Decision

Decision on SOBA UK (Sasse Old Boys Association UK)

Published 28 July 2022

The Companies Act 2006

In the matter of application No. 1898

For a change of company name of registration No. 10933239

Introduction

1. The company name SOBA UK (SASSE OLD BOYS ASSOCIATION UK) (“the primary respondent”) was registered on 25th August 2017 under number 10933239. On 5th December 2018, an application was made under section 69(1) of the Companies Act 2006 (“the Act”) for an order changing the name of the primary respondent. Following correspondence with the Office about, inter alia, the identity of the applicant, an amended application was filed on 21st February 2019. The amended application stands in the name of SASSE OLD BOYS ASSOCIATION UNITED KINGDOM (SOBA UK) (“the applicant”). The applicant is an unincorporated association. It is represented by its President, Ayuk Akoh-Arrey, and its Vice President, Bime Lafon.

Co-respondents

2. Mr Bebongchu Tetchounkwi and Mr Flavious Ndumbe (then director and company secretary of the primary respondent) were originally joined as co-respondents in accordance with s.69(3) of the Act. However, at a case management conference before another adjudicator held on 9th September 2021, it was agreed that following the resignation of Messrs Tetchounkwi and Ndumbe, Mr Gerald Nupa and Dr Ndamka should be joined as co-respondents in their stead. We understand that Mr Nupa and Dr Ndamka are current officers of the primary respondent.

Claims and defences

3. The applicant claims that:

(1) The applicant is an alumni association in the UK whose members are ex-students of St Joseph’s College in Sasse, Cameroon, which is a Catholic boys school. The college has a high reputation and includes amongst its ex-students various heads of government of Cameroon.

(2) SOBA UK was formed in “the early 1970s.” At the time of the application (in February 2019) it had 109 members.

(3) Members of SOBA UK meet once a year for a mass on St Joseph’s Feast Day, and hold networking and general assembly meetings. For 15 years prior to the date of the application, SOBA UK held annual conventions for its members, their families, members of the UK Cameroonian community, and sponsors looking to network with them. Sponsors included Lycamobile, Turkish Airways, Options International, Tamangwa Shipping, Sellam Quick, and Rencam Credit Union.

(4) The revenue from such sponsors has generally been re-invested back into the Cameroonian community and membership activities.

(5) SOBA UK organises visits of its members to other countries, such as Ireland and the USA, to meet members of the same alumni group resident in those countries.

(6) SOBA UK provides community and financial support in the event of the bereavement of its members.

(7) SOBA UK also makes financial contributions to support St Joseph’s College, Cameroon. Between 2009 and 2014 it donated £17.5k towards the construction of a new medical facility. In 2014 it provided £2.6k towards the 75th anniversary celebrations. In the year preceding the application, SOBA UK made donations to other alumni groups, such as OPSA UK, ExSSA and SOBA Ireland, to support projects at their alma mater.

(8) As a result of such activities, goodwill has been acquired in the UK under SASSE OLD BOYS ASSOCIATION UNITED KINGDOM and SOBA UK.

(9) The goodwill is held on trust by the individual members of SOBA UK.

(10) The name of the primary respondent is identical to the names SASSE OLD BOYS ASSOCIATION UNITED KINGDOM and SOBA UK, and is likely to mislead by suggesting a connection between the primary respondent and the applicant.

(11) The primary respondent’s officers were members of SOBA UK and registered the company to take advantage of the fact that SOBA UK had not registered as a company in order to usurp the legitimate group without the agreement of the General Assembly of its members in the UK.

(12) Over the 12 months prior to the application, the respondents caused “immense” confusion by attempting to organise similar events (to those of the applicant) under the name SOBA UK.

(13) The respondents collaborated with SOBA’s national branch in Cameroon in an attempt to take control of SOBA UK. The SOBA national branch in Cameroon then acted ultra vires and out of jurisdiction by drawing up a new constitution in 2018 to grant itself powers to dismiss SOBA UK.

(14) The General Assembly of SOBA UK met in September 2018 and passed a resolution to dismiss further actions by the Cameroonian branch and to ban four members of SOBA UK for attempting to usurp the legitimate group.

4. The respondents filed a Notice of Defence. The main points taken are that:

(1) It is admitted that there is goodwill in the UK in the names SASSE OLD BOYS ASSOCIATION UNITED KINGDOM and SOBA.

(2) It is claimed that ex-students join the SOBA alumni to remain connected to Sasse College, Cameroon, and in the knowledge that SOBA UK acts under the auspices of SOBA General (previously SOBA National), respecting the directions of that entity and ultimately the Bishop of Buea (the Catholic Bishop who is the proprietor and spiritual head of the college).

(3) It is claimed that an ex-student is not a member of SOBA simply because he has attended Sasse College. To call oneself a member of SOBA requires the user to be an active member of an authorised national association or chapter. The national associations must act in accordance with the constitutions they adopt, which are subordinate to the constitution of SOBA General (previously National) which endorses and recognises the establishment of national chapters.

(4) It is therefore claimed that the established goodwill in the UK belongs to “Sasse College via the proprietor the Bishop of Buea Diocese, managed by SOBA General.”

(5) It is denied that SOBA UK owns the goodwill generated in the UK.

(6) Concerns about the way SOBA UK was being run led to the holding of an Extraordinary General Meeting in 2018 at which a new interim executive was appointed to oversee the holding of fresh elections. The existing executive did not recognise the legitimacy of this meeting and did not take part. This resulted in two executives both claiming to control SOBA UK.

(7) SOBA General attempted to mediate and then, in June 2018, mandated SOBA UK to hold further elections. The original executive instead purported to amend the constitution of SOBA UK to declare itself entirely self-regulating and free from directions from SOBA General or the Bishop of Buea.

(8) It is admitted that the primary respondent was incorporated by Francis Niba and Adamu Thomas whilst they were members of the applicant. The respondents say that the intention was to create a corporate body under which SOBA UK could operate with good governance and transparency. The company was not immediately active. Subsequent to the split described above, the new executive became the directors of the primary respondent and used it as the corporate body under which the ‘true’ SOBA UK operates.

(9) The respondents rely on the defence under section 69(4)(b) of the Act; namely, that the primary respondent is operating under the name.

(10) The respondents further rely on the defence under section 69(4)(d) of the Act; namely, that the name of the primary respondent was adopted in good faith. In this connection, the respondents say that there was never any intention to trade off the activities of the applicant. Their intention was to renew the values and legacy of the college amongst the alumni community in the UK in the face of a body they say was no longer representing those values or respecting the college and the [Cameroon-based] executive set up to manage the national associations.

5. Both sides seek an award of costs.

Representation

6. The applicant is represented by Briffa, solicitors. The respondents are represented by Mr Aaron Wood of Brandsmiths, solicitors.

The evidence

7. The applicant’s evidence consists of:

(1) Two witness statements by Mr Ayuk Akoh-Arrey (with 15 exhibits). Mr Ayuk Akoh-Arrey has been the President of the applicant since 2014. He provides background on SOBA UK. He explains that it was formed in the 1970s by a group of ex-students of Sasse College, Cameroon. He joined SOBA UK in 2003 and claims that SOBA UK has from its inception been autonomous from any other branch of SOBA, although it has had a collaborative relationship with the (pre-existing) SOBA Cameroon. He provides a copy of the constitution the applicant adopted in 2018^{[footnote 1]}. Mr Ayuk Akoh-Arrey goes on to give evidence about events leading up to the unauthorised formation of the primary respondent in August 2017 by two members of his organisation, and the subsequent forming of what he calls “a splinter group” in October 2017. He says that Mr Adamu Thomas and Mr Francis Ngwa registered the primary respondent whilst they were still members of the applicant. He recalls a conversation on 22 November 2017 with Professor Ngwafor, the national President of SOBA Cameroon, during which Professor Ngwafor said he was not supporting the splinter group in the UK. However, SOBA Cameroon called for fresh elections to be held for the executive of SOBA UK. Mr Ayuk Akoh-Arrey also gives evidence about the activities of the ‘splinter group’ (i.e. the primary respondent and those behind it) under the name SOBA UK. This includes the running of events in competition to those of the applicant. He gives, as an example, the hosting of a St Joseph’s Feast Day on the same date as a similar event was hosted by the applicant (21st March 2019).

(2) Francis Shupo joined SOBA UK in 1987, was Vice President between 1993 and 2003, and President from 2003 to 2013. He is now the ‘patron’ of the organisation. According to Mr Shupo, the applicant had around 20 members during the time he was Vice President, rising to 87 members during his time as President. He says that the applicant is governed according to its constitution, which he notes is an adaption of the 1991 constitution of SOBA Cameroon. Mr Shupo’s evidence is that neither SOBA UK nor its members pay registration fees to any external entity. He says that registering as a company was not part of the applicant’s agenda during his time in office because it was judged that the organisation had not reached the threshold which justified such a course.

(3) Dr Amos Ngongi has been Chairman of the ‘Caretaker Committee’ of SOBA Cameroon since it was established in March 2018 following a ‘Revival General Assembly’. Dr Ngongi claims this was in accordance with the constitution of SOBA Cameroon and he provides a copy of the 1991 constitution^{[footnote 2]}. This assembly dismissed the previous executive led by Professor Ngwafor, but it refused to stand down. Consequently, there is also a split in SOBA Cameroon. According to Dr Ngongi, SOBA Chapters are independent and governed under their constitutions. They co-operate with SOBA Cameroon in activities of common interest.

(4) Stephen Njunguo is the President of SOBA Ireland. He says that SOBA Ireland has never registered with SOBA Cameroon and has no direct working relationship with that entity.

(5) Terence Ngassa is emeritus President of SOBA-NWR Germany. He says that each of the SOBA groups are autonomous, voluntary and self-governed.

(6) Joseph Foncha was one of the founding members of SOBA UK. In around 1971, he helped to draft the original SOBA UK constitution. He says that SOBA UK was set up as an autonomous association of old boys who went to Sasse College, Cameroon, and has been run as an independent organisation ever since. According to Mr Foncha, the question of affiliating [to SOBA Cameroon] was debated at the inaugural meeting but it was agreed that the association’s general meeting would be the final decision making body.

8. The respondents’ evidence consists of:

(1) Father Kevin Nanje is the principal of Sasse College. He gives an account of the creation of the original SOBA Cameroon in 1947 and the proliferation of other chapters. His evidence is that all chapters stem from the original chapter and come under the auspices of what is now called SOBA General (previously National). Father Nanje also provides background to the dispute between the official executive of SOBA Cameroon (headed by Professor Ngwafor) and a so-called “caretaker committee” headed by Dr Ngongi.

(2) Professor Ngwafor is the President-General of Sasse Old Boys Association, Cameroon. According to Professor Ngwafor, being a member of SOBA requires membership of the association. Otherwise, an ex-student is not entitled to call himself a SOBAN. He sets out the role of SOBA General and gives examples of Mr Akoh-Arrey seeking the blessing of SOBA General (then National) for decisions of the UK branch. Professor Ngwafor also explains that he visited the UK to install the newly elected executive of the reconstituted SOBA UK (i.e. the Respondents).

(3) Mr Eta-Besong is a barrister in Cameroon. He gives evidence that the ‘Caretaker Committee’ obtained an ex parte ruling from the High Court in Buea, Cameroon (it is not clear to what effect), but that this was subsequently overturned. According to Mr Eta-Besong, the court ruled that the ‘Caretaker Committee’ was not recognised and had no power to launch legal proceedings.

(4) Mr Burnley was a founder member of SOBA UK in 1980. He was the first Treasurer and later served as President until 2003. He says that ex-students are attracted to join the chapters because of the goodwill of the school in Cameroon. Mr Burnley claims that an annual contribution used to be paid to SOBA General (then National) until 2002. Mr Burnley states at paragraph 11 that SOBA General may intervene from time to time with the “approval” of the national organisations.

(5) Mr Fote is the President of SOBA America. He says that SOBA America is aligned with SOBA General, which it recognizes as the custodians of the SOBA brand.

(6) Mr Aaron Wood is a lawyer who acts for the respondents. He provides copies of unsigned draft witness statements prepared by Mr Adamu Thomas, Mr Louis Ewane and Mr Titus Edjua. Mr Wood says that these statements were not finalized in time to be submitted as formal evidence according to the timescale set out by the tribunal. Mr Thomas was the founding director of the Respondent. His unsigned statement says that the primary respondent was incorporated in line with a resolution of the Annual General Assembly of SOBA UK in 2013^{[footnote 3]}. Mr Thomas describes the difficulties within SOBA UK which led he and others to incorporate the primary respondent. His draft statement says the overall purpose was to “provide the applicant with the long-awaited structure that would would give greater compliance with good governance and allow for greater oversight and transparency in line with the rules of SOBA.” However, when the members of SOBA UK were unable to resolve the matter internally, “The rejected members resolved to create an organization which followed the values and commitments of being a Soban and used the company in suit for that purpose.”

(7) Mr Ewane draft statement says that Mr Njunguo did not have the authority of the Irish Association to give his statement on behalf of the applicant.

The law

9. 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 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

10. It is common ground that goodwill exists under SASSE OLD BOYS ASSOCIATION UNITED KINGDOM (SOBA UK). The issue in dispute is who owns it. The applicant says it belongs to it. The respondents say it belongs to “Sasse College via the proprietor the Bishop of Buea Diocese, managed by SOBA General.” The suggestion that a college owns goodwill generated by ex-students associations seems inherently flawed because schools cannot normally control the activities of their ex-students and the public would not therefore hold the school responsible for those activities, let alone the owner of the school. The fact the association may have been set up partly to further the ideals, values etc. learned at the school does not change that.

11. We note Professor Ngwafor’s evidence for the respondents is that being a member of SOBA requires membership of the association, not just being an ex-student of Sasse College. This is not consistent with the UK goodwill under SOBA UK belonging to Sasse College (as opposed to SOBA UK or SOBA General).

12. The argument that the applicant operates independently of SOBA General (Cameroon) is not decisive^{[footnote 4]}. In British Legion v British Legion Club (Street)^{[footnote 5]} the plaintiffs were a charity providing for the welfare of ex-servicemen. There were many local British Legion clubs which were legally independent of the plaintiff but acknowledged its ultimate authority. Most of these were in the UK, but some were abroad. In return for conforming to the requirements of the British Legion and submitting to periodical inspections, such clubs were authorised to use the words ‘British Legion’ as part of their names (usually followed by a geographical name). The goodwill they generated in the name ‘British Legion’ seems to have inured to the parent organisation. The defendant was a company operating as a social club for ex-servicemen without the authority of the British Legion. Farwell J, granting an injunction, held that the defendants were bound to be taken as connected with the plaintiffs and that damage would result. It therefore appears that, as a matter of law, ownership of the goodwill generated by SOBA UK does not depend on whether the applicant is a legally separate entity to SOBA Cameroon.

13. The respondents point out that only SOBA UK has any business in the UK. Therefore, they argue the goodwill must belong to SOBA UK. However, unless governed by agreement, ownership of goodwill depends on who the public perceive as responsible for the services. It is therefore possible that the goodwill generated in the UK by services provided by a UK branch of an international organisation belongs wholly or partly to the international organisation, rather than just to the UK branch.

14. This is consistent with Scandecor Development v Scandecor Marketing^{[footnote 6]} in which the Court of Appeal accepted that:

…. in an appropriate case, it is legally and factually possible for a business based overseas to acquire a goodwill in this country by the supply of its products or services through a subsidiary, agent or licensee. Whether or not that occurs must depend on the facts of the particular case.

15. The court went on to point out that:

It may happen, as observed by Oliver LJ in Habib Bank Ltd v Habib Bank AG Zurich^{[footnote 7]}, that the goodwill in a mark is ‘shared’ in the sense that an internationally known business based abroad, which establishes a branch in this country as part of that international organisation, does not cease to be entitled to its existing goodwill because there is also a goodwill in the local branch. In that situation it would be correct to assert that the international organisation retains its existing ‘international’ goodwill and that the newly created branch or subsidiary company has a local goodwill in the business carried on by it in this country, at the very least for the purpose of protecting it against injury by third parties.

16. Mr Shupo for the applicant describes the position since he became President in 2003 and says that it does not pay subscriptions to SOBA General (Cameroon). Mr Burnley, for the respondents, says that such fees were paid until 2002. He recalls that the last annual subscription paid under his presidency was £120 which was given to Dr Edmund Agbor, former President-General of SOBA General (probably SOBA National at that time), by himself and Francis Shupo. He says this occurred at a reception at the Havelock Arms, Hackney, London in 2002. These statements are not inconsistent. Mr Shupo appears to describe the recent situation, whereas Mr Burnley describes the position up until 2002. In the applicant’s later-filed evidence-in-reply, Mr Akoh-Arrey says that Mr Shupo has told him that he cannot recall the event described by Mr Burnley. However, Mr Shupo himself filed no evidence in reply. Therefore, Mr Akoh-Arrey’s evidence on this point is hearsay.

17. Hearsay evidence is admissible under the terms of the Civil Evidence Act 1995. In deciding how much weight to attach to such evidence we must take account of the guidance provided in section 4 of that Act. We note, in particular, the requirement to consider “whether it would have been reasonable and practicable for the party by whom the evidence was adduced to have produced the maker of the original statement as a witness.” There does not appear to be any reason why Mr Shupo could not have provided a witness statement attesting to his recollection (or otherwise) of the event in 2002 at which Mr Burnley says he was present when an annual subscription was paid to SOBA General (then SOBA National). In any event, Akoh-Arrey’s hearsay evidence does not amount to a denial. If Mr Shupo really cannot recall this event, this may simply be because Mr Burnley has a better memory than him. It is true that Mr Burnley has not provided documentary evidence showing payments to SOBA National (as it would have been then). However, as he points out, this is a long time ago and we accept his explanation that he no longer holds any relevant papers. Mr Burnley’s narrative account of the event in 2002 is reasonably detailed. It covers where the payment took place, when, who paid the money, how much was paid, and who it was paid to. We find Mr Burnley’s evidence on this point persuasive. We also bear in mind that the respondents have not asked to cross examine Mr Burnley on his evidence. We therefore accept it.

18. Mr Shupo and Mr Burnley differ about whether SOBA UK was set up to be autonomous of SOBA Cameroon or as a UK chapter or branch of that organisation. Mr Shupo’s evidence is supported by the evidence of Mr Foncha, who also has first-hand knowledge of the matter. Copies of the 1991 constitution of SOBA National (as it was then) and the 2018 SOBA UK constitution are in evidence. Neither party has filed a copy of the SOBA UK constitution that applied prior to 2018 (i.e. before the split in the UK chapter). It is noted that the paragraph 18(4) of the constitution of SOBA National states that past students based outside Cameroon may constitute chapters of SOBA and apply to the National Executive for recognition and registration. Paragraph 18(3) states that recognition shall be subject to registration and annual subscription fees. It also provides for chapters to expel their members subject to a right of appeal to the National Executive of SOBA National (Cameroon).

19. The 2018 constitution of SOBA UK is clearly based on the 1991 constitution of SOBA National. The objectives and membership rules are closely similar. Tellingly, the recitals to the SOBA UK constitution conclude with:

We, former students of Saint Joseph’s College, Sasse, resident in the UK, hereby constitute ourselves into an Association to be governed by the present Constitution and by the provision set out in Article 18.4 of the SOBA Constitution. (emphasis added)

20. The highlighted words are clearly a reference to the constitution of SOBA National. We therefore prefer the evidence of Mr Burnley to the evidence of Mr Shupo and Mr Foncha, that SOBA UK was never intended to be a chapter of SOBA Cameroon. Paragraphs 18 and 19 of the revised 2018 constitution of SOBA UK state that the Executive and the (UK) Convention Assembly shall manage SOBA UK. However, paragraphs 11 and 12 of the constitution appear to retain a right of appeal against expulsion from SOBA UK to the ‘National Executive’ (which is used in distinction to the ‘UK Executive’), and prevent the automatic readmission of a member whose expulsion was notified to the National Executive by another chapter. Further, paragraph 16 provides for the establishment of ‘parochial groups’ in the UK (note: not ‘chapters’) and paragraph 17 states that such groups shall not communicate with the National Executive without consulting the Executive (which, in context, means the SOBA UK Executive). It therefore appears that the 2018 constitution was amended with the intention of separating SOBA UK from the Cameroon organisation, but also with parts of the constitution retaining that connection in places (including paragraphs 8, 9, 11, 12 and 13, each of which continue to refer to SOBA UK as a ‘chapter’).

21. There is no evidence that SOBA UK made a formal application to SOBA National (as it would have been then) for recognition. Indeed, Professor Ngwafor’s evidence is that SOBA General “tacitly” recognises new chapters formed across the world. It therefore appears that the relationship between the UK chapter and the Cameroon organisation was entirely informal. Professor Ngwafor gives two examples of what he says show SOBA UK seeking the blessing of SOBA General. Both instances depend on one email sent to him by Mr Akoh-Arrey in November 2014^{[footnote 8]}. They relate to the appointment of Mr Shupo as Project Manager of the project to establish a medical centre at Sasse College, and the payment of £2600 as a contribution towards the cost of the 75th anniversary celebrations for Sasse College. We do not consider this evidence assists us. This is because the contents of the email are as consistent with collaboration between two separate entities as they are with communications between a branch or chapter and its parent organisation. Nevertheless, the evidence as a whole points to the conclusion that the UK chapter would have been perceived by its members, potential members and others in the UK, as a chapter of the Cameroon organisation. At least up until 2002 when subscription fees were being paid to SOBA National (as was), that appears to have accorded with the understanding of those running SOBA UK.

22. The ownership of any UK goodwill is far from clear. However, we believe there is a good argument that the goodwill generated under SASSE OLD BOYS ASSOCIATION and SOBA up until at least 2002 belonged to SOBA National (as was). This appears to accord with the constitutions of the parties (so far as we can discern the contents of the SOBA UK constitution at that time). It also appears to accord with the likely perception of those in membership, or considering membership, or otherwise dealing with SOBA UK, which would have been that it was a chapter of SOBA National and thus authorised to use those names in the UK. The position since then is even more complicated. We do not find it necessary to decide whether SOBA UK is the sole owner of the goodwill generated since 2002. This is because it is sufficient for the purposes of section 69(1)(a) of the Act to show that the applicant has goodwill in the names. For present purposes, we are prepared to accept the applicant has at least a share in the goodwill generated in the UK since 2002 under the names it relies on.

23. The Act defines goodwill as including “reputation of any description.” This appears to be wider than the conventional meaning of goodwill at common law. For example, it is potentially wide enough to cover a reputation in the UK in the name of an entity operating abroad. It is certainly wide enough to cover a name in which both the applicant and another party have a reputation. We therefore accept that at the date of the application in February 2019 (which is the relevant date for this purpose), SASSE OLD BOYS ASSOCIATION UNITED KINGDOM and SOBA UK were names in which the applicant had goodwill as required by the Act. The application therefore satisfies the requirement of s.69(1).

Identity/similarity of names

24. The names at issue are SOBA UK (SASSE OLD BOYS ASSOCIATION UK) and SASSE OLD BOYS ASSOCIATION UNITED KINGDOM/SOBA UK. The test is whether the respondent’s name is:

…the same as a name associated with the applicant in which he has goodwill, or…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.

25. It is well established under trade mark law that:

… a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer^{[footnote 9]}.

26. We consider that the same test is appropriate to the matter at hand. We find the effect of the re-ordering the words/letters making up the respective names is so insignificant that it is likely to go unnoticed by the public. Therefore, we consider that, as a matter of law, the names are the same, even though they are not literally so. In any event, we note that the respondents do not dispute that the names fall within the scope of section 69(1).

The defences

27. The respondents rely on two defences. Firstly, that the primary respondent is operating under the name and the main purpose of the respondents (or any of them) in registering the name was not to obtain money (or other consideration) from the applicant or to prevent the applicant from registering the name. Secondly, that the contested name was adopted in good faith.

Operating under the name

28. Mr Wood’s final written submissions, filed on 10th May 2022, included copies of the primary respondent’s accounts for the years ending 31st August 2018, 2019, and 2020. Mr Wood said he got these from Companies House. The accounts show the company trading in a small way. Mr Wood says these documents are a matter of public record. Therefore, the production of them at this stage of the proceedings should not be an issue. We disagree. The accounts are factual in nature, not simply matters of public record. They clearly should have been filed during the evidence rounds under the cover of a witness statement explaining how, by whom, and when they were obtained. This would have given the applicant an opportunity to examine the documents, assess their authenticity and significance, and to file evidence or submissions in reply. Filing the documents with final written submissions denied the applicant this opportunity and was therefore unfair. The respondents put the operating defence at the front of their case from the outset. The letter sent to the parties on 22nd May 2019 setting out the outcome of the case management conference held the previous day, recorded the respondents’ representative as having said the operating defence was the ‘only’ one being relied on. We note that the respondents’ pleadings were not subsequently limited so as to drop the other pleaded defence - good faith. However, the fact that the primary respondent was operating under the name was clearly a highly important part of the respondents’ case. It is therefore extremely difficult to understand why the accounts were not filed under the cover of a witness statement during the course of the evidence rounds. No explanation has been offered as to why this was not done. Consequently, we intend to treat the copies of accounts filed with the respondents’ final written submissions as inadmissible evidence. Therefore, we have not taken them into account.

29. As it turns out, this is not fatal to the respondents’ reliance on this defence. This is because the applicant’s own evidence is that the respondents are operating under the offending name and causing confusion. It makes no difference that the sole example of the primary respondent operating and causing confusion occurred after the date of the application under section 69 of the Act. This is clear from the wording of section 69, which extends to circumstances where the primary respondent is proposing to operate under the name. In any event, the example given by Mr Ayuk Akoh-Arrey (the hosting of a St Joseph’s feast day on 21st March 2019) was but one example intended to illustrate his general complaint that the respondents were operating under the name and causing confusion^{[footnote 10]}. Indeed, the applicant’s pleading refers to “immense” confusion having been caused in the period leading up the application. Therefore, there does not appear to be any dispute that the primary respondent is operating under the name, albeit on a smaller scale than the applicant.

30. The applicant says that the main purpose in registering the name was to stop it from doing so. Section 69(5) of the Act places the onus on the applicant to establish this. According to Mr Akoh-Arrey, Mr Adamu Thomas and Mr Francis Ngwa registered the primary respondent. According to the respondents, it was Adamu Thomas and Francis Niba. It is not clear if Mr Ngwa/Niba are the same person. Either way, he has given no evidence. The unsigned evidence of Mr Adamu attached to Mr Wood’s statement is (at best) hearsay. Mr Wood’s statement was filed in November 2019. On 18th December 2019, a form CNA5 was filed seeking a retrospective extension of time to file a signed statement from Mr Thomas (as well as from Mr Adjua and Mr Ewane). According to this request, the respondents did not seek an extension of time request before the period for filing evidence expired because “this would have had an effect on the [timescale of the] proceedings” and “it could not easily be established how much time would be required.” It appears that a positive decision had been taken not to seek an extension request at the appropriate time. The application for a retrospective extension was refused because the reasons given for it were deemed insufficient. Consequently, we do not have a signed statement from Mr Thomas. If, as Mr Wood says, he drafted the statement in his own words, it is not clear why he did not sign it before sending it to Mr Wood. Accordingly, we cannot be sure whether Mr Thomas was ultimately prepared to stand by the content of his draft statement. In these circumstances, we cannot give it much weight.

31. Mr Burnley says that in July 2017 new elections were announced within SOBA UK. According to him, the executive blocked the registration of new members intending to vote in this election. There were a large number of abstentions. Only 21 votes were cast. This included the 7 members of existing executive. According to Mr Akoh-Arrey, the attempt to register new members to vote in the elections was outside the rules. A new executive was appointed 26th August 2017. This appears to be the day after the primary respondent was incorporated. The most likely explanation for the proximity of these events is that the company was incorporated in response to the anticipated or known outcome of the elections, which did not produce the change in the leadership of SOBA UK that some within the organisation sought. Mr Burnley says that an extraordinary general meeting was then requested. The newly elected executive refused it on the grounds that those asking for it did not constitute a sufficient proportion of the membership according to the rules. An EGM was held anyway on 7th October 2017. The elected leadership did not attend. An alternative executive was appointed. According to the respondents, the alternative executive then operated through the primary respondent.

32. We find that the applicant has not established that the main purpose of those behind the incorporation of the primary respondent was to prevent the applicant from registering the name. Based on all the evidence it seems far more likely that the company was incorporated as the preferred vehicle for the applicant to operate should a new like-minded executive be appointed or, failing that, as the vehicle through which an alternative executive would take the applicant’s place as SOBA UK. The respondents’ registration of the name inevitably had the effect of preventing the applicant from registering it. However, that does not appear to have been the ‘main purpose’ of registering the name. Indeed, there is no evidence from which it could be inferred that those who registered the name were, or should have been aware, that the existing executive of the applicant wanted to register as a company.

33. It is not relevant to the availability of this defence that in so doing the respondents may have been passing themselves off as SOBA UK by usurping the established entity. Section 69 of the Act is not an alternative to a passing off action. Indeed, actions which constitute passing off at common law may simultaneously provide a defence to an application made under section 69. This is because this provision serves a different purpose to passing off law. It provides a remedy to opportunistic company name registrations or ‘company name squatting’, i.e. registering a name you know someone else wants for gain and/or to block their registration. This is not such a case. Therefore, we find that the respondents have a defence under section 69(4) of the Act.

34. The application fails accordingly.

The good faith defence

35. Having found that the respondents are entitled to the ‘operating under the name’ defence, we do not consider it necessary to decide if the respondents are entitled to a further defence based on the name having been adopted in good faith.

36. Both sides complain bitterly about the behaviour of the other side. The parties appear to operate as charities. It is therefore highly regrettable that things have reached this state of affairs, which must have diverted time and/or resources to this legal action. In these circumstances we do not consider that it would be helpful for us to determine whether the respondents acted in good faith in accordance with section 69 of the Act. As we have already noted, the Act is intended to provide a remedy for opportunistic company name registrations. It is not an appropriate means for factions of originally the same party to obtain a ruling as to which of them has the moral and/or constitutional high ground in their dispute about the leadership of SOBA UK.

Overall outcome

37. The application fails and is dismissed.

Costs

38. The respondents have been successful and are entitled to a contribution towards their costs. Costs are assessed on the published scale unless there is unreasonable behaviour. The respondents ask us to take into account that the application was inappropriate for this tribunal, and that the applicant’s evidence included irrelevant matters, particularly personal attacks on the respondents and information about the dispute between the SOBA factions in Cameroon.

39. Although we consider that the application was misconceived, we do not consider that it was an abusive use of the tribunal. The mere fact that the ‘operating under the name’ defence appeared from the outset to be available does not make the application an abuse. We consider it regrettable that the parties have engaged in personal attacks, but we do not intend to award additional costs because of this. Both sides filed evidence about the split in SOBA General (Cameroon). This was of marginal relevance, but we do not consider this sufficient to award additional costs.

40. We will therefore award costs on the usual basis. We calculate these as £2850 made up as follows:

£400 for considering the application and filing a Notice of Defence;
£150 official fee for form CNA2;
£1800 for filing evidence and considering the applicant’s evidence;
£150 official fee for form CNA3;
£350 for filing written submissions.

41. The respondents challenged the standing of the applicant as an unincorporated association to bring these proceedings. Following a case management conference held on 6th February 2019, the applicant provided an undertaking that Mr Ayuk Akoh-Arrey and Mr Bime Lafon would represent the 109 members of the applicant association and agree to meet any costs awarded by the tribunal.

42. The tribunal subsequently received an email indicating that 37 (named) individual members of SOBA UK have rejected any personal liability in the matter. This makes no difference because liability rests with the applicant with payment guaranteed by the undertaking signed (only) by Messrs Akoh-Arrey and Lafon.

43. We therefore order the unincorporated association known as SASSE OLD BOYS ASSOCIATION UNITED KINGDOM and Mr Ayuk Akoh-Arrey and Mr Bime Lafon to pay the primary respondent the sum of £2850. They are jointly and severally liable for these costs. The costs are to be paid within 21 days of the end of the period allowed for appeal or, if there is an appeal, within 21 days of the final conclusion of these proceedings (subject to any order of the appellate tribunal).

44. 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 so that implementation of the order is suspended. According to section 74(1) of the Act, there is no separate right of appeal in relation to costs.

Dated 27 July 2022

Allan James
Judi Pike
Nathan Abraham
Company Names Adjudicators

1. As exhibit AA7 ↩

2. See exhibit NN1 ↩

3. This is not set out or attached to the draft version of the statement in evidence ↩

4. See Wadlow the Law of Passing Off 6th Ed. at 7-185 ↩

5. 1931 48 RPC 555 ↩

6. 1999 FSR 26CA ↩

7. 1982 RPC 1 ↩

8. See exhibit EN2 ↩

9. S.A. Société LTJ Diffusion v. Sadas Vertbaudet SA, Case C-291/00, CJEU ↩

10. See the summary of Mr Ayuk Akoh-Arrey’s evidence at paragraph 7 above. ↩