The Institute was forced to resort to the High Court to protect the chartered accountant brand after Crewe-based Alan Brookes and his firm, Brookes O’Hara Ltd, ignored letters from the ICAEW intellectual property team and two sets of solicitors warning them that they were infringing EU trade marks and passing themselves off as ICAEW members.
Such a move on the part of ICAEW is very rare since most passing off cases are settled internally, with the offenders signing a legally binding document agreeing to desist. However, Brookes’ refusal to acknowledge any attempt at communication meant it had no other option.
“We always publicise these types of orders as a way of demonstrating to the public and our members how seriously we view any complaint of misrepresentation, the lengths we will go to in order to protect the public from being misled, and what we do to protect the integrity and value of the chartered accountant brand for our membership,” said Helen Carter, intellectual property manager at ICAEW.
“This also acts as a strong deterrent to others who may be misusing the description or designations.”
Brookes used the ICAEW logo, which carries the description ICAEW chartered accountant alongside a depiction of Economia, on the Brookes O’Hara website and on business cards and signage. He also claimed that he was an ICAEW chartered accountant both on the website and as part of his signature even though he knew he was no longer entitled to do so.
He had ceased to be a member of ICAEW in 2014. He had been reprimanded by an ICAEW disciplinary committee tribunal for failing to certify compliance with his continuing professional development (CPD) between 2010 to 2012, and ordered to pay fines and costs of £3,700.
Under the terms of the injunction, Brookes and Brookes O’Hara were ordered to display a statement announcing the injunction on the homepage of the firm’s website for six months.
This had to make it clear that both were being restrained from infringing the ICAEW’s trademarks and passing themselves off as members of ICAEW, and that they had been ordered to pay costs of £7,800.
The website has since been taken down.
Unusually, ICAEW has had to take out two lawsuits this year, although in the other instance the former member backed down before it got to court.
The last time it went to court in a passing off case was in 2007. In that case, former ICAEW member Mark Horgan of Southampton was sent to prison for 16 weeks for being in contempt of court, and ordered to pay costs of more than £10,000.
ICAEW had won an injunction against him two years earlier after he continued to represent himself as an ICAEW chartered accountant in job applications sent to KPMG. But he ignored it and ultimately, the court issued a warrant for his committal to prison.
“People who consult chartered accountants need to be able to trust them and have complete confidence in the services they provide,” Carter added. “That’s why we take very seriously anything which compromises the integrity and highest standards of the profession as a whole.”
This year so far, ICAEW has received 73 complaints relating to some form of alleged misuse of brand. On investigation, some have been closed either because the individuals or firms were able to verify their relationship or for lack of evidence. A number have been referred to the professional conduct directorate and in other cases, the individuals stopped the misrepresentation as soon as ICAEW contacted them.
A further 17, mainly non-ICAEW members, were required to sign a legally binding undertaking.