Robert flattens Alfred in McAlpine passing off dispute

United Kingdom

In Sir Robert McAlpine Limited v Alfred McAlpine plc, the High Court of England and Wales has issued an injunction preventing the defendant from using 'McAlpine' as an identifier without the Alfred name.

The type of business and geographic areas covered by the two companies involved in the dispute differed until the 1980s. Any informal agreement between the two regarding spheres of business and geographic spread came to an end at that time, and the two companies started to compete over at least some of their range of businesses. Although both companies were often referred to as McAlpines, confusion (i) was limited because of the sophistication of the market, and (ii) could be dispelled through the respective use of the identifiers 'Robert' and 'Alfred'. As a matter of fact the goodwill in the name McAlpine was shared between the two companies indivisibly and both benefited from it.

In October 2003 Alfred McAlpine rebranded and dropped the Alfred name. In response, Sir Robert McAlpine brought an action for passing off before the High Court.

The High Court issued an injunction preventing Alfred McAlpine's use of the McAlpine name as a sole identifier. It held that the rights in the name McAlpine were shared between the two companies and that one party could not appropriate the name for itself without causing damage to the value of the shared goodwill of the other party. However, as it was not clear whether Alfred McAlpine's use of McAlpine as a sole identifier had caused any quantifiable damage to Sir Robert McAlpine, the court made no enquiry as to damages.

Larry Cohen, McDermott Will & Emery, London

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