passing off. Flashcards
What is “passing off” and what does it protect?
Passing off is when one business misleads consumers into thinking its product comes from another, more established brand. It protects a brand’s reputation, or “goodwill,” and prevents businesses from unfairly exploiting another’s market recognition.
Key Case: Reckitt & Coleman Products Ltd v Borden Inc [1990] (the ‘Jif Lemon case’). The court ruled that Jif had built up goodwill around its lemon-shaped packaging, and Borden copied it, causing confusion.
What are the types of passing off?
The two main types of passing off are:
Get-Up Passing Off: Copying the overall appearance or design of a product, like packaging.
Name Passing Off: Using a name too similar to a famous brand to cause confusion.
Key Case for Get-Up Passing Off: McCambridge v Brennan’s Bread [2012] - McCambridge sued for Brennan’s Bread copying their packaging design.
Key Case for Name Passing Off: Miss World Limited v Miss Ireland Beauty Pageant Limited [2004] - Miss World sued over the use of a name too similar to “Miss World,” causing confusion.
What are the three main elements a claimant must prove in a passing off case?
The claimant must prove:
Goodwill: The brand has a strong reputation among consumers.
Misrepresentation: The defendant’s actions cause confusion or mislead consumers.
Damage: The claimant doesn’t have to prove actual damage, just that harm is likely due to consumer confusion.
Key Case for Goodwill: Reckitt & Coleman Products Ltd v Borden Inc [1990] - The court ruled Jif had built up goodwill through its lemon-shaped packaging, even without a trademark.
What is “Goodwill” in the context of passing off, and how is it proven?
Goodwill refers to the reputation and consumer recognition a business has built over time. It can be based on product design, name, or logo.
Key Case on Goodwill: Reckitt & Coleman Products Ltd v Borden Inc [1990] (the ‘Jif Lemon case’) - Jif’s lemon-shaped container had acquired secondary meaning and was recognized by consumers, leading to passing off.
What is “misrepresentation” in passing off, and how does it relate to the defendant’s actions?
Misrepresentation occurs when a defendant’s actions (like using similar packaging or names) create confusion among consumers, leading them to believe the product comes from the claimant.
Key Case for Misrepresentation: McCambridge v Brennan’s Bread [2012] - The court found Brennan’s Bread copied McCambridge’s packaging, causing confusion.
How can a claimant prove “damage” in a passing off case?
A claimant can prove damage by showing that the defendant’s actions are likely to harm their brand’s reputation or result in financial loss. Actual damage doesn’t need to be shown; notional damage is enough.
Key Case on Damage: McCambridge v Brennan’s Bread [2012] - The court ruled that McCambridge didn’t need to show actual financial loss, just that the wrongful conduct could harm its reputation.
What are the two types of damage in passing off?
Pecuniary damage: Financial loss, like lost sales or customers.
Non-pecuniary damage: Harm to the reputation or goodwill of a brand, even if there’s no direct financial loss.
Key Case for Pecuniary Damage:
Tommy Hilfiger v. McGarry (2009)
Issue:
Tommy Hilfiger sued McGarry for passing off, claiming McGarry’s clothing brand was too similar to Tommy Hilfiger’s, confusing customers into thinking they were buying Tommy Hilfiger products.
Tommy Hilfiger has a strong brand reputation.
McGarry used similar branding, causing confusion.
The court ruled in favor of Tommy Hilfiger, stating McGarry’s actions misled customers.
Outcome:
McGarry was ordered to stop using branding that resembled Tommy Hilfiger’s marks.
Key Case for Non-Pecuniary Damage: Taittinger v Allbev [1993] -
Issue:
Taittinger, a famous champagne brand, sued Allbev for passing off after Allbev sold sparkling wine under the name “Taittinger,” causing confusion.
Key Points:
Taittinger had a strong reputation.
Allbev used the name “Taittinger” for a different wine, misleading customers.
Outcome:
The court ruled in favor of Taittinger, stating Allbev’s use of the name harmed Taittinger’s reputation.
What is an interim injunction, and how is it used in passing off cases?
An interim injunction is a temporary court order that stops the defendant from continuing the wrongful act until the final judgment. It’s granted to prevent further harm while the case is being decided.
Key Points:
The court checks if there is a valid legal issue.
The court evaluates if the plaintiff can be compensated with money.
The court decides if it’s urgent to stop the defendant’s actions.
Example: McCambridge v Brennan’s Bread [2012] - The court granted an interim injunction stopping Brennan’s from using similar packaging before the case was fully decided.
What can the court do later in a passing off case after granting an interim injunction?
After granting an interim injunction, the court can:
Order the delivery or destruction of any deceptive goods.
Assess damages or order the defendant to pay the profits made from selling deceptive goods.
Grant a permanent injunction to stop the defendant from using the misleading name or logo permanently.
Key Case for Permanent Injunction: McCambridge v Brennan’s Bread [2012] - The court issued a permanent injunction after finding that Brennan’s copying of the packaging could harm McCambridge’s reputation
. What is the difference between Get-Up Passing Off and Name Passing Off?
Get-Up Passing Off involves copying the visual look or design of a product, like its packaging or style.
Name Passing Off involves using a name that’s too similar to a famous brand’s name, leading to consumer confusion.
Example of Get-Up Passing Off: McCambridge v Brennan’s Bread [2012] - Brennan’s copied McCambridge’s bread packaging.
Example of Name Passing Off: Taittinger v Allbev [1993] - Allbev used “Taittinger” for sparkling wine, which could mislead consumers into thinking it was champagne from Taittinger
