Passing Off

Question 1

Reckitt and Colman

Answer 1

Jiff lemon case. Reference to cases is of no real assistance, no general principles to passing off. Passing off requires goodwill, misrepresentation and damage (or likely damage)

Question 2

JG v Samford

Answer 2

1854 decision which begun passing off

Question 3

Perry v Truefitt

Answer 3

“A man is not to sell his own goods under the pretence that they are the goods of another man”

Question 4

IRC v Muller and Co’s Margarine

Answer 4

Attractive force that brings in custom = goodwill

Question 5

Evian

Answer 5

Descriptive words can be goodwill if they have become distinctive or developed secondary meaning

Question 6

Tresor

Answer 6

Cannot say that your product is like a well known brand

Question 7

Maxwell v Hogg

Answer 7

Mere reputation, without customers, is not sufficient.

Question 8

Starbucks v bSkyb

Answer 8

Supreme court - actual business activity is required, reputation alone is not sufficient. Starbucks operated NowTV in Asia, UK customers accessed services, used services on flights etc. None of them were paying from UK for Asian service. No license to broadcast in UK. Sky launched Sky Now, same branding as Now TV. Did Starbucks have goodwill? No, needed customer base in relevant jurisdiction.

Question 9

BBC v Talbot

Answer 9

BBC launching new product, successfully brought action and got injunction against Talbot even though the product had not yet launched, goodwill had built up.

Question 10

Crazy Horse

Answer 10

No customer base in the UK, so no passing off.

Question 11

Cipriani

Answer 11

Family had hotels in Venice, one family member opened bar in London with the same name, High Court decision allowed passing off, Arnold - on the basis that UK customers book online to stay in Venice hotel. Lloyd - direct bookings test may be increasingly outmoded. High court - if online bookings are sufficient for goodwill, might be giving too much protection?

Question 12

Spalding Bros v Gamage

Answer 12

Sold old footballs as if they were new ones - misrepresentation as to quality of goods/services.

Question 13

Louis Vuitton v My Other Bag

Answer 13

Bags were not infringing, parody recognised under US law, but UK doesn’t have recognition for parody under passing off.

Question 14

Irvine v Talksport

Answer 14

Picture created where it looked as if Eddie Irvine was listening to Talksport, could passing off protect image rights? Yes. Some evidence that Irvine’s close associates were confused by the photo.

Question 15

Abba case

Answer 15

Sold paraphernalia, didnt have group’s image on all of the items, no misrepresentation as customers wouldn’t be confused, they would realise the group did not consent to the items

Question 16

KV v Nordic Salmon

Answer 16

Used phrase “pret a manger” in advert, not passing off as words used in actual meaning

Question 17

Rhianna v Topshop

Answer 17

passing off, suggestion of relationship between Rhianna and Topshop. She collaborated with clothing brands to create clothing line, but didn’t consent to her own image being put on clothing. Topshop tried to benefit from collection with her in many ways (operating competition on website with prize as style day with Rhianna, and she had attended Oxford Street Topshop) – these connections were substantial enough to prove that Topshop were using this connection to sell tshirts. On one hand – not passing off, using famous person’s picture on products (no image rights, not unlawful), however – misrepresentation proven because Rhianna has large and loyal fan base and images from her album (as used on products) were very well known, for these reasons customers would expect connection.

Question 18

Advocaat case

Answer 18

Loss of sales was suffered when a cheaper version of Advocaat was put on the market. A group of Dutch traders collectively had goodwill in “advocaat”. Held that damage is not only suffered through loss of sales but also being associated with an inferior product and traders either individually or as a class could be protected from deceptive use of their name by competitors.