Passing Off

PASSING OFF
Characteristics
flexible
no rational theory
only means to protect unregistered TM
usually pleaded in the alternative to TM infringement
Easy Jet v British Airways
---
(TM infringement and malicious falsehood)
some judges may not like it
Requirements
Cases
Reckitt v Borden
Jif Lemon
C must establish goodwill or reputation
Diageo North America v Intercontinental Brands
test
benefit and advantage of a good name, reputation and connection
IRC v Muller
attractive force that brings in custom
IRC v Muller
some causative impact upon customer behaviour
IRC v Muller
manifestation of goodwill
form
packaging, trade dress, get-up
good if consumers identify the product by their external features
Jif Lemon
BUT!
not if professional supervision is required
Hodgkinson & Corby v Wards Mobility Service
difficult if get-up performs some function
---
(failed - cushions to help alleviate bed sores - even though C's cushions were memorable and striking and D's similar)
Hodgkinson & Corby v Wards Mobility Service
advertising style
m.b. slogans or images - but difficult to demonstrate association
---
(lemon drink - ad with 'ruggedly masculine and adventurous men' drinking SOLO - no goodwill acquired)
Cadbury Schweppes v Pub Squash
image or voice, personalities
e.g.
Tarzan scream
words
requirements
brand name must be distinctive of the business
IRC v Muller
issues
secondary meaning
requirements
original primary meaning must have been eliminated
Chivers v Chivers
factors
evidence of length of use
amount of money spent on advertising
easier if used the name separately, not with another sign
---
(OVEN CHIPS used with McCain's)
McCain v County Fair
easier if the sign is not exclusively descriptive
---
(FARM FLUID - descriptive - for farm disinfectant)
Antec International v South Western Chicks
issues
m.b. also names
(STONE ALE - brewery in a town of Stone - for over a 100 years - ok - prevented other trader)
STONE ALE
e.g.
can acquire secondary meaning
---
(MOTHERCARE for clothing for children)
MOTHERCARE
can acquire secondary meaning
---
(CAMEL HAIR - belts - acquired)
Reddaway v Banham
distinctiveness m.b. lost
---
(floor covering)
LINOLEUM
depends on time
---
(5 weeks use was enough)
Stennard Reay
brand must be used
---
(get-up of tins of paint - not used - refused)
Fergusson v Matthews McClay & Manson
goodwill must be attached to a business
C must be a trader (rather than a private individual)
C's goodwill or reputation is limited in time and geographically
goodwill must be exclusive
BUT! 2 parties may acquire in one thing
---
(2 companies were originally part of the same family business business which had been divided along geographical lines)
Sir Robert McAlpine v Alfred McAlpine
BUT! m.b. shared reputation or goodwill in a product possessing special qualities
Champagne (Bollinger v Costa Brava Wine)
misrepresentation by D
requirements
Erven Warnink - Ld Diplock
must be likely to cause confusion
effect of misrepresentation on the mind of the consumer
if consumer is not confused - no liability
---
(belief that C has sponsored or given financial support to D will not ordinarily give the public impression that C is responsible for quality)
Harrods v Harrodian School
express or implied, by words or conduct, or it can be fraudulent or innocent
Spalding v Gamage - Ld Parker
effect on the minds of C's customers
must lead the customers to make an association with C or make them think that this was 'something for which C was responsible'
United Biscuits v Asda Stores
C shows that he suffered damage
damage
misc
must be more than minimal
Warnink
if future losses - reasonably foreseeable
Mothercare v Penguin Books
types
existing trade and profit
potential trade and profit
future opportunity to expand
Lego v Lemestrich
licensing revenues
Ninja Turtles
Mirage Studios v Counter-...
BUT!
not if really no intent to exploit the name
---
(STRINGFELLOW'S nightclub - chips)
Stringfellow v McCain
circular reasoning!
entitled to profits only if entitled to licences
to reputation
(arranged with retail managers to insert ad material - cannot be responsible for accuracy of the ads)
Associated Press v Insert Media
dilution
(champagne - ELDERFLOWER CHAMPAGNE - non-alcoholic - passing off - erosion of uniqueness)
Taittinger v Allbev
BUT!
now some doubt after
Harrods v Harrodian School
Advocaat - Ld Diplock
Advocaat
misrepresentation
form
express or implied, by words or conduct, or it can be fraudulent or innocent
Spalding v Gamage - Ld Parker
words
e.g.
usually similar
ELDERFLOWER CHAMPAGNE
action
e.g.
goods look similar
inserting ad
Associated Press v Inser...
marksandspencer domain name
BT v One In A Million
types
as to source
(toilet roll promotion - if unsatisfied replace NOUBELLE roll with ANDREX)
Kimberley Clark v Fort Sterling
as to quality
bought old used footballs and sold as new
Spalding v Gamage
that C has control or responsibility over the goods or services
although not enough in the case
Harrods v Harrodian School
personality
Irvine v Talksport
reverse passing off
reverse passing off
---
(D misleads by showing customers a catalogue of C's products while intimating that they have been made by D)
Bristol Conservatories v Conservatories Custom Built
held quality
requirements
Erven Warnink - Ld Diplock
deceptive
effect of misrepresentation on the mind of the consumer
issues
relevant public - C's customers
if goods are different - market of D's goods, customers are familiar with C's goods
Harrods v Harrodian School
difficult to prove
how much?
substantial number of persons
De minimus
---
(0.25% of C's market was enough)
Neutrogena v Golden; Clark v Associated Newspapers
when deception must occur?
at the time of purchase
---
(blue reusable adhesive - BLU-TAK - SELLOTAK - same size and colour - but different in appearance - no passing off - because D's blue colour is not visible at the point of sale)
Bostik v Sellotape
m.b. post-sale - when reading newspaper, not bying
Clark v Associated Newspapers
factors
Bently and Sherman
strength of the public's association with C's sign
if really strong, m.b. even in other field of business
---
(LEGO on plastic garden equipment)
Lego v Lemestrich
if weak - descriptive, slight change m.b. ok
---
(FURNITURELAND - FURNITURE CITY - not infringed)
Furnitureland v Harris
similarity to C's sign
proximity of C's and D's field of business
somewhat weakened
Irvine v Talksport
location of businesses
solicitor JUST EMPLOYMENT practiced for 10y in Guildford - new company - called C's by mistake - passing off
Bignell v Just Employment Law
characteristics of the market
factors
manner in which sold
habits of purchasers
e.g.
consider business - common to make oral recommendations - passing off
Wagamama
intention of D
D made disclaimer?
must be bold, precise and compelling - like trade description itself
Clark v Associated Newspapers
D is attempting a parody?
m.b. not mislieading
---
(Miss World - S&M)
Miss World v James St Productions
BUT!
doubt
Clark v Associat...
evidence
evidence of actual confusion
expert evidence
survey evidence
providing instruments of fraud
One In A Million
effect on the minds of C's customers
must lead the customers to make an association with C or make them think that this was 'something for which C was responsible'
United Biscuits v Asda Stores
misc
strange that no remedy is given to the person to whom a misrepresentation is made
made by trader in the course of trade
trader
wide interpretation
m.b. authors, performers, charities
NOT traders
small political party - only rented halls
Kean v McGivan
now doubted
trading
issues
must actually commence
---
(magazine BELGRAVIA - advertised before - no passing off)
Maxwell v Hogg
BUT!
ok if substantial pre-launch publicity
---
(book - widely advertised prior to publication - ok - injunction
Allen v Brown Watson
if trading is ceased
some elements may remain, m.b. revived again
IRC v Muller
factors
Knight v Beyond P...
extent of original reputation
continuing promotion
nature of the goods
remain in public eye?
nature of the mark
foreign traders
if office in UK
not necessary to have business in UK
Enough if some connection
---
(hotels - bookings made though UK office and travel agencies)
Sheraton
if only customers in UK
strict approach
must show
---
(saloon in Paris - no evidence that there were English customers of the Paris saloon)
Crazy Horse
customers
carry on business in the UK
soft line of cases
enough if show that clients in UK
Although failed in this case
---
(shoes)
Athlete's Foot Marketing Association v Cobra Sports
criticised
even wrongly decided
Peter Waterman v CBS - THE HIT FACT...
mere reputation
soft
(restaurant MAXIM's - ok - because loss of business opportunity)
Maxim's v Dye
strict
mere reputation is not enough
---
(only in American air force bases)
BUDWEISER
m.b. doubted - because globalisation
THE HIT FACTORY
NB well-known marks
s 56 TMA 1994
factors
trade and public recognition
inherent distinctiveness
duration and extent of use
promotion or advertising
sales abroad to British residents
value of the goodwill
ownership m.b. shared
to D's prospective customers or ultimate customers
which is calculated to injure the business of another
did not mean that it must be intentional!
it is just foreseeable consequence
m.b. even if not intentional or good justification
---
(KNOLL INTERNATIONAL - PARKER KNOLL - uncle used his own name - injunction)
which causes actual damage to C's goodwill or is likely to do so
goodwill
C's goodwill or reputation is limited in time and geographically
test
benefit and advantage of a good name, reputation and connection
IRC v Muller
attractive force that brings in custom
IRC v Muller
some causative impact upon customer bahaviour
IRC v Muller
manifestation of goodwill
form
packaging, trade dress, get-up
good if consumers identify the product by their external features
Jif Lemon
BUT!
not if professional supervision is required
Hodgkinson & Corby v Wards Mobility Service
difficult if get-up performs some function
---
(failed - cushions to help alleviate bed sores - even though C's cushions were memorable and striking and D's similar)
Hodgkinson & Corby v Wards Mobility Service
advertising style
m.b. slogans or images - but difficult to demonstrate association
---
(lemon drink - ad with 'ruggedly masculine and adventurous men' drinking SOLO - no goodwill acquired)
Cadbury Schweppes v Pub Squash
image or voice
e.g.
Tarzan scream
requirements
brand name must be distinctive of the business
IRC v Muller
issues
secondary meaning
requirements
original primary meaning must have been eliminated
Chivers v Chivers
factors
evidence of length of use
amount of money spent on advertising
easier if used the name separately, not with another sign
---
(OVEN CHIPS used with McCain's)
McCain v County Fair
easier if the sign is not exclusively descriptive
---
(FARM FLUID - descriptive - for farm disinfectant)
Antec International v South Western Chicks
issues
m.b. also names
(STONE ALE - brewery in a town of Stone - for over a 100 years - ok - prevented other trader)
STONE ALE
e.g.
can acquire secondary meaning
---
(MOTHERCARE for clothing for children)
can acquire secondary meaning
---
(CAMEL HAIR - belts - acquired)
Reddaway v Banham
distinctiveness m.b. lost
---
(floor covering)
LINOLEUM
goodwill must be exclusive
BUT! 2 parties may acquire in one thing
---
(2 companies were originally part of the same family business business which had been divided along geographical lines)
Sir Robert McAlpine v Alfred McAlpine
BUT! m.b. shared reputation or goodwill in a product possessing special qualities
Champagne (Bollinger v Costa Brava Wine)
damage
misc
must be more than minimal
Warnink
if future losses - reasonably foreseeable
Mothercare v Penguin Books
types
existing trade and profit
potential trade and profit
future opportunity to expand
Lego v Lemestrich
licensing revenues
Ninja Turtles
Mirage Studios v Counter-...
BUT!
not if really no intent to exploit the name
---
(STRINGFELLOW'S nightclub - chips)
Stringfellow v McCain
circular reasoning!
entitled to profits only if entitled to licences
to reputation
(arranged with retail managers to insert ad material - cannot be responsible for accuracy of the ads)
Associated Press v Insert Media
dilution
(champagne - ELDERFLOWER CHAMPAGNE - non-alcoholic - passing off)
Taittinger v Allbev
BUT!
now some doubt after
Harrods v Harrodian School
even if all 5 elements are present, it is not necessary that that passing off will be established - 'logical fallacy'?
Defences
defences
failure to establish all elements
[Cadbury v Ulmer]
no common field of activity: C and D are in different line of business
---
[Annabel's (Berkeley Square) v Schock]
---
(professional dancers and ?)
Annabel's (Berkeley Square) v Schock
acquiescence
BUT!
knowledge =/= acquiescence
William Grant & Sons v Glen Catrine Bonded War...
Examples
Classical passing off
(1st instance - new)
Numatic International v Qualtex UK
use of nickname
Biba Group v Buba Boutique
use of company name or trading name
Harrods v R Harrod
use of C's trade mark
---
(does not matter is if TM is descriptive - e.g. Camel Hair - secondary meaning)
Reddaway v Banham
get up of the C's goods
---
(chocolate biscuit wrappers)
United Biscuits v Asda Stores
Extended passing off
false suggestion of superior quality
---
(selling genuine goods made by C, but misrepresenting their quality)
Spalding v Gamage
Product has goodwill, not only business
misrepresentation of geographical origin or composition
---
(champagne - although called Spanish champagne)
Bulmer v Bollinger
overlaps with certification trade marks with Council Regulation (EC) 510/2006
Applies to any product with a particular characteristic or quality
Class of traders in a locality is not necessary
---
(advocaat)
Warnink v Towend
problems
how extensive must be trade for collective goodwill?
how the courts define the class of persons?
how the owners can amend the criteria of collective goodwill?
getting close to unfair competition
attempts to prevent misappropriation of advertising campaigns
---
(taking advantage of C's campaign)
RHM Foods v Bovril; Cadbury-Schweppes v Pub Squash
comparative advertising
---
(It's Not Just Big Mac - as if it is an improved version)
McDonald's Hamburgers v Burger King
reverse passing off
---
(D misleads by showing customers a catalogue of C's products while intimating that they have been made by D)
Bristol Conservatories v Conservatories Custom Built
Foreign C and well-known TM
actions for foreign C
passing off
requirements
there must at least be customers in the UK who can be misled by D's misrepresentations
Anheuser-Busch v Budejovicky Budvar NP
customers must be members of the UK public, not visiting foreign nationals
Anheuser-Busch v Budejovicky Budvar NP
well-known TM
see well-known TM in s 56 TMA 1994
s 56 TMA 1994
Future of passing off
contraction of passing off
expansion of passing off
proper vehicle to provide protection against unfair competition
changes to the law of TM since 1994
celebrity endorsement
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