THE LAW OF PASSING OFF
SUB TOPIC STATUTE/CASE LAW
Definition of passing off Asege Winnie V Opportunity
Bank &Anor.
Reddaway V Banham
ErvenWanick V Townsend
(Advocaat case)
Perry V Truefit
and
Reddaway V Banham
Purpose of a passing off Section 35 of the Trade Marks
action Act
Star Industrial VsYap KweeKor
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PRINCIPLE /CONTENT
Adonyo J defined passing off as a
tort of deceit where one
intentionally gives a false
impression or misrepresentation
that his goods are goods of
another.
Passing off was defined as a
representation of ones goods as
goods of another.
Lord Diplock defined passing off as
a misrepresentation by a trader in
the course of trade made to
prospective or ultimate customers
which is calculated to the injure the
business or goodwill and causes
actual or is likely to cause damage
to the business or goodwill.
It is a principle of law that a man is
not to sell his goods under
pretence that they are the goods of
another.
The tort passing off is preserved as
an alternative to an action of
infringement of a registered
trademark.
Lord Diplock observed that the
purpose of a passing off action is it
protects a right in property but not
in the mark, get-up or name. it
protects the business or goodwill

Frankel in his book
‘Intellectual Property in New
Zealand
Cadbury ScheweppesVs Pub
Squash
Elements of a passing Case law has suggested 2
off action tests namely the ‘Five
criteria test’ and the
‘Classical Trinity test’
A.G Spalding V A.W Ganage
and ErvenWarnick V
Townsend (Advocaat case)
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likely to be injured by the
misrepresentation.
Protection in a passing off action is
not in property but it’s in respect of
the goodwill a trader has
established with customers.
A trader must prove sufficient and
identifiable goodwill I their name,
get-up or mark in order to justify
property rights attaching to it.
Lord Scarman stated that a ‘Passing
off action should not be used to
stifle competition.
In ErvenWarnick case, Plantiffs
were manufacturers of Advocaat
drink made from a mixture of eggs
and spirits which had been sold in
England for over 50 years.
Townsend also began producing
their drink made of milk and
cypress wine which they labeled
‘Old English Advocaat’. Plaintiffs
sued for passing off which court
found them liable of. Lord Diplock
came up with an extended criteria
of a passing off action as:-
 Misrepresentation
 Made by a trader in the
course of trade
 To prospective or ultimate
customers
 Calculated to injure the
 business or goodwill of
another trader
 And caused damage or in a
quiatimet action is likely to
cause damage.
Classical Trinity test Lord Olive in Reckitt’s case gave
Reckitt & Colman V the 3 elements of a passing off
Borden action namely:-
 Claimant must establish
goodwill or reputation
attached to the
goods/services he supplies
in the minds of the
purchasing public.
 Misrepresentation by
Defendant that his (Def)
goods are for the other
trader and the public
believes so.
 Demonstrate that he suffers
or is likely to suffer damage
by reason of the erroneous
same are offered by the
plaintiff.
Reputation Calvin Klein Inc. Vs In this case, plaintiff an
International Apparel internationally reputed US company
Syndicate with a tremendous goodwill for
designer clothing brought an action
for passing off and trademark
infringement against the Def, an
Indian Company to stop them from
using the tradename ‘Calvin Klein’

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 with the mark ‘CK’. Calvin Klein
never had a market in India but
their goodwill was based on their
reputation earned through
advertisements. One of the issues
was whether the plaintiff had a
reputation with regard to the
goods? Court noted that:-
(a) There was no any
requirement for one to carry
on business in India before
bringing a passing off action
as long one can prove
reputation in the country.
(b) There can be acquisition of
goodwill or reputation for
the mark by the proprietor
in a country without
carrying out business in that
country.
Goodwill IRC V Muller & Co. Lord Macnaughten defined goodwill
to mean the benefit and advantage
of a good name, reputation and
connection of a business. It is the
attractive force which brings in
customers.
Britania Allied Industries Justice Kiryabwire defined goodwill
VsAya Biscuits to mean the attractive force
attached to a name, get-up or logo
which brings in customers. He
further emphasized that the
plaintiff has the onus of

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 establishing goodwill as a key
ingredient of a passing off action.
Goodwill is a property. Justice
Kiryabwire also noted that the
owner of goodwill has a property
right which can be protected by a
passing off action. That property
right is an incorporeal piece of
property and it’s in respect of
reputation.
Relationship between Muller & Co. V IRC  Lord Macnaughten in his
reputation and Goodwill dictum observed that the
attribute of locality is
common to all cases of
goodwill.
 He observed that reputation
may be gained as a result of
advertising and may also
exist without any supporting
business or customers.
 He also noted that Goodwill
as a subject of property
rights is said to be
‘incapable of subsisting by
itself’ having no
independent existence apart
from the business to which
it is attached.
 In summary, Lord
Macnaughten’s dictum
suggests there is a
difference between goodwill

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 and reputation.
Reddaway V Banham The position of the law in
Reddaway’s case is that the two
words ‘goodwill’ and ‘reputation’
are used interchangeably.
Orkin Exterminating Co. In this case, Orkin was a well-
VsPestco Co. Canada known company in the US with no
business in Canada. Pestco used
Orkin’s name in telephone
directories & would say they were
Orkin when they showed up to
work but did the business under
the name Pestco. Court held it was
passing off. Court held that
Goodwill is basically reputation and
if you have a reputation, you have
goodwill regardless of whether
there is business presence there.
ATTRIBUTES OF  Power of attraction
GOODWILL  Consistent use
 Goodwill may attach to a
territory
 Goodwill can pre-exist in the
product
 Goodwill must exist at the
date of commencement of
proceedings
 Goodwill may be found in a
product get-up
 Goodwill attaches to the
period of existence of the
product

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Attributes IRC V Muller & Co.
(a) Power of
attraction
Britania Allied Industries
VsAya Biscuits
(b) Consistent use & Patience & Nicholson Ltd Vs
temporal aspects Cyclone Hardware
Maxim Vs Dye
7
 It is possible for small trade
to result in sufficient
goodwill
Lord Macnaughten defined goodwill
to mean the benefit and advantage
of a good name, reputation and
connection of a business. It is the
attractive force that brings in
customers. He further noted that
Goodwill is worth nothing unless it
has the power of attraction
sufficient to bring customers home
to the source from which it
emanates.
Justice Kiryabwire defined goodwill
as the attractive force attached to
the good name, get-up or logo
which brings in customers.
Court observed that goodwill comes
about through consistent use.
Suspension of use for a long time
may result in the later re-
commencement of use as being
insufficient to revive any residual
goodwill.
It was observed that since the
claimant’s reputation was based on
trade or business which he had
built up and is continuing, he can
only succeed if he shows that he
has not abandoned the mark or
name.
 Star Industrial Vs Yap Where the business is closed, the
KweeKor claimant has to show that he
intends to do business again.
(c) Goodwill may IRC V Muller Lord Macnaughten observed that
attach to the goodwill is a thing very easy to
business describe but hard to define.
Goodwill is the benefit and
advantage of the good name,
reputation and connection of a
business. It is the attractive force
that brings in customer.

He further noted that where

Abercombie & Kent Ltd Vs
Abercombie & Kent (U) Ltd &
Others.
someone sells a business, the
buyer not only acquires the
business but also the goodwill that
has built up a long with it. The law
of passing off does not protect the
marks and signs but the goodwill of
the business.
Plaintiff sued the Def for among
others an injunction restraining the
Defs from carrying on a business
under the name Abercombie& Kent.
Plaintiff proved before court that it
was engaged in various tourist
businesses in many countries such
as UK, US, TZ, Kenya etc where
before its incorporation, the Def
had also worked. Court in granting
an injunction found that the
plaintiff had proved that it had a

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Anheuser Busch Inc. V
Budjovicky Budwar
(d) Goodwill may Orkin Exterminating Co. Ltd Vs
attach to a Pestco Co. Ltd Canada
territory
Anheuser case, Star Industrial
case, A.G Spalding Vs A.W
Gamage
Star Industrial V Yap KweeKor
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business reputation which it had
built over the years.
Court found that since there was
no products on the market, no
customer and the owner did not
have business and therefore, there
was no goodwill or reputation
worth protection.
In this case, Orkin was a well-
known & established Co. in the US.
It had no business in Canada. Def
who operated from Canada used
the plaintiff’s name in telephone
directories, would get work in the
plaintiff’s name and then do the
work in the name Pestco. Court
held that this amounted to passing
off. Court noted that “If there is
confusion as to the product in the
Defendant’s jurisdiction, the there
is goodwill.
There are 2 approaches on
jurisdiction namely traditional
hardline and soft line approaches.
Traditional hardline approach
requires an actual carrying out of
business and having customers in
the jurisdiction in order to establish
goodwill in a claim for passing off.
It was held that if a business is
carried out in more than one

(e) Goodwill may not
attach to a
territory
Calvin Klein Vs International
Apparel Syndicate,
Athletes Foot Marketing
Associates Vs Copra Sports
Express Bottlers Services Vs
Pepsico Inc. & Ors
(f) Goodwill can pre- BBC Vs Talbot Motor Co. Ltd
exist in a product
Pontiac Marine Pte Ltd Vs CDL
Hotels International Ltd
10
country, there must be separate
goodwill in each country.
This is basically the Softline
approach. It developed to mitigate
the hardline approach. Goodwill is
viewed as “an international
commodity and business activity
within the jurisdiction is nolonger a
pre-requisite for success in a
passing off claim”
Court noted that the insistence of
trade within the country by the
applicant overlooks the nature of
the complaint in passing off. It
should not matter whether that one
carries on business in the country.
It was observed that there can be
acquisition of goodwill or reputation
for the mark by the proprietor
thereof in a country without
carrying on business in that
particular country.
It was observed that ‘Goodwill can
exist even if the product or service
to which it relates has not yet been
made available if a significant
proportion of the public knew about
the product or service because of a
great deal of publicly.
It was held that a trader could,
through extensive advertising,
 acquire goodwill.
(g) Goodwill must Premier Luggage & Bags Ltd Court noted that the date at which
exist at the time Vs Premier Co. Ltd goodwill is required to be shown to
of exist is the date of commencement
commencement of the defendant’s acts which are
of proceedings the subject of the complaint.
Anheuser Busch case It was noted that the reputation
relied upon must have been in
existence at the time the defendant
entered into the mark.
(h) Goodwill may be Britania Allied Industries It was observed that Goodwill can
found in product VsAya Biscuits also be found in a product get-up
get-up such as a container, its shape and
appearance.
Hodgkinson& Corby Ltd Vs It was held that passing off could
Wards Mobility occur even when the appearance of
goods had been copied.
Reckitt & Colman Vs Borden A company was held to have a
trading reputation in Lemon Juice
sold in life-size plastic lemons
(i) Goodwill attaches Zeneca Ltd VsVivi Enterprises It was stated that or a product to
to the period of acquire a reputation and goodwill,
existence of a it ought to have been on the
product market for a sufficient period and
in this case, it was 25 years.
Britania Allied Industries Vs Court found that the Nine (9) year
Aya Biscuits period the plaintiff’s marie biscuits
had spent on the market was
sufficient to establish goodwill.
(j) It is possible for NAD Electronics Inc. Vs NAD It was noted that Goodwill is not
small trade to Computer Systems restricted to traders with large
result in companies and high turnovers. A

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 sufficient small trader may establish goodwill
goodwill in a particular locality or because
he is well known specialist in that
field.
Bocaina Ltd VsBocaina Cafes Court noted that its possible for
Ltd small trade to result in sufficient
goodwill for a passing off action so
long it is more than trivial.
(k) Goodwill may be Provident Financial PLC V Court found out that the claimant
associated with a Halifax Building Society had built up a substantial goodwill
name in the name Halifax which it used in
respect of its motor influence
underwriting which it carried out
through brokers.

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