8. Passing Off Flashcards
requirements for passing off
goodwill
misrepresentation
damage
IRC v Muller
goodwill: “the attractive force that brings custom”
Reddaway v benham
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
United Biscuits v ASDA
GW in get up and packaging?
MORE POSSIBLE in COMMON HOUSEHOLD GOODS (little attention paid to words)
Hodgkinson v Wards
C must show public recognises get up to indicate C’s goods
NO GW here - decorative, not indicative of origin
Edge v Nicholls
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
Cadbury v Pub Squash
there can be goodwill in advertising style in principle
BUT in practice this can be hard to show
Warnick v Townsend
“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
Bollinger v Costa Brava
spanish “champagne”
GOODWILL IN CHAMPAGNE
(misrepresentation is as to quality)
Vine Products v Mackenzie
British “sherry”
GOODWILL IN SHERRY
Diago v Intercontinental
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)
Anheuser Busch v Budvar
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)
Peter Waterman v CBS
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)
Hotel Cipriani
CA confirmed Peter Waterman
- presence of customers is enough to show goodwill
- BUT caution re: e-commerce
Spalding v Gamage
misrepresentation as to quality
- can’t represent his goods and services as C’s
- C did not put his name to this quality
Harrods v Harrodian School
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)
Irvine v Talksport
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
Fenty v Arcadia
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
Tattinger v Allbet
ELDERFLOWER CHAMPAGNE
gw: champagne
misrep: labelling of d’s product (artificial)
damage: blurring/erosion of C’s sign
L’Oreal v Bellure
passing off MUST have misrepresentation
Jacobs LJ - rule of no misrepresentation needed is:
- UNNESSARY - art.10bis does not require more than prohibition on deception
- 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
- INAPPROPIATE - CA cannot step in; legislature’s job
