5 - Passing off in the UK

Question 1

What is the leading case on passing off?

Answer 1

JIF LEMON case - (Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873)

Question 2

What must be present to show passing off?

Answer 2

(a) goodwill/reputation: the claimant has a protectable goodwill attached to the
goods/services that distinguishes their products/services;

(b) misrepresentation: the defendant makes a misrepresentation that is likely to
deceive the public (intentional or not) to believe that the goods/services offered are
those of the claimant;

(c) damage: the defendant’s misrepresentation causes damage (actual or potential)
to the claimant’s goodwill.

Question 3

What is the classic trinity of questions?

Answer 3

1.Have the respondents [Reckitt & Colman] proved that the get-up under which their
lemon juice has been sold since 1956 has become associated in the minds of
substantial numbers of the purchasing public specifically and exclusively with [their]
(“Jif”) lemon juice?

2.If the answer to that question is in the affirmative, does the get-up under which the
appellants [Borden] proposed to market their lemon juice in [the ReaLemon
containers] amount to a representation by [Borden] that the juice which they sell is
“Jif” lemon juice?

3.If the answer to that question is in the affirmative, is it, on a balance of
probabilities, likely that, if the appellants [Borden] are not restrained as they have
been, a substantial number of members of the public will be misled into purchasing
the defendants’ lemon juice in the belief that it is the respondents’ Jif juice? (pp.500-
501)

Question 4

What is goodwill?

Answer 4

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.

Question 5

How long does it take to obtain protectable goodwill?

Answer 5

The length of time it takes for a business to develop protectable goodwill depends on
a number of factors, including the duration of trade, the level of marketing and
advertising before and after the commencement of trade, and whether the name
under which the business trades is descriptive of the goods or service provided.
There is no minimum period because intensive use for a short period can be
effective if the sign has become distinctive of the claimant

Question 6

How is reputation different to goodwill?

Answer 6

Goodwill is more than reputation. Goodwill requires the presence of clients or
customers in the UK. So a HK based internet TV service, with no customers in the
UK, not supplying products to UK customers, but a reputation in the UK, cannot
enjoy goodwill.

Question 7

Can goodwill be assigned?

Answer 7

Yes, by voluntary assignment, under a will or intestacy, or by operation of law

Question 8

What are some examples of misrepresentation?

Answer 8

(a) Use of own name (note that there is a defence for use of one’s own name in
UKTMA but use of own name can be a misrepresentation if there is confusion);

(b) Selling rejects or seconds as premium quality products;

(c) Setting up a company or registering a domain name knowing it is a trade mark
belonging to someone else;

(d) Association with the claimant by licensing (e.g. character merchandising) or
endorsement (e.g. celebrity endorsement);

(e) Using a “get-up” that is similar to that used by another business.

Question 9

What are some examples of damage?

Answer 9

(a) loss of sales;

(b) loss of reputation (through inferior goods and services);

(c) damage through public perception (e.g. injurious association with the claimant);

(d) blurring or erosion of uniqueness/exclusivity;

(e) loss of future commercial opportunities (e.g. future expansion).