Passing Off Flashcards
What is the main case that state the 3 main requirement for passing off?
Reckitt and Coleman v Borden
What are the 3 main requirements for passing off?
- Good Will
- Misrepresentation
- Damage
What is good will, and how does it usually manifest itself? Case?
Good will is the attractive force that brings in custom
usually manifest itself in the form of words / name, e.g. Gucci
Eastman Photographic Materials v John Griffiths Cylce Corporation
Which case concerns words with secondary meaning? What rule does it establish?
Reddaway v Banham
trader needs to show that the words have acquired a secondary meaning
descriptive words must ALSO be indicative of source - need to have built up public association to do this
good will: other considerations? (4)
get up / appearance
advertisement
location
collective goodwill
Good will: Which cases concern the get up / appearance of goods?
Reckitt & Coleman v Borden
Modus Vivedi v Keen
Sydneywide Distributors v Redbull
Good will: What is the main rule concerning get up / appearance of the goods? Case?
there must be some special factor that means customers attach particular importance to appearance of goods
Reckitt & Coleman v Borden
concerned jif lemon
D produced container in same style and shape as the jif lemon
Good will was establish because when consumers selected the container, they did so on the basis of its appearance; they thought it was a jif lemon because it had the appearance of a jif lemon
Good Will: describe vivedi v Keen case
C and D both produced and sold red and white gas cannisters
although Ds cannister showed latin script, court held the average consumers from Hong Kong would not understand this
therefore seen as having the same appearance
Good will: describe sydneywide distributors v Redbull
D roduced cans that looked the same as Redbull
Held that although the trademarks were different, when the cans were placed in the fridge, the TMs may not be seen my consumers
therefore, consumers had to rely on appearance of the cans = passing off
Which cases concern good will in advertisements?
Cadbury Schweppes v Pub Squash
Telstra v Royal & Sun Alliance insurance 2003
What is the main rule concerning goodwill?
good will must attach itself to something
Facts of Cadbury Schweppes v Pub Squash?
Advert for lemonade had a theme of “manliness”
D produced similar advert
C argued that goodwill attached to the advert theme
held: can do this in theory, but in this case good will did not attach to the advert theme, because the theme “manliness” was too vague and not specific enough
Facts of Telstra v Royal and Sun Alliance Insurance 2003
In Cs advert, man made calls from yellow pages to find car replacement
when this was copied by the D, C argued good will attached to the advert theme
held: good will attached to advert theme here, because C could describe in better detail the theme for which they were seeking protection
Good will: Which case concerns location? What rule is established in this case?
Anheuser-Busch v Budejovicky budvar
claimant can only have goodwill in the UK, if the good is traded in the UK
in this case, owners of US and Czech beers sued each other for passing offf
failed because neither were traded in the UK - “spillover goodwill” from british tourism in the US and Czech Republic insufficient
Which cases concern collective goodwill?
Chocosuisse des Fabricants des Chocolat v Cadburys
Fage v Chobani
Describe Chocosuisse des Fabricants des chocolats v Cadbury
manufacturers of Swiss chocolate sued Cadburys for using the term “swiss” to describe their chocolate, when it was not made in Switzerland
swiss chocolate manufactures enjoyed collective goodwill over swiss chocolate
Describe Fage v Chobani
D sold yoghurt and named it greek yoghurt
greek yoghurt however is considered by the average consumer to be made in Greece, and according to Greek methods
the yoghurt in this case was neither made in Greece, nor by greek methods - the average consumer would not have known this
What is misrepresentation?
Ds use must move consumers to mistakenly buy their product instead of the claimants
What are the two types of misrepresentation?
- Misrep as to source
2. Misrep as to quality
What are the main cases concerning Misrepresentation as to quality? (3)
AG Spalding v AN Gamadge
Rolls Royce v Zanelli
Hodge Clemco v Airblast
Describe AG Spalding v Gamadge
C produced footballs called “orbs”
these were bad quality, so reissued as “the new and improved orbs”
D sold footballs, called “the new and improved orbs” but actually sold the old consignment - this was held to be passing off
Describe Rolls Royce v Zanelli
D bought second hand rolls royce and reconditioned them
sold them as a new brand of rolls royce
this was passing off because customers thought they were buying a NEW rolls royce
Describe Hodge Clemco v Airblast
D produced safety vizors which he said fitted safety uniform
vizors did fit, but still did not meet safety standards
Which cases concern character merchandising? (3)
Mirage Studios v Counter Feat Clothing
Hogan v Koala Dundee Party
Fenty v Arcadia
What is the main rule concerning character merchandising? Case?
Hogan v Koala Dundee Party - Australian case (not binding)
Passing off applies to celebrities and fictional characters
this Australian case law was affirmed by
Mirage Studios v Counter Feat Clothing
means same rule applies in english law
Describe Fenty v Arcadia Group
Rihanna successfully sued Topshop for using unauthorised photos of her on T shirts
Difference between passing off and inverse passing off?
passing off - D pretends their own goods are Cs
inverse passing off - D pretends Cs goods are their own
Which case concerns inverse passing off? What are the facts?
Bristol Conservatories v Conservatories Custom Built
D copied Cs portfolio of conservatory photos and presented it as his own to customers
held that this was still passing off despite chain of confusion being reversed
What is the main limitation to misrepresentation? Which cases support this?
Shopping habits of consumers must have changed as a result of the misrepresentation
Harrods v Harrodian School
Mcillhenny v Blue Yonder Holdings
What are the facts of Harrods v the Harrodian School?
Harrods sued the Harrodian school for copying its name
Court of appeal held that parent would not send their child to the school on the basis of its name
therefore consumer behaviour did not change, and no passing off
What are the facts of Mcillhenny v Blue Yonder Holdings?
D named their advertising service Tobasco
Makers of Tobasco sued advertising service company
held that nobody would use the advertisement service because tobasco sauce came to mind
therefore no passing off
