Caspian Pizza Ltd v the defendant: a Worcester takeaway’s local goodwill sinks a UK-wide trademark
Caspian Pizza Ltdvthe defendant
- Court
- Court of Appeal
- Judgment
- 23 November 2017
- Citation
- [2017] EWCA Civ 1874
A small, local rival using your name first can invalidate your whole UK trademark, not just that area.
Caspian Pizza Ltd sued a Worcester restaurant also trading as Caspian Pizza for trademark infringement. The Court of Appeal ruled against Caspian Pizza Ltd, finding its UK-wide trademarks were invalid because the Worcester business already had local goodwill in the name.
What happened
Caspian Pizza Ltd ran a chain of pizza restaurants, originally from Birmingham, and held two UK trademarks for CASPIAN, a word mark and a device mark. A separate Caspian Pizza restaurant had been trading in Worcester since the early 2000s, reportedly starting under an oral franchise arrangement that was later disputed between the parties. When Caspian Pizza Ltd sued for trademark infringement, the Worcester restaurant's owner argued both trademarks were invalid, saying the Worcester business already had local goodwill (the reputation and customer recognition that supports a passing off claim) in the CASPIAN name before Caspian Pizza Ltd ever registered its marks.
What did the court decide in Caspian Pizza Ltd v the defendant?
The Court of Appeal held that earlier local goodwill, the kind that would support a passing off claim in a specific area, can invalidate a UK-wide registered trademark under section 5(4)(a) of the Trade Marks Act 1994. It is not limited to providing a local defence against infringement under section 11(3). The court preferred the Intellectual Property Office's approach in an earlier case called SWORDERS over a conflicting decision called Redd. Because the Worcester restaurant had goodwill in the name before Caspian Pizza Ltd's filing dates, the word mark was rightly declared invalid. The court went further than the judge below and declared the device mark invalid too, since the word CASPIAN was its essential feature.
What we learned from this
- What I'd take from this is that registering a name, logo or tagline nationally doesn't wipe out someone else's existing local reputation in that name. If they got there first in their area, your trademark can be invalid everywhere, not just where they trade.
- Search thoroughly before filing, including local and regional use, not just other registered trademarks.
- If you know of a local business already using a similar name, think about getting written consent under section 13 of the Trade Marks Act 1994 before you register.
- Once a trademark is registered, the court found there's no power to carve out a geographically limited exception afterwards. Sorting this out before filing matters more than trying to fix it later.
Things to be aware of
- The court found no power to grant a geographically limited declaration of invalidity after registration, because section 44 of the Trade Marks Act 1994 only allows narrow changes to a mark's scope once it's registered.
- This case turned on the defendant already having real local goodwill before the claimant's filing dates. Simply trading somewhere isn't enough without evidence of that reputation.
- The ruling resolves a previous conflict between IPO and court approaches, but it still depends on proving goodwill existed at the right time, which can be a fact heavy and costly argument.
The businesses involved
Caspian Pizza Ltd
Registered in England in 2009 and based in Birmingham, dissolved in 2020. Ran a chain of Caspian Pizza restaurants and held the two UK trademarks that were found invalid in this case.
- Companies House
- 07031182 Dissolved
- Incorporated
- September 2009
- Note
- Ceased March 2020
- Registered office
- Birmingham
- Business activity
- Take-away food shops and mobile food stands; Other food services
- UK trademarks
- 0
The defendant
Ran a separate Caspian Pizza restaurant in Worcester trading since the early 2000s, whose earlier local goodwill in the name was found to pre-date the claimant's trademark filings.
What others said about it
- Dominic Green and Tom Wilkin (Lexology) note the ruling settles how a business can challenge a registered trademark's validity using prior local goodwill rather than just a local use defence.Source: Lexology, February 2018
- Lexology commentary observes the Court of Appeal resolved a previously unsettled question about whether local goodwill can invalidate a registered trademark altogether, not just limit its enforcement.Source: Lexology, February 2018
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2017] EWCA Civ 1874 on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 26 October 2026. Report an error.
