An interesting case emanating from the Intellectual Property Enterprise Court has shed light on what rights a professional may have in respect of the use of their name following retirement.
A partner at a law firm created a separate sub-brand for her work, which incorporated both the firm name and her own. This was registered as a trade mark by the firm and was used for a number of years. However once the solicitor left the partnership, the firm continued to use the sub-brand in her area of expertise attracting the ire of its previous partner.
The solicitor claimed that by continuing to use her name in the sub-brand the firm was passing itself off as associated with her and the goodwill she had built up as a professional in her field.
This argument was rejected by the court. Whilst acknowledging the reputation that the solicitor enjoyed, the court found that this did not mean she had built up any goodwill which she herself owned. A key fact was that at all material times she traded as part of a partnership and therefore goodwill generated by her actions were owned by those partnerships rather than herself.
The position may well have been different if she had at some point in the past traded by herself as a sole practitioner but, without owning any goodwill, the solicitor was not in a position make a claim for passing off in this instance.
It was agreed by all parties that the solicitor could continue to use her name in the field and the court opined that if the firm continued to represent that she still worked for the firm, then she would have grounds to make a complaint. So whilst the firm can not claim to be her, they do not need to disassociate themselves from her either.
This was a summary judgment decision which focused on the question of whether a partner or the firm owns the goodwill she develops in the course of her professional duties and whether she can stop the firm from continuing to use her name when she leaves the partnership.
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