names Adjudicators

Clare Boucher
Company Names Adjudicators

Teresa Perks
Company Names Adjudicators

1. Hansard, Lords, 30 January 2006, Column GC57) ↩

2. Mr Hannay described the amendment as a probing amendment intended to enable the government to explain more fully its intention behind the provision. However, the Hansard extract did not include the response of the relevant minister to the amendment, so the guidance it offers is limited. ↩

3. Mr Hannay’s first witness statement, para 2 and Exhibit PAH-01 ↩

4. See Exhibit PAH-02 and Mr Hannay’s statements at para 3 of his first witness statement ↩

5. Exhibit PAH-03 ↩

6. At Exhibit PAH-04 ↩

7. Mr Hannay’s first witness statement, para 5 ↩

8. Mr Hannay refers to the printout of the Wikipedia entry for Mr Larsson being at Exhibit PAH-05 but it is actually at PAH-06 having been switched with the content of Exhibit PAH-05 ↩

9. Mr Hannay’s first witness statement, para 7 and the Exhibit marked as PAH-05 ↩

10. At Exhibit PAH-07 ↩

11. Mr Hannay’s first witness statement, para 8 ↩

12. Exhibit PAH-04 ↩

13. Reckitt & Colman Products Ltd v Borden Inc & Others [1990] 1 WLR at 499 ↩

14. At Exhibit PAH-07 ↩