Passing Off Flashcards
Passing off
Pertains to situations where customer is misled as to origin of goods/services so that p’s business suffers. This tort does not require proof of deception or misrepresentation and cts will infer deliberate deception or misrepresentation when the similarities are overwhelming i.e. in product design, name, style and marketing campaigns.
McCambridge v Brennan Bakeries outlines the test for passing off as
- Reputation/goodwill in the service/product e.g. brand name/logo; misrepresentation causing confusion as to the offending service/product and p’s service/product; and
- Damage to p’s goodwill or reputation by virtue of such confusion is established.
Reputation/goodwill:
Look to the source of the goodwill: logo, name, packaging etc. and in what location.
Crazy Horse Saloon case
Owners of a night spot were refused relief where their bar was in Paris, but the offender was in London.
C&A modes v C&A Waterford Ltd
Irish cts have however accepted that goodwill can cross borders: due to the modern practice of instant communication it is easier to acquire
goodwill in a jurisdiction even though they do not trade e.g. through advertising.
Guinness Ireland v Kilkenny Brewing
Plaintiff argued had built up goodwill through word ‘Kilkenny’ and red ale product.
The product had been available since 1987, initially in Germany but subsequently throughout Europe.
It was launched on the Irish market in July 1995. The Irish launch was accompanied by a very intensive promotional campaign, costing £1.1 million initially. The campaign was successful and the measure of its success was that between July 1995 and December 1995 the sales volumes achieved had a retail sales value of £1.8 million.
By May 1996, the product was in 841 public houses in Ireland and had generated a further £2 million in sales.
The evidence established that even before the launch patrons in licenced establishments in Ireland asked for the product, which in the market was just known by the name “Kilkenny” and was ordered as a “pint of Kilkenny”.
Muckross Hotel Ltd v Randles
Geographic place name could acquire a secondary meaning in relation to a particular product or service. On the evidence, the Court was satisfied
that the name ‘The Muckross’ had a considerable value, which was the number of people who knew it and knew what it stood for; which was of a similar nature to goodwill.
Coca Cola v AG Barr & Co
Plaintiff’s distinctive bottle shape was held to be iconic and was based on advertising and consistency of design.
Confusion Cases:
see following slides
McCambridge
Must be reasonably foreseeable that p’s goodwill will be damaged considering customer perception and imperfect recollection
Allergan Inc & Anor v Ocean Healthcare Ltd
Plaintiff alleged confusion was created between their botox and an anti wrinkle cream made by the defendant. The court considered: (i) visual; (ii) aural; and (iii) conceptual similarity. The Judge was of the view that the Defendant’s get-up was such as “to enable the defendant to piggy-back on the goodwill which has been established in the product Botox.”
O’Neill’s Irish International Sports Co. v O’Neill’s Footwear drying Co
The Defendant was prevented from
using his name in respect of the marketing of his footwear dryer. He had been selling the product in a show-box shaped package, with “O’Neill’s Footwear Dryer” written on it. Having reviewed the authorities, the Court was satisfied:
“… that the Defendant had presented its goods to the public in such a manner as to be able to take advantage of the reputation and goodwill generated by the Plaintiffs
Reckitt and Coleman Products Limited v. Bordan Inc
Jif lemon case where court was satisfied that plaintiff had built up goodwill in the shape of the product. Whilst distinctive packaging is important, it does not extend tothe product itself.
L’Oréal SA v Bellure NV
This case concerned the smell of a perfume which was held to be unable of being trademarked however the defendant had breached trademarks in that case, in relation to the smell of the perfume however no action could be taken.
United Biscuits Ltd v Irish Biscuits Ltd
The Plaintiff was unsuccessful in seeking to apply the law of passing off to the shape of its “Cottage Creams” biscuits. The Defendant was the maker of “College Creams”. The packaging used by each was quite different and distinct from one another, but the biscuits were very similar once out of the package. Kenny J. held that the latter point was irrelevant when both products were sold in packages.
Figroll case
They failed on the claim of passing off but succeeded in respect of their trademarks being breached.
McCambridge evidence in the Supreme Court
In assessing packaging, the way in which a product appears on a shelf can also be taken into consideration. In McCambridge Ltd v Joseph Brennan Bakeries the Supreme Court included photographs of super market shelves with the Plaintiff and Defendant’s products side by side in the distributed judgment.
Irvine v Talksport
Edited images in a brochure misled people into thinking Eddie Irvine had endorsed the radio station. While the images had been licensed they had been edited to try and show an endorsement which did not exist between Irvine and the station. The plaintiff was awarded damages.
Fenty v Arcadia
Rihanna image used on t-shirts, court held that misrepresentation always depends on the relevant market and the perception of customers. Having not authorised the sale of the t shirts Rihanna was successful in her claim of passing off.
Harrods v Harrodan School
Department store was unsuccessful in their passing off attempt because the lack of common course of trade. A balancing act, it seems will always be required by courts. P’s often use survey evidence as an essential element to prove both goodwill and reputation and where a product is likely to cause confusion.
Damage cases
Normally the diversion of sales or the risk of injurious association
Tattinger v Albrew
Damage recognised was a form of distinction of the p’s brand.
Falcon Travel v Owners Abroad Group plc
Confusion over name ‘Falcon Leisure Group’ confusion was so much so that goodwill had been appropriated by d. Rather than grant an injunction, the Court felt that an award of damages was more appropriate, and
awarded the Plaintiff a sum necessary to enable the plaintiff to mount an advertising or public relations campaign which would explain to the public and people in the travel agency business the difference between the parties. Finally, it is worth noting that the Supreme Court recently
found that the remedy of account of profits was available in the context of the common law action for passing off in McCambridges v Brennans,
Galway Free Range Eggs
Applied for an injunction preventing a competitor, Hillsbrook Eggs from selling their eggs under the name of “O’Briens of Galway Free Range Eggs”. GFRE claimed passing off as there was likely to be confusion in the minds of the public concerning their eggs. HC refused holding that p had failed to prove misrepresentation leading to confusion by d’s and found consumer survey evidence to this effect of limited value. Reversed in COA: as p had established that d had engaged in passing off and were entitled to an injunction to protect its good name and reputation. Goodwill: COA accepted that p had established goodwill in the use of the word “Galway” in connection with the words “free range eggs”. Confusion: COA held that the appropriate test to be applied was whether the public were likely to be victims of confusion arising from d’s use of the words “Galway free range eggs” in its packaging and found that HC had erred in failing to apply this “confusion” test once it found that p had failed to find misrepresentation leading to confusion. HC should have had regard for the survey evidence adduced by p and that it was permissible to admit survey evidence; it was then a matter for ct as to how much weight was given to that evidence. Damage: COA held that it was not necessary to show that p had suffered damage, but it was the appropriation of goodwill which was sufficient to establish damage for the
purposes of the 3rd part of the test and to obtain the remedy-an injunction-sought.
