8. Passing Off

Question 1

requirements for passing off

Answer 1

goodwill
misrepresentation
damage

Question 2

IRC v Muller

Answer 2

goodwill: “the attractive force that brings custom”

Question 3

Reddaway v benham

Answer 3

descriptive word can have goodwill if it has

ACQUIRED SECONDARY MEANING (displacing the primary meaning)

e.g. “camel hair belting”

consider:

• investment by C on adverting
• length of use
• public adoption without C action

Question 4

United Biscuits v ASDA

Answer 4

GW in get up and packaging?

MORE POSSIBLE in COMMON HOUSEHOLD GOODS (little attention paid to words)

Question 5

Hodgkinson v Wards

Answer 5

C must show public recognises get up to indicate C’s goods

NO GW here - decorative, not indicative of origin

Question 6

Edge v Nicholls

Answer 6

GOODWILL IN FUNCTIONAL ASPECT

• possible
• consumers illiterate so stick was how they recognised goods

THIS WILL BE HARD IN PRACTICE because consumers usually take goods at face value

Question 7

Cadbury v Pub Squash

Answer 7

there can be goodwill in advertising style in principle

BUT in practice this can be hard to show

Question 8

Warnick v Townsend

Answer 8

“extended passing off” recognised

misrepresentation not just to origin

SHARED GOODWILL is possible
- any person with goodwill can bring a claim because they have a stake in the goodwill and can be damaged

Question 9

Bollinger v Costa Brava

Answer 9

spanish “champagne”

GOODWILL IN CHAMPAGNE

(misrepresentation is as to quality)

Question 10

Vine Products v Mackenzie

Answer 10

British “sherry”

GOODWILL IN SHERRY

Question 11

Diago v Intercontinental

Answer 11

VODKAT (lower alcohol content then vodka)

• any vodka maker can bring a claim
• goodwill has no requirement for geographical aspect
• no need for luxury brand either

JUST NEED COMMON UNDERSTANDING OF A PRODUCT THAT DIFFERS FROM OTHERS
(something special)

Question 12

Anheuser Busch v Budvar

Answer 12

if only reputation in UK there is no goodwill (so no passing off)

• well known in uK
• BUT nowhere to bring custom (except Air Force but that is not for general custom)

Question 13

Peter Waterman v CBS

Answer 13

Hit factory
- C couldn’t establish g/w but court considered D’s d/w anyway

PRESENCE OF UK CUSTOMERS WAS SUFFICIENT FOR GOODWILL
(constitutes carrying business in UK)

Question 14

Hotel Cipriani

Answer 14

CA confirmed Peter Waterman

• presence of customers is enough to show goodwill
• BUT caution re: e-commerce

Question 15

Spalding v Gamage

Answer 15

misrepresentation as to quality

• can’t represent his goods and services as C’s
• C did not put his name to this quality

Question 16

Harrods v Harrodian School

Answer 16

misrepresentation that C has control/responsibility over D’s goods/services

BUT MERE CONNECTION IS NOT ENOUGH

public must believe C made himself responsible for quality of D’s g/s (financial support not enough)

BLURRING IS AN “UNACCEPTABLE EXTENSION OF TORT OF PASSING OFF” (unlikely D’s activities would cause Harrods to lose distinctiveness)

Question 17

Irvine v Talksport

Answer 17

GOODWILL: in image

MISREP: misrepresentation that C endorsed D’s goods (narrower than merchandising)

DAMAGE: (1) lost licensing fee and (2) loss in exclusivity of image (blurring)

NO REQUIREMENT for common field of activity

Question 18

Fenty v Arcadia

Answer 18

MISREP: false endorsement (approved by Rihanna)

• photo came from album cover shoot (customers presume this is a controlled image)

DAMAGE: (1) lost profit, (2) lost of control of image

Question 19

Tattinger v Allbet

Answer 19

ELDERFLOWER CHAMPAGNE

gw: champagne
misrep: labelling of d’s product (artificial)
damage: blurring/erosion of C’s sign

Question 20

L’Oreal v Bellure

Answer 20

passing off MUST have misrepresentation

Jacobs LJ - rule of no misrepresentation needed is:

1. UNNESSARY - art.10bis does not require more than prohibition on deception
2. UNDESIRABLE - IP rights must have limits because they limit competition (usually time limits), p/o lasts forever potentially so misrepresentation is the clear dividing line between lawful and unlawful
3. INAPPROPIATE - CA cannot step in; legislature’s job