Intellectual

Property Law

Passing Off

Justin Brunskell

170223
What is Passing Off?
A tort which originally formed common law trade mark protection
Allied to concept of “unfair competition
Has existed in the UK since the 19th Century:- Perry v Truefitt [1842] 49 ER 749 - “a
man is not to sell his own goods under the pretence that they are the goods of another
trader.”

Remains important, because :-

Small businesses might not have funds to register trade marks, and unregistrable/invalid
marks can gain some form of protection
Recently has developed top protect personality/image rights.
Has proved useful in controlling ‘cybersquatting’
What is Passing Off?
Passing off is closely allied to the concept of unfair competition and as such is
recognised in international law under the Paris Convention for the protection of
Industrial Property

Article 10bis (3) ii and iii prohibit:-

“(ii) false allegations in the course of trade of such a nature as to discredit the
establishment, the goods, or the industrial or commercial activities, of a competitor;
and,
(iii) indications or allegations the use of which in the course of trade is liable to mislead
the public as to the nature, the manufacturing process, the characteristics, the suitability
for their purpose, or the quantity, of the goods.”
What is Passing Off?
Passing off is where on merchant ‘passes off’ his goods or services as that of
another.
What is Passing Off?
Passing off is recognised as a property right.

Inland Revenue v. Muller & Co’s Margarine Ltd [1901] AC 217

Spalding & Bros v. AV Gamamge Ltd (1915) 84 LJ CH 449

HP Bulmer Ltd v. J Bollinger SA [1978] RPC 79 - “A man who engages in commercial

activities may acquire a valuable reputation in respect to the goods in which he deals, or of the
services which he performs or of his business as an entity. The law regards such a reputation as
in incorporeal piece of property, the integrity of which the owner is entitled to protect.” Buckley
LJ at para 93
Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693
The legal tests 1. (The Dutch Advocaat
case)
Erven Warnink Besloten Venootschap v J
Townend & sons (Hull) Ltd [1979] AC 731

Diplock’s test:-
A misrepresentation
Made by a trader in the course of trade
To prospective or ultimate customers
Which is calculated to injure the business or goodwill of
another trader (i.e. that this is reasonably foreseeable)
Which causes (or will probably cause) actual damage
to that other trader’s goodwill or business.
The legal tests 2. (The Jiff Lemon case)
Reckitt & Colman Products Ltd. Borden Inc. [1990] 1 All ER 873

Oliver’s test:-
Goodwill/reputation
Misrepresentation
Consequential damage
This does not overturn Lord Diplock’s test
Both definitions mention “goodwill”, and “misrepresentation”
Need to examine these more closely.
Types of passing off
“Classical” passing off, where B represents his goods as being those of A – in
which circumstance Lord Oliver’s 3 part definition would be appropriate.
“Extended” passing off, where A uses a false description for his goods to impute
some quality (i.e., including part of the mark of another) – in which case Lord
Diplock’s full definition would be used.
“Inverse” passing off, where A represents a relationship or authority granted by
B.
“Reverse” passing off, where A shows a customer B’s product, with the intent of
delivering something different.
Goodwill.
IRC v Muller & Co’s Margarine Ltd. [1901] AC 217 “The attractive force
which brings in custom”, i.e., elements which lead consumers to purchase a
trader’s product.
“It is very difficult, as it seems to me, to say that goodwill is not property.
Goodwill is bought and sold every day. It may be acquired, I think, in any of
the different ways in which property is usually acquired. When a man has got it
he may keep it as his own. He may vindicate his exclusive right to it if
necessary by process of law. He may dispose of it if he will—of course under
the conditions attaching to property of that nature.” Macnaghten LJ at 223-4
Goodwill.
Exists in names, devices and packaging
Needs to be established by evidence.
Important issue is locality/scope. – Stannard v Ray [1967] RPC 589
Some businesses can show goodwill even if they do not trade in a particular
locality:- Scandecor Development AB v Scandecor Marketing AB [1998] FSR
500
Sheraton Corp. of America v Sheraton Motels [1964] RPC 202
Maxim’s Ltd. v Dye [1977] 1 WLR 1155
Anheuser Busch Inc v Budejovicky Budvar [1984] FSR 413 - introduced need
for a real and significant “trading presence”
Goodwill.
Regional
Developed to protect products from a particular area, but which need not be
associated with a particular manufacturer
Actions to protect “regional character” fall under “Extended” passing off – requires
Diplock’s full definition
J Bollinger v Costa Brava Wine Co. Ltd. [1960] Ch 262.
Chocosuisse Union Des Fabricants Suisses De Chocolat & Ors v Cadbury Ltd
[1999] EWCA Civ 856
Vine Products v Mackenzie & Co. Ltd [1969] RPC 1
Erven Warnink Besloten Venootschap v J Townend & sons (Hull) Ltd [1979] AC 731
Taittinger Sa V. Allbev Ltd [1993] FSR 641
European “Products of Designated Origin” or “Products of Geographical Indication”.
E.g. Champagne, Stilton cheese, Newcastle Brown Ale, Parma ham
Goodwill.
Words/devices.
Passing off can protect elements unregistrable as Trade Marks; e.g. descriptive terms if
exclusively identified with that trader:-
Reddaway v Banham [1896] AC 199
Carlsberg v Tennant Caledonian Breweries [1972] RPC 847
Annabel’s v Shock [1972] RPC 838

Purely descriptive terms with no secondary meaning are not protected:-

Office Cleaning Services Ltd v Westminster Window & General Cleaning Cleaners Ltd. [1946]
63 RPC 39
Goodwill.
‘get up.’
“the dress in which goods are offered to the public”, i.e. packaging (either
whole or part) of it.
Coca-Cola v Barr [1961] RPC 387
Reckitt & Colman V Borden [1990] 1 All ER 873
See also:-
easyJet v Dainty [2002] FSR 111
Hoffman La Roche v DDSA [1969] FSR 410
Plix Products v Winstone [1986] FSR 608
Misrepresentation.
False statement that goods/services which defendant offers are
claimant’s/connected with the claimant.
Must be in conjunction with damage to the claimant’s goodwill.
Mothercare UK Ltd. v Penguin Books Ltd. [1988] RPC 113

United Biscuits (UK) Ltd. v ASDA Stores Ltd. [1997] RPC 513
Misrepresentation.
Innocent misrepresentation can give rise to the cause of action:-
Gillette v Edenwest [1994] RPC 279
The courts have broadened misrepresentation to include
express/implied statements about the goods/services themselves,
or the actions of the defendant.
Associated Newspapers plc v Insert Media Ltd [1991] FSR 380
Confusion.
Key requirement is whether there was confusion on the part of the public.
Does not require all of the public to be confused, only that there is
confusion/likely confusion of significant numbers of the public in
relevant market.
Clark v Associated Newspapers Ltd. [1998] 1 All ER 959
Reckitt & Colman Products v Borden Inc. [1990] 1 All ER 873
Morning Star Cooperative Society v Express Newspapers Ltd [1979]
FSR 113:- Foster J - “…moron in a hurry“
Confusion.
Evidence
Kimberly Clerk [1997] FSR 877 – Evidence of a loss of sales

Fine & Country v Okotoks [2013] EWCA Civ672

“The classic way in which passing off cases are decided’ is by reference the
‘the evidence of the live witnesses and the judges own independent
assessment.” Lewison LJ at 75.

Interfora v M&S [2013] EWCA Civ 319 – Survey evidence.

Confusion.
Evidence
• Strength of the sign
• Similarities in the signs
• Proximity of the fields of business
• Location of the fields of business
• Characteristics of the markets
• Intention of the defendants
• Any disclaimer
• Parody or satire
Common field of activity.
The plaintiff and defendant must share a “common field of activity”, i.e.,
they traded in the same market.
Lego System A/S v Lego M Lemelstrich Ltd. [1983] FSR 155
Tavener Rutledge Ltd v Traxpalm Ltd [1977] RPC 275
Mirage Studios v. Counter-Feet Clothing Co Ltd [1991] FSR 145

N.B. not all use of a name/get-up will be “misrepresentation”

Arsenal FC plc v Reed [2001] RPC 922
Stringfellow v McCain Foods (GB) Limited [1984] RFC 450
Consequential damage.
Damage to goodwill - Annabel’s v Shock [1972] RPC 838

Usually occurs in 4 ways.

Loss of existing trade
Loss of potential trade - Lego System A/S v Lego M Lemelstrich Ltd. [1983] FSR 155
Dilution of name - Taittinger SA v Allbev Ltd [1994] 4 All ER 75, Harrods v
Harrodian School [1996] RPC 697
Damage to reputation - Annabel’s v Shock [1972] RPC 838
Dilution of personal reputation - Irvine v Talksport [2002] EWHC 367
Character/Personality Merchandising.

Original attitude that confusion unlikely where “no common field of

activity”:-
McCulloch v May [1948] 65 RPC 58
Wombles v Womble Skip [1977] RPC 99
But, now, public viewed as more likely to see product bearing the
character as licensed by/under control of creator:-
Mirage Studios v Counter-Feat Clothing Ltd. [1991] FSR 145
Character merchandising is separate from “celebrity endorsement
Other uses for Passing Off.
Protecting an Image.
Initially problematic to not having a ‘common field of Activity.’
Lyngstad v. Anabas Products [1977] F.S.R. 62 Ch D Where it was thought that
Abba were not involved in the production of merchandise
Halliwell v Panini (Unreported June 6), 1997 High Court, Chancery Division.
Irvine v Talksport [2002] EWHC 367 – Protecting a valuable reputation.
Robyn Rihanna Fenty, Roraj Trade LLC, Combermere Entertainment Properties
LLC v Arcadia Group Brands Limited (T/A Topshop), Top Shop/Top Man Limited
[2013] EWHC 2310 (Ch)
The first time a celebrity could protect an image through an action for Passing
Off.
Apple v Samsung [2012] EWHC 1882
Other uses for Passing Off.
Cybersquatting
The registration of internet domain names (which contain company names or
trade marks) by persons hoping to sell the names at grossly inflated prices to
the relevant companies or trade mark proprietors. It was not clear that this
activity fell under the heading of “infringement” of trade marks. Accordingly,
several companies fell back on passing off as potential solution since
unauthorised use of a name was felt to be “misrepresentation”.

British Telecommunications Plc and others v One In A Million Ltd and others
[1999] 1 WLR 903
Aldous LJ:- court should consider the similarity of the names, the intention of
the defendant, the type of trade and all the surrounding circumstances.
Other Jurisdictions
Australia

Has taken a much less strict view as to what constitutes passing off.
Children's Television Workshop Inc. v. Woolworths (New South Wales)
Limited [1981] R.P.C. 187
Fido Dido Inc. v. Venture Stores (Retailers) Proprietary Limited 16 I.P.R.
365
Hogan v. Koala Dundee (1998) 12 IPR 508
Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] 1 WLR 193
Henderson v Radio Corpn Pty Ltd [1969] RPC 218
Other Jurisdictions
America.

No uniform protection as there a re differing state legislature.

Restatement (Third) of Unfair Competition § 46 (Tentative Draft No. 4, 1993) “One
who appropriates the commercial value of a person's identity by using without consent
the person's name, likeness, or other indicia of identity for purposes of trade is subject
to liability”.

Downing v. Abercrombie and Fitch [2001] W.L. 1045646 (9th circuit 2001) 13/9/2001.
Comedy III Productions Inc v. Gary Saderup Inc 21 P.3d 797 30/4/2001
White v Samsung Electronics America, Inc., 971 F. 2d 1395
See you next time