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Group VI- Torts II Presentation

Property law (Kabarak University)

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GROUP VI
UNIT: TORT II

MEMBERS:
LAW/M/3167/09/21 KATWA CHEBET VICTORIA
LAW/M/3147/09/21 FANUEL KIPNGETICH BETT
LAW/MG/0910/09/21 KIEMA JOYCE MWENDE
LAW/MG/0914/09/21 KIPTUI JEBIWOT JOAN
LAW/MG/0931/09/21 GHATI LAVENDA MWITA
LAW/MG/0951/09/21 KIPLAGAT MAUREEN JEROTICH
LAW/MG/0994/09/21 CLIFF MISATI NYARIKI
LAW/MG/1032/09/21 WEMA VICTORY MUGOSHI
LAW/MG/1105/09/21 NGANGA GLEN KAHENYA
LAW/MG/1124/09/21 CHEMUTAI JOYLEEN
LAW/MG/1127/09/21 CHEPKOECH MAUREEN
LAW/MG/1134/09/21 SALOME CHEPTOO TONUI
LAW/MG/1164/09/21 BUNDI SYLVIA NYAKERARIO
LAW/MG/1535/09/21 THEOPHILUS FREDRICK MUKOKO
LAW/MG/1554/09/21 MERCY CHEPKORIR
LAW/MG/2755/09/21 FELIX EUGENE OCHIENG

PASSING OFF
This is a tort falling under false representation; where a defendant makes a false
misrepresentation in the course of trade; that is calculated to deceive the claimant’s customers in
a way that is likely to be damaging to the claimant’s goodwill. In simpler terms, this tort entails
one passing off their goods as that of another. There is no need to prove intention to harm since
the focus is mainly upon the likely effect that the misrepresentation by the defendant brings upon
the goodwill of the claimant.
This tort is brought forth to protect the financial interests of a person, from one who wants to
seek much gain from it.
The case of Erven Warnink v J Townsend & Sons Ltd (1979) :
In this case the claimant manufactured an a alcoholic drink known as Advocaat. Its principal
ingredients were eggs, spirits and wine. The defendant had for several years manufactured
another alcoholic drink composed of eggs and fortified wine known as Egg Flipp and uptown
1974 marketed it under that name. Because of the vagaries of the excise law which imposed
higher duties on spirit than fortified wine, EggFlip sold at a lower price than advocate. In 1974 D
began selling their product as 'Keelings old English Advocaat' and gained a larger share of the

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English Advocaat market.

The House of Lords held that no one was likely to be deceived into believing that the defendants
drink was the claimants drink and hence no action of passing off arose. However the name
'Advocaat' was generally understood to denote a distinct species of drink by virtue of which the
claimants had built up their goodwill and the defendant's misrepresentation had induced the
public to believe they were buying a form of Advocaat hence resulting damage to the claimants
business and goodwill.
The judge in this case then identified 5 characteristics necessary to file an action of passing off:
misrepresentation, made by a trader in the course of trade, to his perspective customers &
ultimate consumers, calculated to injure the goodwill of another trader, and causes actual damage
to the business of the trader.
Here, we’ll dwell on three main characteristics; which we’ll refer to as elements, that were
brought forth in the case of Newton Oirere Nyambariga v KCB Bank Ltd. (2017)eKLR which the
plaintiff has to prove in order to succeed i.e. misrepresentation, goodwill and damage.

1. Misrepresentation
The defendant ought to have made a misrepresentation to his prospective customers and ultimate
consumers of his goods. It is critical to note that misrepresentation is often implied; not
expressed.
Misrepresentation comes in many forms, and will be discussed later on.
Representation must be likely to deceive the claimant’s customers; either the prospective
customers or the ultimate consumers. The judge must decide on a balance of probabilities
whether a good number of the public would be misled. This is for an ordinary member of society.
If it is an expert, the test is whether an expert is likely to be deceived.
This is seen in the case of Harrods Ltd. v R. Harrod Ltd.(1923) where the defendant set up his
money lending trade business under the same name as an established bank and it was held that
his business would endanger the bank’s reputation, hence restrained.
This was also seen in Jinaro Kibet & 4 others v Paul Gitahi Mwaura (2021)eKLR where the
plaintiffs sought for permanent injunctions against the defendant who used their trade name of
‘AA Driving College’ as ‘Auto Assurance Driving College’; saying that it infringed their
business. The courts ruled in favour of the plaintiffs.
It is critical to note also that the false representation must be made in the course of the trade.

2. Goodwill
In A G Spalding &Bros V Gamage Ltd, Lord Parker stated that the tort protects GOODWILL
-that’s the ‘attractive force that brings in custom.”
Also in the case of Syarikat Wing Heong v Wing Heong Food Industries-goodwill is defined as
the advantage whatever it maybe that a person gets by continuing to carry on and being entitled
to represent a business with a very good reputation.
The tort of passing off is protective of the trader’s goodwill earned through sale of goods and
services. Goodwill is said to be ‘local in character and divisible‘ in the sense that separate

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goodwill attaches in each market where the business is carried on.

Goodwill must exist in the use of the claimant’s mark or name immediately before the
introduction of the defendant’s goods or services to the relevant market e.g in the case of Danone
Buscuits Manufacturing v Hwa Tai Industries -P had been selling chocolate chip cookies under
the trademark ‘chipsmore” .The defendant also used the the name”Chipplus” .The court made a
comparison between the products and found out they were confusingly the same .The
defendant’s products was the same to the plaintiff’s product.

Goods of locality:in the case of Bolinger v Costa Brava Wine Co.Ltd.

D marketed ‘Spanish champagne ‘,a sparkling Spanish wine.C was one of the several
manufacturers of champagne in the champagne region of France.The court found out that the
members of the public bought D’s wine in the mistaken belief that they were buying champagne
from the vineyards of Champagne. It was held that D had committed the tort of passing off.
Crucially,Danckwerts J held that the description ‘champagne ‘ was part of the claimant’s
goodwill and right to property..A group of persons producing goods in a certain locality and
naming those goods by reference to that locality were entitled to protection against
Competitors who sought to cash in on their goodwill and reputation by attaching that name to
a product originating from a different locality at which the competing product has no rational
association.

In the case of Bia Tosha Distributers Limited v Kenya Breweries Limited &3 others
The court had to determine if the plaintiff acquired goodwill over certain distribution or areas
of the Respondent’s products.This is because the plaintiff claimed that the Kenya Breweries
Ltd had interfered with several distributorship areas known as Bia Tosha Territory as they
claimed they claimed they had exclusive control over the place because they had paid some
monies as distributorship goodwill. The case was ruled on behalf the plaintiff and issued a
conservatory order preserving the Bia Tosha territory.

3. Damage
For passing off to succeed, the misrepresentation and goodwill must cause ‘damage’ to the
claimant. The primary damage is typically loss of revenue as customers buy the defendant's
products in the mistaken belief that it’s a plaintiff’s product.
This pointed is illustrated in the Bristol Conservatories case,
A manufacturer of Conservatories discovered that a competitor was using photographs of their
Conservatories in its brochures. Though the brochure didn’t mention the claimant,the court
found that the use of the Photographs constituted a damage to the goodwill built by the
plaintiff in it’s business.
The plaintiff need not prove actual or special damage; real and tangible probability of damage
is sufficient. This damage should be reasonably foreseeable. This is especially after goodwill
and misrepresentation has been already proved.
The following are some of the factors to prove damage

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1. Loss of sales or trade because of the defendant’s misrepresentation.

2. Damage to plaintiff’s reputation to think that the plaintiff’s goods are thought of being
of a lesser quality
3. Dilution of the plaintiff’s reputation because of the negative implications of being
associated with the defendant’s product or business
4. Damafe to the plaintiff’s ability to exploit the goodwill they have established eg
charging an extra fee
This can be illustrated from the case the case of Bernadin V Pavilon Properties
Famous Paris nightclub sought an injunction against a UK company which sought to open a
night club in London under the same name. The Cabaret bar had been established in 1951 and
had even gained international reputation. The application was rejected due to the fact that the
fact the Paris night club was outside the jurisdiction of UK

Forms of misrepresentation
The various forms of misrepresentation are:
1. Trading with a name resembling that of a plaintiff.
2. Marketing a product as that of the plaintiff
3. Marketing goods with a name resembling that of the plaintiff’s goods
4. Marketing products with the plaintiff's Trademark or its imitation
5. Imitating the appearance ofthe plaintiff’s product and its advertisment
6. Selling inferior or expired goods of the plaintiff as original or current stock

1. Trading with a name resembling that of the plaintiff

To engage in the same line of business as the claimant and to use a similar name may be passing
off. If the defendant carries on business in his own name (or on which he has assumed for some
time) then he does not commit his tort unless there are further special circumstances showing
dishonesty. This is so because he is entitled knowing to take advantage of the benefits which
may accrue to him from the trade use of his own name. On the other hand, if confusion arises
from describing his goods by his own name, it is no defence that his use is bona fide. A
company does not, however , acquire and incorporate the individual rights of its promoters to
carry on business under their names.
In Niger Chemist Ltd vs Nigeria Chemist limited:
The plaintiff company had carried on business as chemists and druggists for some years and had
several branches in Onitsha and other towns in Eastern Nigeria. The firm was well known under
the name of "Niger Chemists." The second defendant and his partners founded a firm carrying on
exactly the same business in Onitsha under the name of "Nigeria Chemists." The plaintiff
company objected to this use of a name so similar to its own, but the defendants refused to
change it, whereupon the plaintiff brought proceedings for an injunction to restrain the
defendants from using the name and style "Nigeria Chemists."The holding was that two firms
trading in the same town ,in the same street and in the same line of business must be a grave risk
of confusion and deception.

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A kenyan case law on the same is National Industrial Credit(NIC) Bank v Nairobi Investment
Company(NIC) Micro Finance Ltd
The Plaintiff is a banking institution offering, inter alia, banking services and short term loans to
finance hire-purchase transactions. It is known throughout Kenya by the name NIC Bank. In its
Plaint, the Plaintiff has contended that it did engage in aggressive advertisement quality and
professional delivery which earned it goodwill and clientele using its trademark NIC Bank. It
further pleaded that the defendant had been carrying on business in the name and style of “NIC
Micro Finance ltd” which name is so similar to that of the Plaintiff and the Plaintiff’s trade mark.
That this had confused the Plaintiff’s clients.In the holding the court ordered the defendant to
change the name in 90 days and awarded the cost of the suit and interests to the plaintiff .

2. Marketing a product as that of the plaintiff

It is actionable passing off for the defendant to sell his goods with a direct statement that the
goods are manufactured by the plaintiff, whereas they are not. For A to market his product
claiming falsely that it is the claimant, B's, product is passing off
Lord Byron v Johnston
The defendant sold books of poems and advertised them as being the works of Lord Byron, when
someone else infact wrote them.The court held that there was a clear misrepresentation designed
to take advantage of a famous name.

3. Marketing goods with a name resembling that of the plaintiff’s goods

It is a tort of passing off for a defendant to produce or market his goods with a name closely
resembling the name of the plaintiff’s goods, with the result that the customers are confused, and
the defendant’s products are mistaken as made by the plaintiff and are bought as the product of
the plaintiff.
In Hines v. Winnick (1947) , the plaintiff musician and band leader who used to broadcast his
radio programme under the name ‘Dr. Crock and his crack pots’ obtained an injunction to
restrain the defendant from featuring another band on the programme using the same name.
VAISEY J Granting the injunction was of the view that a musician gets known by a particular
name and this becomes inevitably part of his stock-in-trade.
In Strategic Industries Limited v Solpia Kenya Limited [2019] eKLR
The Plaintiff claimed that the Defendant, in utter disregard and breach of business etiquette and
trade practice, engaged in illegal manufacturing and selling into the same market hair products
named “DANIELA” which name was similar to the Plaintiff’s trade name “DANIELLA”. The
same copied trade name was used for goods of the same kind and in the same market. The
Plaintiff claimed that the Defendant had used like words, packaged its product in like get-up and
general outlay as those of the Plaintiff’s products and as a consequence causing confusion in the
market by making customers believe that the Defendant’s products are related to the Plaintiff’s
products and vice-versa and thereby buying the Defendant’s products believing that they are in

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fact buying the Plaintiff’s goods. It was held that the Defendant has infringed and/or passed-off
the Plaintiff’s trade name “DANIELLA”. Therefore injuction order was made restraining from
manufacturing, distributing and/or selling the product with the name "DANIELA" or distributing
and/or selling the product with the name "DANIELA" or any other product which is similar to
the Plaintiff’s product "DANIELLA".

4. Marketing products with the plaintiff's trademark or imitation.

It is actionable in passing off for a defendant to market his goods using the plaintiff's trademarks
or an imitation of the trademark thus confusing the buyers thinking his product are those of the
plaintiff's.
A trademark is a sign which serves to distinguish the goods of an industrial or a commercial
enterprise examples of trademarks are Under Armour and Coca-Cola.
In Reckitt and Coleman properties ltd V Borden Incorporated (1990)
Reckitt sold lemon juice under the name Jif Lemon which came in plastic yellow container that
was shaped like a lemon. Borden a competitor also made plastic containers that was only slightly
larger with a flattened side . Reckitt sued Borden for passing off their products as Jiff Lemon
Juice.
Lord Oliver reaffirmed the classic test for passing off. First, he must establish a goodwill or
reputation attached to the goods or services which he supplies in the mind of the purchasing
public by association under which his goods or services are offered to the public such that it is
recognised by the public as distinctive specifically of plaintiff's. Second, he must demonstrate a
misrepresentation by the defendant to the public leading or likely to lead the public b to believe
that goods and services offered by him are those of the plaintiff's. Third, he must demonstrate
that he suffers or is likely to suffer damage by reason of the misrepresentation and that the source
of the defendant's goods or services is same as the source of those offered by plaintiff's.
Also, in Perry v Truefitt
Leathart made a hair treatment product. He had shown the mixing process to Perry ,a perfume
and hair-dresser who decided to call the mixture 'Medicated Mexican Balm ' Perry marketed the
mixture " Perry's Medicated Mexican Balm " .Truefitt one of Perry's competitors made a
produced that was similar to Perry's product .Perry tilled a bill against Truefitt arguing that the
name Medicated Mexican Balm was valuable to his business and that he should have exclusive
right to prevent others from using it. The court denied Perry the name but lord Longdale held
that misrepresentation can be grounds for an injunction ,stating that "a man is not sell his own
goods under the pretence that they are the goods of another man."
Other case laws:
Bata Brands SA and Bata shoe Company Kenya Limited V Umoja
ENG Kenya ltd V Magnate Ventures Ltd

5. Imitating the appearance ofthe plaintiff’s product and its advertisment

It is passing off for the defendant to do anything, which makes his product appear like the
plaintiff’s product. This passing off includes any copying of the likeness or appearance of the

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plaintiff’s product, in a manner to confuse the public e.g. general appearance, package, label, or
design of the product. De facto Works Ltd v. Odumotun Trading Co Ltd. (1959) LLR 33 and
Hudson & Co. v. Asian (1964) I WLR 466 PC.
Also an advertisement by the defendant which copies, or imitates the plaintiff’s advertisement of
his products, may amount to passing off, where such advertisement so resembles that of the
plaintiff, as to be capable of misleading the buyers to patronize the defendant’s goods as those of
the plaintiff. See Cadbury Schweppes pty Ltd v. Pub Squash Co. pty Ltd (1981) I ALL ER 213
PC

6. Selling inferior or expired goods of the plaintiff as original or current stock

This is where the defendant sells inferior or expired products which had been discarded by the
plaintiff as the current stock.
This action of the defendant will create a poor opinion of the plaintiffs products in the minds of
the consumers; when they bare made to believe that the second hand goods are new ones.
In Puma Se v John Githenduka Macharia Mburu:
Plaintiff owning Puma trademark acquired in 1970 ,1976 and 1977 came to the knowledge that
the defendant was engaged in importation, distribution, sale of counterfeit goods whose marks
were so similar vand so deceptive as to pass off as those belonging to the plaintiff.Defendants
actions breach provision of section 7 of trade marks act cap 506 laws of Kenya.
It was held that goods found in possession of the defendant were counterfeited and ordered the
defendant to hand over to the plaintiff the 190 pairs of footwear for destruction.
Wilts United Dairies ltd v Thomas Robinson Sons and Coy ltd.
During the war and upto march,1954,the sale of condensed milk was controlled.In march
1954,control ceased and the ministry of food disposed off large stocks but since the article was
known to deteriorate with age,imposed the condition that the milk should only be sold for use as
animal food,or for export The defendant purchased large quantities of milk manufactured by the
plaintiff at prices so much below current prices that Stable ,J held that they must have known it
was old stock and resold it in tins bearing the plaintiffs name and trademark.The evidence
showed that condensed milk was liable to deteriorate six months after manufacture,that in fact
the course of trade adopted the plaintiffs ensured that the great bulk of their milk reached the
ultimate consumer within six months and that the trade if not the public recognized the
distinction between current stock and stock more than six months old.
It was held that the defendants had passed off one of the plaintiff s goods as and for another
class.This amounted to malicious falsehood calculated to injure the plaintiffs reputation.

Defences
1. Honest concurrent use and use of own name
This defence states that a person may trade in his own name and use it as part of his business
provide that he does so bona fide(without intention to deceive) . in Reed executive PLC v Reed
business information LTD, the action concerned an allegation of passing off of the web site
totaljobs.com . Alec Reed had started Reed Employment in 1960 and in 1961 he started Reed

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Executive. He alleged trade mark infringement by the respondents by use of a mark in a pop up
advert.
The courts held: The own name defence to trade mark infringement is limited . some confusion
may be allowed if overall the competition was not unfair in all circumstances . They only
wanted to associate their own name with the totaljobs.com website . Jacob Lj stated as to why
the defence is limited, He states that the question is whether the use of the name is calculates to
deceive the public unless precautions are taken , then it may be proper to restrain a man from
trading under any name of which his surname forms part, without clearly distinguishing his
goods from those of the other trader
This is also seen in the case of Asprey &Garrad ltd v William R Asprey

2. The mere descriptive name of the product .

In a claim for the tort of passing off,a defendant may plead this defence .An action of passing off
does not lie for the use of the purely descriptive name of products such as bread, radio, furniture,
car, refrigerator or vacuum cleaner…which are not exclusive names of the product of any
particular person, accordingly no person can claim on them.
In British vacuum cleaner company v.New vacuum cleaner company (1904) There was an action
to restrain use of ‘vacuum cleaner’ as part of name. In 1902 a company (The British Vacuum
Cleaner Company Ltd) was formed to work under a patent granted in 1901 and purchased by the
company;a process of cleaning carpets and other articles by means of a vacuum. The British
Vacuum Cleaner Company Ltd formed, took over the undertaking of the 1st named company
which advertised widely and acquired a large business.They were interested in many subsidiary
companies working under license.The business of each one of them restricted to a particular
area,and the name of each contained the words ‘vacuum cleaner’ with a territorial qualification.
In October,1906,The New Vacuum Cleaner Company was formed.They took the business
premise close to British Vacuum Cleaner Company Ltd. (who brought an action to restrain them
from using ‘vacuum cleaner' as part of their name).The plaintiff alleged that they had become
known in public as, vacuum cleaner company.The defendant alleged that the words alleged to
were descriptive of class of machine and process in both companies and that they had not
acquired any secondary meaning of the plaintiff’s machine and were used in conjunction of the
word ‘New’, and were not calculated to deceive. They alleged that the defendant had induced
two of the plaintiff’s employees to enter the defendant’s employment.

3. Consent
Is the most important.
This includes license given to him by the plaintiff to produce or market the product.
Lee v Haley(1869)
This suit was brought by appellees to cancel a deed executed by Mrs. M. E. Haley, now
deceased, to W. R. Haley, upon the ground that Mrs. Haley was of unsound mind at the time she
executed the deed, and also that the same was obtained by undue influence exercised by the
appellant over the grantor. The case was submitted to a jury upon two special issues, one of

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which was: "Was Mrs. Haley of unsound mind at the time she executed the deed?" To which the
jury answered that she was. The other was: "Did appellant exercise undue influence over Mrs.
Haley in order to obtain the deed?" To which the jury answered he did not. Lee, the daughter of
Mrs. Haley, and one of the plaintiffs herein who was suing to recover an interest in the land as an
heir of her mother, was permitted to testify, over appellant's objection, as to a conversation which
she had with her mother with reference to the execution of the deed.
The court erred in permitting the testimony of Mrs. Lee.
Ford v Foster(1872)
The plaintiffs brought actions in passing off against the defendant company in respect of their
chocolate products. They objected to the use of the terms ‘Swiss Chocolate’ applied to chocolates
not made in Switzerland.
Held: The claimant had to show that the descriptive term ‘Swiss Chocolate’ had acquired a
distinctive meaning. A name is protectable in a passing off action if the plaintiff can show that
the words sued upon had the protectable meaning alleged.
National Industrial Credit (NIC) Bank ltd v Nairobi Investment Company Micro Finance ltd
The Plaintiff is a banking institution offering, inter alia, banking services and short term loans to
finance hire-purchase transactions. It is known throughout Kenya by the name NIC Bank. In its
Plaint, the Plaintiff has contended that it did engage in aggressive advertisement quality and
professional delivery which earned it goodwill and clientele using its trademark NIC Bank. It
further pleaded that the defendant had been carrying on business in the name and style of “NIC
Micro Finance ltd” which name is so similar to that of the Plaintiff and the Plaintiff’s trade mark.
That this had confused the Plaintiff’s clients. The Plaintiff further contended that the Defendant
was using an application form similar to that of the Plaintiff in all respects, that the Defendants
conduct was deceptive to the Plaintiff’s customers and the public, that the Defendant was
therefore passing off its services as those of the Plaintiff and/or was holding out itself to the
public as being associated with the Plaintiff. The Plaintiff gave what it considered to be the
particulars of passing off. The Plaintiff contended that as a result of the foregoing it had
suffered and continued suffering loss and damage, the Plaintiff therefore prayed for, inter alia,
orders of injunction, the destruction of the offending materials and inquiry to damages or an
account of profits.
The Defendant filed a Defence wherein it admitted that whilst it was originally registered as
NIC Micro-finance (K) Ltd, it had changed its name to Nairobi Investment Company (NIC)
Kenya Limited, that the trade mark NIC was not registered in the Plaintiff’s name, that the
trademark was a nullity as it contravened the right of the Defendant to use its duly registered
name as provided for under Section 11 of the Trade marks Act Cap 506, of the Laws of Kenya,
that the Plaintiff does not have any claim of copyright or patentability of the application forms
for hire. Further the Defendant denied having infringed the Plaintiffs registered trade marks by
purely using its registered name Nairobi Investment Company (NIC) Kenya ltd. The Defendant
therefore denied in total the Plaintiff’s claim and prayed that the same be dismissed.
It was held that the Defendant had passed off its services as those of the Plaintiff to the extreme
prejudice of the Plaintiff as the defendant failed to prove his defense.

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4. Functional design or package

This is as in the case of traffix devices inc v marketing displays Inc . it provides that when a
design feature is functional then competitors can lawfully copy it even if the feature would
otherwise be protected against copying by trademark principles.
This may include: Appearance, Colour, Feel, Size, Shape & Packaging
It may also include valentine’s card exterior contours of Ferari mobile.
The courts have therefore reason that if there is enough alternative design features then
unauthorized copying is not allowed

Kellogg Co. v. Nat'l Biscuit Co. 9 There the senior producer sought to enjoin the junior producer
from manufacturing and selling shredded wheat breakfast cereal. The senior complained that the
junior produced its shredded wheat in the same pillow-shaped form employed by the senior.
Justice Brandeis concluded that this practice was fair competition because the biscuit's form was
"functional-that the cost of the biscuit would be increased and its high quality lessened if some
other form were substituted for the pillow-shape."' This language suggests that the functionality
of a choice design feature is a conclusion that should follow a comparison of the choice and
alternative design features' "cost effects," "quality effects," or
both .
The burden and standard of proof, this is well illustrated in the case of Inwood laboratories v
Ives laboratories inc the senior producer has the burden of proving non-functionality the in
wood standard combines a series of tests
1) The first test provides that a design feature is functional if it is essential to a product's use
or purpose.
2) The second test provides that a design feature is functional if it affects a product's cost or
quality.

Remedies
1. Damages for loss of reputation and/or profit
This happens when one sues for damages or seek account or lost profit . Claim recover damages
for the loss of profits sustained in consequences of customers being diverted from them to the
defendant. But it is not per se in respect of such loss that they may claim. Rather ,all lost must be
referable to goodwill ,which lies at the heart of the classic trinity.
But goodwill has been recognized as capable of being harmed in several ways beyond mere
diversion of customers. Loss of business reputation as in; AG Spalding and bros v AW Gamage
ltd [ 1918], The plaintiff who were manufactures of footballs and other athletic goods sued the
defendants for passing off certain of the plaintiff’s old and discarded footballs as and for their
new and improved balls. It appeared that certain balls manufactured by the plaintiffs in 1910 and
called by the name of ‘Orb’ had been sold by them to a firm of waste rubber mechants on
account of their being unsatisfactory ,and a new and improved ball was made and sold by the
plaintiff as the ‘improved Orb’ and withdrew the advertisement .For a long time, they advertised

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and sold them as ‘Orb’ balls which were then advertised were different from those to which the
first advertisement was therefore likely to deceive. An injuction in a special form was granted
and an inquiry as to damages was ordered and the plaintiffs were given the costs of the action.
The defendant appealed to the court of Appeal. It was held that that the plaintiff were not entitled
to an injuction or damages. The appeal was allowed with the costs and was held that the
plaintiffs had established a case of misrepresentation calculated to produce damage.
There is also restriction of the claimants expansion potential[without limits] as in the case of;
Alfred Dunhill ltd v Sunoptic SA[1979] The claimants were well known Tobacco and luxury
goods manufacturers, with a subsidiary who sold sunglasses in the United States .They operated
under the marks ‘Dunhill’ and ‘Dunhill of London’. The defendant proposed to sell sunglasses
under the mark ‘CD Christopher Dunhill-London’ the claimants sought to interim injuction to
prevent the defendant from using the name. This was denied by the trial judge. The claimants
appealed that; would damages be an adequate remedy for the claimant, in accordance with the
American Cyanamid criteria for granting injuction. The Court of Appeal allowed the appeal and
granted the injuction . They held that there were serious issues to be tried relating to fraud and
the claimants reputation .If the injuction was not granted, the claimants might suffer reputational
loss which would not be adequately compensated in damages. The evidence of hardship or
injustice to the defendant was weak ,so the balance of convience favoured an injuction.
The alternative to the common law inquiry into damages is the equitable remedy to an act of the
profits made by the defendant by virtue of the passing off. There are dicta to the effect that an
account of profits will not be directed for such period as damages may be awarded when the
defendant neither knows nor ought to have known that he was committing the tort of passing off.
Marengo v Daily Sketch and sundag Graphic Hd 1948
The appellant’s cartoon in the field of political and international affairs , signed his drawing
pseudonym “kem” and by the year1944 he had acquired a considerable reputation in that sphere
under the name “kem”. The respondents , proprietors of a daily newspaper , published three
cartoons with a signature intended to be “kim” but without any dot on the “I” . The appellant
complained that the said cartoons had been taken as being by him and he asked for an injuction
to restrain the respondents from printing or publishing as or for his drawings , drawings not
produced by him and from passing off any such drawings under or by reference to the name
“kem” or any name only colourably different there from . The respodents contended that the
artist who drew the said cartoons had been accustomed to sign his drawings as “Kim” since
1929, and although hither to well known only as a cartoonist in the sporting sphere , well entitled
to draw cartoons on any subject under that signature and that the appellant could not claim to
monopolise any particular field .
Romer J held that as there was no dot on the middle letter it could not be I and the signature ,
therefore , must be “Kem” and he granted the appellant an injunction and ordered an inquiry as
to damages . On appeal to the court of appeal it was held that the signature on the cartoon was
“kim” and the appeal was allowed.

2. Injunctive relief

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Injunctive relief (either an interim injunction if you need to act quickly or an injunction to
prevent further actions that amount to passing off)
An appropriate form of injunction may be limited to restraining the defendant from using the
mark in question without sufficiently distinguishing his goods from those of the claimant.
Orders may be made for the obliteration of the offending mark upon the defendants goods.
Delivery up is only ordered an ancillary to an injunction especially where the defendants goods
can be sold without passing off for example in foreign markets where ths claimant's mark may be
uknown, delivery up may not be appropriate.
Publication before trial is not to be restrained unless the court is satisfied that the applicant is
likely to establish that publication should not be allowed.
In suitable cases, a search order may be made to prevent the defendant concealing or destroying
tbe evidence as well as orders to compel disclosure of the names of other accomplices such as
suppliers of the offending goods.

Case laws
Rihanna v Top Shop
Rihanna brought a claim against Topshop in 2013 for damages of £3.3million following the sale
by Topshop of t-shirts featuring a photograph of her taken during a video shoot by an
independent photographer who had licensed the use of the image to Topshop. As Rihanna had
not given her consent, she argued that her image on the t-shirt amounted to a misrepresentation
that she was associated with it, encouraged the public to buy it and this resulted in damage to her
reputation and goodwill as a fashion icon. The High Court decided in favour of Rihanna and
found that the sale of the t-shirt amounted to passing off as it was likely to lead people to buy it
in the false belief that she had approved or authorised it. The High Court granted an injunction
prohibiting Topshop from selling the garment without informing purchasers that it had not been
approved or authorised.
Jinaro Kibet & 4 others v Paul Gitahi Mwaura
The Plaintiffs/Applicants herein are officials of the Automobile Association of Kenya, is an
Association duly registered within the laws of Kenya. The Automobile Association of Kenya,
often identified and recognized by the abbreviations “AA Kenya”, is an independent motoring
association that provides services to its members such as roadside assistance, driver training,
motor vehicle valuation and car insurance brokerage. Hereinafter, I will refer the Association as
“AA Kenya.” The Defendant herein operates a driving school trading as Auto Assuarance
Driving College. It is registered as a trade name. The Defendant concedes that he has christened
his business as “AA-Driving College.” He also concedes that he advertently uses the
abbreviation “AA” for his business.The Plaintiffs have filed the attendant suit against the
Defendant herein, for permanent injunction seeking to restrain the Defendant, whether by itself,
servants, agent’s employee and or assigns from trading as AUTOMOBILE ASSOCIATION OF
KENYA and or other name resembling or incorporating the Plaintiffs’ colors. They also seek a
declaration that the business name AUTO ASSUARANCE DRIVING COLLEGE infringes on
the Plaintiff’s trade name and should thus be changed since it confuswa members of the public

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into believing that they varw the same institutions.

An order of interlocutory injuction was issued stopping the respondent from using the plaintiff's
trade name and symbol including the abbreviation AA.

See also;
CHELSEA MANSWEAR LTD VS CHELSEA GIRL LTD(1987)
MONTGOMERY VS THOMPSON (1891)

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