Intellectual property

Passing off
Lecture

Dr Mathilde Pavis
 1. Introduction
2. Forms of passing off
Lecture plan 3. Requirements for passing off
4. Defences
5. Remedies
Introduction: Definition of passing off
definition
 Passing off a tort

 Protection conferred by passing off is often

compared to the protection conferred by trade
mark law
 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 man; he cannot be permitted to
Introduction: practice such a deception, not to use the means which contribute
to that end. He cannot therefore be allowed to use names,
rationale marks, letters or other indicia, by which he may induce
purchasers to believe, that the goods which he is selling are the
manufacture of another person.”
Introduction:
outline of the
Passing off: three factors
passing off
“test” (or
requirements)
1. The presence of goodwill of the claimant
2. Misrepresentation by the defendant
3. Damage to the claimant
Forms of Forms of passing off: x 3
passing off

1. Classic passing off

2. Extended passing off
3. Inverse passing off
Classic Passing Off
 Most common form
 Consumers are fooled into thinking
that Trader A’s goods are actually
Trader B’s goods, where Trader A
uses the same name for their goods
as Trader B
 Damage results from the defendant
diverting business from the claimant
Extended Passing Off
 The goodwill of traders in relation to the name of a
product having particular traits (eg Champagne) risks
being eroded by the use of the name by another trader
for a product that does not have those same traits
 For example selling ‘Swiss Cheese’ that was made in
the UK
 Diageo North America Inc v Intercontinental Brands (ICB)
Ltd [2011] RPC 12 – Smirnoff vodka v VODKAT –
without being differentiated from vodka, VODKAT was
likely to erode the distinctiveness of the word ‘vodka’ –
judge granted a limited injunction
Inverse Passing Off

 (*If* it exists as a separate form)

 When Trader A claims that Trader B’s goods are
actually Trader A’s
 Bristol Conservatories Ltd v Conservatories Custom
Built Ltd [1989] RPC 455
 Reckitt & Coleman Products Ltd v Borden
Inc (No 3) [1990] 1 All ER 873 (Jif Lemon)
The passing off
“test”

Classic passing
off
Requirements of a Passing Off Action
 Lord Oliver in Reckitt & Coleman Products Ltd v Borden Inc (No
3) [1990] 1 All ER 873 (Jif Lemon):

 (1) the existence of the plaintiff’s goodwill

 (2) a misrepresentation
 (3) and damage (or likely damage) to the plaintiff’s goodwill or
reputation

 Known as the ‘classic trinity’

 Adopted in Consorzio del Prosciutto di Parma v Marks & Spencer
plc [1991] RPC 351
 Test (or requirements) for extended passing off:

The passing off  Lord Diplock in Erven Warnink Besloten Vennootschap v J

Townsend & Sons (Hull) Ltd [1979] AC 731 (Advocaat):
“test”
 1. A misrepresentation
 2. Made by a trader in the course of trade
Extended  3. To prospective customers of his or ultimate customers of
goods or services supplied by him
passing off  4. Which is calculated to injure the business, or goodwill, of
another trader (in the sense that it is a reasonably foreseeable
consequence)
 5. Which causes actual damage to the business or goodwill of
the trader by whom the action is brought or (in a quia timet
action) will probably do so
 Advocaat, Lord Fraser:
 It is essential for the plaintiff in a passing off action to show at least
The passing off the following facts:
 (1) that his business consists of, or includes, selling in England a class of
“test” goods to which the particular trade name applies;
 (2) that the class of goods is clearly defined, and that in the minds of the
public, or a section of the public, in England, the trade name distinguishes
that class from other similar goods;
Extended  (3) that because of the reputation of the goods, there is goodwill attached

passing off to the name;

 (4) that he, the plaintiff, as a member of the class of those who sell the
goods, is the owner of goodwill in England which is of substantial value;
 (5) that he has suffered, or is likely to suffer, substantial damage to his
property in the goodwill by reason of the defendants selling goods which
are falsely described by the trade name to which the goodwill is attached.
End of introduction
Lecture

Dr Mathilde Pavis
Part 1: the 3 requirements of passing off

Lecture

Dr Mathilde Pavis
 Reckitt & Coleman Products Ltd v Borden
Inc (No 3) [1990] 1 All ER 873 (Jif Lemon)
The passing off
“test”

Classic passing
off
 Requirements of a Passing Off Action
 Lord Oliver in Reckitt & Coleman Products Ltd v Borden Inc (No
The passing off 3) [1990] 1 All ER 873 (Jif Lemon):

“test”  (1) the existence of the plaintiff’s goodwill

 (2) a misrepresentation
 (3) and damage (or likely damage) to the plaintiff’s goodwill or

Classic passing reputation

 Known as the ‘classic trinity’

off  Adopted in Consorzio del Prosciutto di Parma v Marks & Spencer
plc [1991] RPC 351
 Requirement 1
Claimant’s Goodwill
 Lord Macnaghten in IRC v Muller & Co.’s Margarine [1901] AC 217:
 Goodwill “is the benefit and advantage of the good name, reputation,
and connection of a business. It is the attractive force that brings in
custom. It is the one thing which distinguishes an old-established
business from a new business at its first start. The goodwill of a
business must emanate from a particular centre or source. However
widely or extended or diffused its influence may be, goodwill is worth
nothing unless it has power of attraction sufficient to bring customers
home to the source from which it emanates. Goodwill is composed of a

1
variety of elements. It differs in its composition in different trades and
in different businesses in the same trade. One element may
preponderate here and another element there.”
 Kinds of Goodwill
 Typically names, symbols, or logos
 Goodwill in descriptive words e.g. FRUIT PASTILLES
 Must show that the word has become distinctive or has taken on
a secondary meaning – Reddaway v Banham [1896] AC 199
 Can become generic – e.g. LINOLEUM
 Goodwill associated with packaging, get-up and trade dress
 Must show that the public recognises the get-up as distinctive of
the claimant’s goods or services – Jif Lemon case
 Advertising style

1  Use of image, likeness or voice

 Will depend on whether the public believe there is a relevant
connection
 Requirement of being a Trader and
Operating in Trade
 Being a ‘Trader’ – very broad scope and few problems – Kean v
McGiven [1982] FSR 119 CA; and Burge v Haycock [2002] RPC 119
 Operating in Trade
 Pre-Trade Goodwill
 Traditionally trading must have commenced, however, in some cases
where there has been substantial pre-launch publicity
 Maxwell v Hogg (1867) LR 2 CH App 307 – BELGRAVIA Magazine
 Allen v Brown Watson (1965) RPC 82 – My Life and Loves by Frank Harris

1
 Necessary to have customers to demonstrate goodwill in other cases –
My Kinda Bones v Dr Pepper’s Stove Co [1984] FSR 289
 Post-Trade Goodwill
 Goodwill must attach to a business but it does not dissipate
immediately on closure – Ad-Lib Club v Granville (1972) RPC 89
 On Foreign traders
 Foreign Traders – where a business located in a foreign country
acquires international reputation, can the foreign trader rely on
passing off to protect their interests in the UK?

 Three situations:
 Evidence of business activity – trading link with the UK – can establish
goodwill – Sheraton Corporation of America v Sheraton Motels Ltd [1964] RPC
202 (Sheraton Case)
 No business activity, but customers – Alain Bernardin et Cie v Pavilion
Propertie [1967] RPC 581(Crazy Horse Saloon Case) compared to Athlete’s
Foot Marketing Association v Cobra Sports [1980] RPC 343; Pete Waterman v
CBS [1993] EMLR 27 (The Hit Factory Case); and Hotel Cipriani v Cipriani

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(Grovesnor Street) [2010] EWCA Civ 110 (Hotel Cipriani Case)
 Mere Reputation – Reputation does not automatically mean Goodwill has
been established – Anheuser-Busch v Budvar NP [1984] FSR 413; Starbucks
(HK) v BSB [2015] UKSC 31; Maxim’s Ltd v Dye [1977] 1 WLR 1155

 Well-known marks are entitled to protection under Article 6bis of the Paris
Convention – good for foreign traders that lack local goodwill
 Requirement 2
Misrepresentation
 Lord Jauncy in Jif Lemon:
“The basic underlying principle of such an action was stated in 1842 by Lord
Langdale MR in Perry v Truefitt to be: ‘A man is not to sell his goods under the
pretence that they are the goods of another man…’ Accordingly, a
misrepresentation achieving such a result is actionable because it constitutes
an invasion of proprietary rights vested in the plaintiff. However, it is a
prerequisite of any successful passing off action that the plaintiff’s goods have
acquired a reputation in the market and are known by some distinguishing
feature.
It is also a prerequisite that the misrepresentation has deceived or is likely
to deceive and that the plaintiff is likely to suffer damage by such

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deception. Mere confusion which does not lead to a sale is not sufficient.
Thus, if a customer asks for a tin of black shoe polish without specifying any
brand and is offered the product of A which he mistakenly believes to be that
of B, he may be confused as to what he has got but he has not been deceived
into getting it. Misrepresentation has played no part in his purchase.”
 Overview of Misrepresentation

 (a) Conduct that constitutes

misrepresentation
 (b) Types of actionable
misrepresentation

2  (c) Must be likely to Deceive

 (d) Providing Deceptive Means
 (a) Conduct that constitutes
Misrepresentation
 Key concern is the consequence of the
defendant’s action
 Actionable even if deliberate, innocent, or can
be explained on what seem to be legitimate
grounds
 Parker Knoll v Knoll International [1962] RPC 265
 Very flexible – can arise from words or actions

2  Tattinger v All Bev [1993] FSR 641 – ELDERFLOWER

CHAMPAGNE
 Associated Press v Insert Media [1991] FSR 380
 (b) Types of Actionable Misrepresentation
 Misrepresentation as to source – that the defendant’s
goods or services are those of the claimant or related

 Misrepresentation as to quality:
 Spalding v Gamage (1915) 84 LJ Ch 449 (Orb Footballs): “…
no one, who has in his hands the goods of another of a
particular class or quality, has a right to represent these
goods to be the goods of that other of a different quality or

2 belonging to a different class.”

 Bollinger v Costa Brava Wine Co [1961] RPC 78 - Champagne
  Misrepresentation that the claimant has
control or responsibility over the goods or
services

 Harrods v Harrodian School [1996] RPC 697

School on land that was formerly used by Harrods called
the ‘Harrodian School’ – Harrods Department Store
applied for injunction – unsuccessful

 Personality Merchandising
 Lyngstrad v Annabas Products [1977] FSR 62 (Abba)

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– unsuccessful
 Irvine v Talksport [2002] FSR 943 – successful
 Robyn Rihanna Fenty v Arcadia Group Bands [2013]
EWHC 2310 (Ch) – successful
 ZOOM IN on: Personality Merchandising

 Lyngstrad v Annabas Products [1977]

FSR 62 (Abba) – unsuccessful

2
 ZOOM IN on: Personality
Merchandising

 Irvine v Talksport [2002] FSR

943 – successful

2
 ZOOM IN on: Personality Merchandising

 Robyn Rihanna Fenty v Arcadia Group

Bands [2013] EWHC 2310 (Ch) –
successful

2
  Misrepresentation that the claimant has control or
responsibility over the goods or services

 Harrods v Harrodian School [1996] RPC 697

School on land that was formerly used by Harrods called the ‘Harrodian
School’ – Harrods Department Store applied for injunction – unsuccessful

 Personality Merchandising
 Lyngstrad v Annabas Products [1977] FSR 62 (Abba) – unsuccessful
 Irvine v Talksport [2002] FSR 943 – successful
 Robyn Rihanna Fenty v Arcadia Group Bands [2013] EWHC 2310 (Ch)
– successful

 Character Merchandising (cartoons/fictional characters)

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 Mirage Studios v Counter-Feat Clothing [1991] FSR 145 –
 Teenage Mutant Ninja Turtles on clothing – successful
 BBC Worldwide v Pally Screen Printing [1998] FSR 665 –
Teletubbies– unsuccessful
 Comparative Advertising as Passing Off?
McDonalds v Burger King [1986] FSR 45

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 (c) Must be likely to deceive
 The claimant must show that the defendant’s misrepresentation
is deceptive
Phones 4u Ltd v Phone4u.co.uk Internet Ltd [2006] EWCA Civ 244;
Reed Executive Plc v Reed Business Information Ltd [2004] RPC 40
 The courts ask:
 Who must be deceived? – depends on the circumstance – general
public/relevant public/notional customer
 How many people must be deceived? – a ‘substantial’ part of the public –
Choccosuisse Union des Fabricants Suisses de Chocolat v Cadbury [1998] ETMR
205; Wolley v Ultimate Products [2012] EWCA Civ 1038
 When must the deception occur? – no clear guidance – usually depends on

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the circumstances in the case at hand
 Types of Evidence: actual consumer confusion; trade evidence;
expert evidence; survey evidence
 Factors that are taken into account in
deciding deceptiveness
 The strength of the public’s association with the claimant’s sign (Lego
System v Lego M Lemelstrich Ltd [1983] FSR 155)
 The similarity of the defendant’s sign
 The proximity of the claimant’s and defendant’s fields of business
 The location of the claimant’s and defendant’s businesses
 The characteristics of the market
 The intention of the defendant

2
 Whether the defendant has made a disclaimer
 Whether the defendant is attempting a parody or satire (Alan
Kenneth McKenzie Clark v Associated Newspapers Ltd [1998] RPC 261)
 (d) Providing Deceptive Means

 An action for passing off can be taken against a person who carries out
the act of misrepresentation, but also against someone who provided
the means or facilities that enable the passing off in the first place
 Lever v Goodwin (1887) 4 RPC 492 – to put an instrument of fraud into
the hands of the retailer
 BT v One in a Million [1998] 4 All ER 476 – domain name sellers,
marksandspencer.co.uk - successful

2  French Connection v Sutton [2000] ETMR 342 Ch – fcuk.com –

unsuccessful
Break (10 minutes)
 Requirement 3
Damage
There are four types of damage that have been
recognised by the courts:

 Loss of existing trade and profits (Jif Lemon;

VODKAT)
 Loss of potential trade and profits (Lego;
Stringfellow v McCain Foods [1984] RPC 501)

3  Damage to reputation
 Dilution
 Zoom in on
 Damage to reputation
 Associated Newspapers v Insert Media [1991] FSR 380
 Annabel’s v G Schock [1972] FSR 261
 Sir Robert McAlpine v Alfred McAlpine PLC [2004] EWHC 630

 Dilution of goodwill
 Tattinger v Allbev [1993] FSR 641: If people were allowed to call sparkling
wine not produced in Champagne ‘Champagne’ even though preceded by an
adjective denoting the country of origin, the distinction between genuine
Champagne and ‘champagne-type’ wines produced elsewhere would become
blurred; that the word ‘Champagne’ would come gradually to mean no more

3
than ‘sparkling wine’ and that part fo the plaintiff’s goodwill which consisted in
the name would be diluted and gradually destroyed.
 Harrods v The Harrodian School [1996] RPC 697 – Lord Justice Millet did not
agree with passing off covering this kind of damage
 British Telecommunications v One in a Million [1998] 4 All ER 476 – other
authorities have accepted dilution as a form of damage
End of Part 1
Lecture

Dr Mathilde Pavis
Part 2: defences and remedies
Lecture

Dr Mathilde Pavis
 Defences
1) The Claimant fails to bring a claim of passing off because:
(a) The claimant has no locus standi (right to be heard or stand in court)
(b) The defendant’s activities have not harmed and are not likely to harm the
claimant’s goodwill associated with the name, mark or get-up
(c) The passing off is not in the course of trade, that is, the defendant is not using
the name or get-up in the course of trade
(d) The claimant has no trade interest to be harmed, that is, the claimant is not
Defences using the name or mark in the course of trade
(e) The claimant has not established the existence of goodwill associated with
the name or mark
2) The defendant is simply making honest use of their own name or company name
3) The claimant has acquiesced in the defendant’s use of the name or mark, or has
expressly or impliedly granted the defendant permission to use the name or mark
4) Concurrent use
5) The claimant is estopped from enforcing his rights under passing off because he
has encouraged the defendant’s act.
Three Most Common Defences
1. Bona fide use of the defendant’s name
 Reed Executive Plc v Reed Business Information Ltd [2004]
RPC 40:
 ‘…in this case if Reed Business Information had been
causing significant deception, the fact that it was using its
own name would have afforded no defence to the passing
off claim, even though it had no intention to deceive.’
2. Concurrent Use
 Wolley v Ultimate Products [2012] EWCA Civ 1038
 The claimant sold watches under the name Henley and the
defendant sold clothes under the name Henleys – both
defendant and claimant had acquired goodwill but the
defendant’s goodwill only attached to the clothing, not the
watches it began to sell.
3. Delay or Acquiescence
 Blinkx UK Ltd v Blinkbox Entertainment Ltd [2010] EWHC 1624:

 “[H]ad the claimant acted promptly while the defendant’s business was
still in its trial phase, the balance of convenience might have favoured
an injunction. But two years later it seems to me that the position has
reversed. If one asks whether I should permit a short further period of
coexistance or stop all use of the name by the defendant except within
the narrow confines proposed, I come down very heavily in favour of
the former. Whichever way one looks at the matter, I consider that the
claimant’s delay here is fatal to the grant of interim relief and I dismiss
the application.
 Essential for acquiescence that the failure of the plaintiff to act should
have induced the defendant to believe that the wrong was being
assented to.”
 Remedies

 Injunctions
Remedies  Damages
 Account of Profits
 Order for delivery up or destruction
 Declaration
End of Part 2
Lecture

Dr Mathilde Pavis
Conclusion

Dr Mathilde Pavis
Passing off skeleton
 Copyright skeleton test
1. Copyright subsistence
(is the subject-matter eligible to copyright protection ?)
a. Categorisation
b. Fixation
c. Originality
d. Exclusions from copyright
e. Link to the UK
Remember? 2. Duration of copyright (is the work still protected?)

3. Authorship/ownership of the work

(who created it? Who owns the rights?)

4. Primary Infringement test for economic rights

a. Acts controlled by copyright
b. Causal link (copy or access)
c. The whole or part of the work is used (cf. substantiality test)
d. Defences and copyright exceptions?
 Passing skeleton test
1. Step 1 ?

a. ?
b. ?
c. ?
Write your
own 2. Step 2 ?

3. Step 3 ?

4. Step 4 ?
Passing off That’s it !