Passing Off

Question 1

What is passing off?

Answer 1

protects one aspect of a person’s intellectual property, namely the “goodwill” in his business.

Question 2

Star Industrial Co Ltd v. Yap Kwee Kor

Answer 2

A passing off action is a remedy for the invasion of a right of property not in the mark, name or get-up improperly used, but in the business or goodwill likely to be injured by the misrepresentation made by passing off one person’s goods as the goods of another.

Question 3

Polycell Products Ltd v. O’Carroll

Answer 3

To establish merchandise in such a manner as to mislead the public into believing it is the merchandise or product of another is actionable. It injures the complaining party’s right of property in his business and injures the goodwill in his business. The person who passes off the goods of another acquires, to some extent, the benefit of the business reputation of the rival trader and gets the advantage of his advertising.

Question 4

Reddaway v. Banham: English case

Answer 4

Banham “passed off” his goods as those of Reddaway. Potential customers were thereby diverted from Reddaway to Banham and Reddaway suffered damage to his business.

Reddaway had for some years made belting and sold it as “Camel Hair Belting,” a name which had come to mean in the trade his product and nothing else. Banham began to sell belting and stamped it “Camel Hair Belting”. It was held this was likely to mislead purchasers into the belief that it was the plaintiff’s belting, and the defendant was endeavouring to pass off his goods as the plaintiff’s.

Lord Herschell said at p204 of his speech that “nobody has any right to represent his goods as the goods of somebody else”. The plaintiff was granted an injunction restraining the defendant from passing off his goods as those of the plaintiff.

Question 5

Inland Revenue Commissioners v. Muller & Company Margarine Limited : english case

Answer 5

What is goodwill?

It is a thing very easy to describe, very difficult to define. It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which 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 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 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 there.

Question 6

Good will:

Star Industrial Co Ltd v. Yap Kwee Kor: uk case

Answer 6

Goodwill, as the subject of proprietary rights, is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill the goodwill in that country perishes with it although the business may continue to be carried on in other countries.

Question 7

Erven Warnink BV v. J Townend & Sons (Hull) Limited

Answer 7

The Old Test for passing off:

(1) a misrepresentation
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

Question 8

Lord Diplock’s definition of passing off in Star Industrial was adopted by McCracken J in this jurisdiction in the case of…

Answer 8

B & S Limited v. Irish Auto Trader Limited

Question 9

Lord Diplock’s definition of passing off was approved by McGovern J in this jurisdiction in the case of

Answer 9

Allergan Inc v. Ocean Healthcare Ltd [2008] IEHC 189.

Question 10

What is the classic trinity?

Answer 10

The current 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 with the identifying “get-up”

Second, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.

Third, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Question 11

Classic trinity accepted in what Irish cases?

Answer 11

Miss World Limited v. Miss Ireland [2004] 2 IR 394

McCambridge Ltd v. Brennan Bakeries

Question 12

Plaintiff must establish goodwill

Answer 12

First, the plaintiff must establish his goodwill or reputation for a product or service, usually by demonstrating some distinctive element that identifies his goods or services in the marketplace. This element can include trade name, packaging, get- up, advertising slogan etc. and in some cases even the name of the product itself and the region where the product is produced.

Question 13

Trading outside the Jurisdiction

Answer 13

If a company recently started trading in one country, it may not be able to prove it has established goodwill. However, a plaintiff does not actually have to trade in a country in order to prove it has built up goodwill in that jurisdiction.

Question 14

C & A Modes v. C & A (Waterford) Ltd

Answer 14

or example it was proved the trade name in question was well known in Ireland even though the plaintiff had no shops in this jurisdiction. Customers would also travel to Northern Ireland or the UK in order to
purchase the plaintiff’s goods.

Question 15

Jacob Fruitfield Food Group Limited v. United Biscuits (UK) Limited,

Answer 15

or an action in passing off, based on the “get up” of the product, to succeed, it must be established that the claimants concerned have a reputation in the presentation of its product in a particular way by reference to factors such as those identified by Lord Oliver being brand name, trade description or features of labelling or packaging. It seems clear to me that he features in which any such established goodwill may rest have the potential to vary enormously from case to case. This is simply because the features which the public will identify with the product concerned will likewise vary enormously. In some cases the trade name or the brand name may be the dominant feature. In others it may be a combination of the two. In yet further cases a distinctive form of packaging may be the matter most likely to attract the public’s attention.

Question 16

McCambridge Ltd v. Brennan Bakeries

Answer 16

MacMemanin J said (at [22]) that while “as a general proposition, unique or individual features are easily judged or identified … the authorities clearly establish that a combination of different elements may give rise to a distinctive get up”. This is so even where the different elements are essentially generic, and the court will take into account “the overall impression on the observer” created by the “get up”.

Question 17

Trade name

Answer 17

A trade name is usually designed to distinguish one person’s goods or services from those of another (“Barry’s Tea”/”Lyons Tea”). Usually, a trader will register a particular name as a “trade mark” and the provisions of the Trade Marks Act 1996 will protect a person’s rights over that trade mark. An unregistered trade name or mark can only be protected by the tort of passing off. The tort of passing off also provides residual protection where a well-known descriptive word is not the subject of a trademark, such as “Figrolls”.

Question 18

C & A Modes v. C & A (Waterford) Ltd

Answer 18

the plaintiff adopted its name, C & A Modes, in 1953 and owned a number of retail stores in Britain and Northern Ireland. The well-known name and mark used on all the first plaintiff’s shops and in connection with their goods and the advertisements of their business was the symbol “C & A” which also formed part of the company’s name.

The plaintiff advertised its goods extensively in the Republic of Ireland but did not otherwise trade or conduct business there. The defendant company was incorporated in Ireland in 1972 and carried on a retail drapery business. For the purposes of its business the defendant used a large motor van with the letters “C & A” printed in large letters on its sides and those letters formed part of the name of the defendant. It was argued that the defendant’s actions in adopting the letters “C & A” was calculated to lead to the defendant’s business being confused with the plaintiff’s business. It was held that the plaintiff had goodwill in the name and symbol “C & A” in this jurisdiction even though it did not trade in Ireland. It was also held that, by associating its goods and business with those of the plaintiff, it had
been the intention of the defendant to deceive the public.

Question 19

Local Ireland Limited v. Local Ireland-Online Limited

Answer 19

More recently, claims for passing off have been taken in respect of internet domain names.

The plaintiffs alleged passing off and claimed the similarity in the names, associated domain names, get-up and logo, as well as the similarity of services being offered would lead to confusion in potential customers. Herbert J found that the plaintiff had proved its goodwill in its business name and associated domain names. Herbert J also found there was a misrepresentation in the use of the defendant of its business names and associated domain names (including “Local Ireland Online” and “Locally Irish”) as those names were “so close to the business name and domain name of the plaintiff that no sufficient or real distinction could reasonably be said to exist between them”. This was particularly so “having regard to the similarity of the relevant services” being carried on by the parties.

Question 20

Taittinger v. Allbev Limited

Answer 20

Association with a region or location can also give rise to goodwill in a product or service. For example, the term “champagne” is well known for denoting a certain superior quality drink from the region of France bearing the same name.

he defendant manufactured a non- alcoholic drink called “Elderflower Champagne”. This was held to have misrepresented the quality associated with the term “champagne” in which the plaintiff could prove goodwill.

Question 21

Reckitt & Colman Products Limited v. Borden Incorporated

Answer 21

the plaintiff packaged lemon juice in a distinctive yellow coloured lemon-shaped bottle and marketed the product as “Jif lemon juice”. The defendant marketed its product with similar packaging. The defendant was held to have proved its goodwill in the unique design of its packaging.

Packaging or “get-up” can often be another distinguishing feature of a person’s goods or services. Packaging can include a particular colour (“Kodak yellow”) or design (“Coca-Cola bottle”) as well as dimensions and materials.

Question 22

Private Research Limited v. Brosnan

Answer 22

the plaintiff published a monthly publication which listed the annual returns of companies filed in the Companies Office. The publication was sold to subscribers. The defendant was a previous employee of the plaintiff who had resigned from his employment with the plaintiff and set up a company with the intention of producing a similar publication to that of the plaintiff. The defendants circularised some of the plaintiff’s subscribers seeking subscriptions to their publication. McCracken J held there was no serious issue to be tried as to whether the defendants were guilty of passing off as the defendants were carrying on business in a distinctive manner and any confusion between the parties and their publications would be short lived as it would quickly become known that the first defendant was no longer connected with the plaintiff. It was also suggested that isolated incidents of confusion between the plaintiff’s and the defendants’ businesses did not amount to passing off, as the essence of
the action is that there must be a misrepresentation which would lead a third party to believe that the defendant’s business was that of the plaintiff.

Question 23

Coca-Cola Company v. Gemini Rising Incorporated (1972) 346 F Supp 1183

Answer 23

The misrepresentation can also relate to some association between the defendant’s products and the plaintiff’s.

The defendants imitated the plaintiff’s distinctive script when marketing T-shirts with the logo “enjoy cocaine”. This was held to amount to a misrepresentation where the plaintiff manufactured its product using the logo “enjoy Coca-Cola”. Customers could have been misrepresented into thinking there was an association between the plaintiff’s product and the defendant.

Question 24

Allergan Inc v. Ocean Healthcare Ltd Misrepresentation and confusion

Answer 24

there was sufficient similarity between the two products to cause confusion in the minds of the public. The plaintiff had a trademark in the name BOTOX and the defendant traded its product under the name BOTOINA

“Whether two words are used or a compound word is used, if the emphasis is clearly on the first word or prefix in the compound word, then it seems to me that that is the predominant sound and the visual impact of the Mark.”

On one level it could be said that BOTOX and BOTOINA are quite different insofar as BOTOX consists of a very small amount of powder contained in a glass vial, whereas BOTOINA is a serum or cream in a glass vial. But there are many similarities in the way the products are presented. BOTOX is contained in powder form in a minute quantity in a glass vial which is then diluted with solution, before being drawn off by syringe and injected. BOTOINA is a serum or cream in a vial which is drawn off into a syringe- like applicator and applied to the wrinkles or lines on the face which are to be treated. Both products are used for the reduction or amelioration of wrinkles or lines on the face. In the mind of persons seeking such treatment, BOTOX has a well established reputation and there can be no doubt that BOTOINA seeks to capture the same market since it is presented as a cosmetic for the treatment of wrinkles. There is, therefore, an obvious link between the two products.

There must be a significant likelihood of confusion before a misrepresentation will be found.
that rather than the similarities being “dissected for the purposes of a comparison”,

“a global
view should be taken of the manner in which the product is presented to the public”.

Question 25

Adidas Sportschuhfabriken Adi Danker KA v. Charles O’Neill & Company Limited

Answer 25

Adidas had commenced trading in 1947 and used a distinctive design of three diagonal stripes on its sportswear. In 1976, Adidas began manufacturing its products in Ireland, which brought it into competition with the defendant. In 1965 the defendant began putting stripes on its products which evolved into a similar three strip design.

Evidence was given at the trial that the three-stripe design had been used by manufacturers of sportswear in many other countries, but that Adidas was the only manufacturer who exclusively used the particular arrangement of light-coloured stripes of equal width against a differently coloured background.

It was held by McWilliam J that the plaintiffs had failed to establish essential reputation in Ireland in relation to the three-stripe design and that no confusion had been caused by the defendant’s use of the three-stripe design. On appeal the Supreme Court held that the use of the stripes of varying colours and numbers on sports garments was a fashion in the trade and that the defendants, in resorting to fashionable demands, had not attempted to deceive or pass off and had in fact not done so.

Question 26

Morning Star Cooperative Society Limited v. Express Newspapers Limited

Answer 26

The misrepresentation must have been made to a customer or a potential customer. Actual confusion does not need to be proved: objective likelihood of confusion is sufficient. The courts recognise that consumers often do not examine products in minute detail and can often purchase products based on overall impression. However, when analysing the likelihood of confusion it has been noted that the average customer is not a “moron in a hurry”,

Question 27

Damage and Passing Off:

Answer 27

The essence of the tort of passing off is to prevent a person’s business goodwill being misappropriated so that he suffers damage to his business, usually, though not invariably, through loss of customers. There must be a reasonably foreseeable
likelihood of injury to the plaintiff’s business. Damage is usually proved by showing customers were confused, misled or deceived in relation to the goods or services in question.

Question 28

Falcon Travel Limited v. Owners Abroad Group plc

Answer 28

held that it was the appropriation of goodwill which constituted the damage necessary to sustain a passing off action. In that case, sufficient damage was proved as the plaintiff’s reputation was being “submerged in that of the defendant’s” as a result of the use of confusing names.

Question 29

McCambridge Ltd v. Brennan Bakeries

Answer 29

MacMenamin J said at paragraphs 51 and 63 that it is not necessary to produce evidence that “any specific person (or numbers of people) were actually deceived provided the goods are marketed in such a way that they are ‘calculated to deceive’. The test is not dependent on numbers. … The tort is complete when the reputation is damaged.

Question 30

Remedies and Passing Off

Answer 30

Remedies for passing-off in include damages and injunctions. One common stop- gap remedy in passing off actions is an interlocutory injunction. An interlocutory injunction is an order of the court pending the final determination of the issues in dispute at the trial of the action and is sought at an early stage. Where an injunction is granted, it can restrain the defendant from engaging in passing off until the trial is over and final orders are made.

Question 31

Campus Oil v. Minister for Industry and Energy (No. 2)

Answer 31

he test for the granting of an interlocutory injunction was set out by Keane J

The court must consider three matters:

(1) that the plaintiff has raised a fair and bona fide question to be tried;
(2) damages must not be an adequate remedy and
(3) the “balance of convenience” must favour the granting of an injunction.