Prysmian Cables & Systems Limited v M/S Apple International & Ors
Decision date: 7 September 2023
Neutral citation: [2023] EWHC 2176 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
This case concerned whether Prysmian succeeded to goodwill in the historical BICC name and whether various defendants’ use of "BICC Components" or the registered BICON mark infringed or was invalid. The court primarily held that goodwill in the BICC name did not pass to Pirelli/Prysmian, so Prysmian lacked the necessary goodwill for a passing off claim, though it said that if goodwill had existed the defendants’ use would amount to misrepresentation and likely cause damage. The court also found no likelihood of confusion between BICON and BICC Components and dismissed claims of trade mark infringement, invalidity and bad faith in registering BICC Components.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: medium
The judgment indicates that whether goodwill in a business name transfers on sale depends on the construction of sale and licence provisions and surrounding conduct; express or implied licences, limited use clauses, a purchaser’s deliberate adoption of a different brand, and contemporaneous disclaimers are material evidence against finding an assignment of goodwill. In trade mark comparison, the court treated visual, aural and conceptual overall impression and the presence of descriptive or non-distinctive elements as capable of preventing a finding of similarity and confusion.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judgment suggested (obiter) that reputation is distinct from actionable goodwill and that residual reputation or “folk memory” alone may be insufficient to found passing off without active customer goodwill in the relevant market. It also warned against an overly expansive contextual approach to mark comparison that would effectively bridge dissimilar marks via third-party associations.