Harrods Ltd v Harrodian School Ltd

Factual and Procedural Background

The Plaintiffs are the proprietors of a renowned department store located in Knightsbridge. They brought an action to restrain the Defendants from operating a private preparatory school in Barnes under the name "The Harrodian School," alleging that this constituted passing off. The Defendants acquired the site formerly occupied by the Plaintiffs' staff club known as "The Harrodian Club." The Plaintiffs claimed that the use of the name "Harrodian" by the Defendants was likely to cause confusion and damage their goodwill. The trial judge dismissed the action, finding no real likelihood of confusion. The Plaintiffs appealed the decision.

Legal Issues Presented

1. Whether the Defendants’ use of the name "The Harrodian School" constituted passing off by creating a misrepresentation likely to cause confusion with the Plaintiffs’ business.
2. Whether the Plaintiffs had established a reputation or goodwill in the name "Harrodian" sufficient to support a passing off claim.
3. Whether there was a real likelihood of damage to the Plaintiffs’ goodwill from the Defendants’ use of the name.
4. Whether the Defendants acted with an intention to deceive or trade on the Plaintiffs’ reputation.

Arguments of the Parties

Plaintiffs' Arguments

• The name "Harrodian" is the adjectival form of "Harrods" and implies a connection with the Plaintiffs’ well-known business.
• The Defendants deliberately chose the name to trade on the Plaintiffs’ reputation and goodwill.
• There was a risk that the public would be confused into believing the school was connected with or sponsored by the Plaintiffs, thereby damaging their goodwill.
• The Plaintiffs criticised the trial judge’s finding that the staff club’s use of "Harrodian" was not in the course of trade and argued the club had acquired a reputation relevant to their claim.
• The Plaintiffs sought to adduce further evidence of the Defendants’ subjective intentions based on later conduct but were refused leave.

Defendants' Arguments

• The Defendants’ principal director chose the name "Harrodian" because of the historic association of the site with the former staff club, not to exploit the Plaintiffs’ reputation.
• There was no intention to deceive the Plaintiffs or the public about the connection between the school and the Plaintiffs’ business.
• The Plaintiffs had no established reputation or goodwill in the name "Harrodian" in relation to education or schools.
• There was no evidence of actual confusion among the public despite the school’s operation for over a year.
• The difference in fields of activity between the parties (retail department store vs. preparatory school) mitigated against any likelihood of confusion or damage.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Harrods Ltd. v R. Harrod Ltd. (1923) 41 RPC 74	Established that a well-known name can constitute goodwill and a property interest even absent deliberate deception.	Confirmed Plaintiffs’ longstanding reputation and goodwill in the name "Harrods".
Sodastream Ltd. v Thorn Cascade Co. Ltd. [1982] RPC 459	Intent behind adoption of a name is relevant in passing off cases.	Considered Defendants’ intention in adopting "Harrodian".
Slazenger & Sons v Feltham & Co. (1889) 6 RPC 531	Deliberate exploitation of another’s goodwill is actionable.	Rejected allegation that Defendants deliberately exploited Plaintiffs’ goodwill.
Erven Warninck BV v Townend & Sons (Hull) [1979] AC 731	Elements of passing off: misrepresentation, trade, prospective customers, likelihood of injury, and damage.	Applied the elements to assess whether passing off occurred.
Reckitt & Colman Products Ltd. v Borden Inc. [1990] 1 WLR 491	Refined passing off elements to reputation, deception, and damage.	Guided the court’s analysis of reputation, misrepresentation, and damage.
Reddaway v Banham [1896] AC 199	Goodwill and reputation, not proprietary right in name alone, is protected in passing off.	Reinforced protection of goodwill over mere name ownership.
Spalding v Gamage (1915) 32 RPC 273	Goodwill and reputation protection in passing off.	Supported principle that goodwill is the protected interest.
H.P.Bulmer Ltd. and Showerings Ltd. v J.Bollinger SA and Champagne Lanson Pere et Fils [1978] RPC 79	Relevant representation includes connection implying responsibility for goods/services.	Clarified requirement that public must believe plaintiff responsible for defendant’s goods/services.
British Legion v British Legion Club (Street) Ltd. (1931) 48 RPC 555	Misrepresentation includes implication of connection or sponsorship.	Used to define the nature of relevant connection in passing off.
McCulloch v May (1948) 65 RPC 58	"Common field of activity" concept in passing off.	Discussed but discredited as a strict requirement; relevant but not decisive.
Stringfellow v McCain Foods (G.B.) Ltd. [1984] RPC 501	Burden of proof in showing likelihood of confusion and damage increases with less overlap in fields.	Applied to weigh Plaintiffs’ burden given disparate fields.
Taittinger SA v Allbev Ltd [1993] FSR 641	Damage includes debasement or erosion of distinctiveness and loss of control over reputation.	Considered potential damage to Plaintiffs’ goodwill from use of "Harrodian".
Lego System Aktieselskab v Lego M. Lemelstrich Ltd. (1983) FSR 155	Scope of "field of recognition" affects likelihood of confusion.	Referenced in assessing public’s perception of "Harrodian".
Electrolux Ltd v Electrix Ltd (1953) 71 RPC 23	Absence of direct evidence of confusion does not preclude finding passing off.	Supported court’s independent assessment of likelihood of confusion.
AG Spalding v AW Gamage Ltd (1915) 32 RPC 273	Judge may determine likelihood of deception without direct evidence.	Supported judge’s role in evaluating misrepresentation and confusion.
Watt v Thomas [1947] AC 484	Standards for appellate review of factual findings and witness credibility.	Applied in assessing trial judge’s findings on Defendants’ intent.
Gross v. Lewis Hillman Ltd. [1970] Ch. 445	Intent to deceive requires conscious willingness to mislead.	Used to evaluate Defendants’ alleged fraudulent intent.

Court's Reasoning and Analysis

The court examined the elements of the tort of passing off, emphasizing the necessity of establishing goodwill or reputation, a misrepresentation likely to cause confusion, and resulting damage. The Plaintiffs have a well-established reputation under the name "Harrods" as a department store, but not in relation to education or schools. The adjectival form "Harrodian," although historically used internally by staff and in connection with a staff club, had not been used publicly by the Plaintiffs for decades.

The Defendants’ principal director testified that the choice of the name "Harrodian" for the school was motivated by the historic name of the site, the former staff club, rather than an intention to trade on the Plaintiffs’ reputation. The trial judge accepted this evidence and found no intention to deceive the Plaintiffs or the public.

The court considered evidence of actual confusion and found it lacking despite the school’s operation for over a year. The difference in the parties’ fields of activity — a retail department store versus a preparatory school — was significant. The public was unlikely to believe that the Plaintiffs, known for retail goods and services, were responsible for or connected with the school.

The appellate court majority agreed with the trial judge that there was no real likelihood of confusion or damage to the Plaintiffs’ goodwill. The name "Harrodian" suggests some connection but not one relevant to the Plaintiffs’ business. The Plaintiffs’ goodwill in retailing would not naturally extend to education.

However, a dissenting judge argued that the name "Harrodian" inherently proclaims a connection with the Plaintiffs and that the Defendants’ use constituted a wrongful appropriation of the Plaintiffs’ goodwill. This judge emphasized that the public would likely assume some association, and that the Plaintiffs’ reputation in the name constitutes a property interest. The dissent highlighted that absence of direct evidence of confusion is not determinative and that the court must form its own view on likelihood of confusion and damage.

The dissent also noted that the continued use of "Harrodian" by the Defendants could lead to proliferation of the name in unrelated fields, further diluting the Plaintiffs’ control over their goodwill.

Holding and Implications

The majority of the court held that the Plaintiffs failed to establish a real likelihood of confusion or damage to their goodwill from the Defendants' use of the name "The Harrodian School." The trial judge’s dismissal of the action was upheld, and the appeal was dismissed.

The direct effect of this decision is that the Defendants may continue to use the name "The Harrodian School" without infringing the Plaintiffs’ rights under the tort of passing off. No new legal precedent was established, and the ruling was fact-specific, emphasizing the importance of the nature of the Plaintiffs’ goodwill, the absence of overlap in commercial fields, and the lack of evidence of actual confusion or damage.

The dissenting opinion underscores ongoing legal debate about the extent to which adjectival forms of well-known names may be protected and the role of inferred confusion absent direct evidence. However, this did not alter the majority decision.