International law firm Bird & Bird, has won today an important High Court ruling for one of the UK’s major construction companies, Sir Robert McAlpine in a passing-off case against Alfred McAlpine. The case came to trial after Alfred McAlpine rebranded its business using the name “McAlpine” alone. The judgment which was handed down this morning banned Alfred McAlpine from using the name “McAlpine” without the “Alfred” prefix for its construction business. The Court found that to do otherwise would lead to confusion with Sir Robert McAlpine.
Having built a reputation as the leading UK building and civil engineering contractor with projects as diverse as the Millennium Dome and the New British Library, Bird & Bird were able to show that Sir Robert McAlpine’s business would be significantly affected if Alfred McAlpine were to adopt the brand “McAlpine” alone – on the basis that the two companies are distinguished by their first names. Bird & Bird managed to bring the entire matter to trial at first instance in less than five months from commencement of proceedings.
This is the first case concerning two businesses with a shared reputation in one part of each of their names, where one has sought to use that part of the name alone. Most passing-off cases relate to the use of an entirely new name which has already been adopted by another company.
Commenting on the case, Mr Malcolm McAlpine from Sir Robert McAlpine said:
“In a case where urgent correction of Alfred McAlpine’s rebranding was very important we were delighted with the expedition as well as the effectiveness of the support which Bird & Bird gave us and naturally with its successful outcome.”
Morag Macdonald, partner and joint head of Bird & Bird’s International Intellectual Property Group led the Bird & Bird team. Rob Williams, partner, along with assistants Anna Duffus and Ed Barker, were also involved and the team instructed barristers Roger Wyand QC and Charlotte May.
Morag Macdonald, added:
“McAlpine is a powerful brand in the construction industry. We are pleased to have established how both companies, Sir Robert McAlpine and Alfred McAlpine, may continue to trade side by side without fear of confusion whilst enjoying the shared goodwill in this great brand.”
Alfred McAlpine were represented by international law firm, Ashurst.
For more information, please contact Morag Macdonald on + 44 (0) 20 7415 6000 or Larry Cattle on + 44 (0) 20 7415 6156.