Passing Off

Question 1

Essence of passing off?

Answer 1

One trader represents goods/ services as to those of another, so as to likely mislead the public & involve appreciable risk of detriment to plaintiff

Question 2

What is tort designed to protect?

Answer 2

Plaintiffs proprietary interest in his goodwill rather than protect interests of consumer
No defence to say goods better or cheaper

Question 3

Definition?

Answer 3

Budd J in Polycell products v Ocarroll 1959: to establish merchandise as to mislead the public into believing it is merchandise of another is actionable. A person who passes off goods of another acquires the benefit of the business reputation of his rival & gets advantage of his advertising

Question 4

Essential Elements?

Answer 4

Goodwill / reputation
Confusion / misrepresentation
Damage

Question 5

Essential elements: goodwill/ reputation?

Answer 5

P must show he suffered damage to goodwill & must prove he actually built up goodwill in product.
Box tv v box magazine 1997 (word tv not sufficiently connected with P’s activities)

Question 6

Goodwill: Narrow view?

Answer 6

P cannot have suffered damage to business if not already trading in same jurisdiction as imitator: no customers, no loss.
Budweiser 1984 (never sold beer in uk)
Adopted in bernadin v pavilion properties

Question 7

Goodwill: Wider view?

Answer 7

If P has developed reputation in eyes of consumer even not trading in jurisdiction such that consumer would be confused by imitators actions then P has action
C&A Modes v C&A Waterford (goodwill does not stop at frontier)

Question 8

Essential Elements: Confusion / misrepresentation?

Answer 8

D must have confused C in some way.

Test: enough that D’s representation could foresee damage to P’s business & goodwill.

Proof on intent to deceive not necessary, fact that careful observer might not be mislead does not justify misrepresentation (mcmansmin in Mc Cambridge v Brennan)

Question 9

Confusion Examples: Names?

Answer 9

C&A Modes

Question 10

Confusion examples: packaging?

Answer 10

McCambridge v Brennan Bakeries
HC: importance of C’s first impression
SC: Actual damage not required for passing off - damage to GW suffices

Question 11

Confusion examples: Design?

Answer 11

Proving is challenging / claim fails without evidence of likely confusion
Adidas v Oneils (copying design / trend not PA if goods sufficiently distinguished)

Question 12

Confusion examples: use of own name?

Answer 12

Trader cannot use own name to exploit more famous competitor
Dickson & sons (D stopped from using sons)
O’neills IIS v Oneills footwear drying (injunction granted for misleading use of oneils)
Jameson v Irish distillers (changed products name)

Question 13

Confusion examples: advertising?

Answer 13

P must show clear link between product & advertsing
Allergen Inc v Ocean Healthcare (cream advertised with syringe like applicator)

Question 14

Essential Elements: Damage?

Answer 14

P must prove D damaged sales
Falcon Travel v Owners abroad 1991 (similar name, caused confusion, no malice / harm found. Damages awarded for advertising)

Question 15

Damage: Rihanna case?

Answer 15

HC held PA due to confusion about approval.
Key factors included past associations & distinctive nature of photo
D appeal dismissed setting precedent for protecting celebrity rights

Question 16

Interlocutory injunction?

Answer 16

P must show irreparable damage if not granted
Not stringently applied - polycell v ocarroll: injury would be material & not adequately remedied by damages. No one can tell what damage will result, impossible to prove what customers are lost
DSG retail: fact customers may buy competing product gives rise to risk of uncompensatable damages to goodwill of P