Passing Off Flashcards
What must a plaintiff show in order to succeed in a passing off action? (Reckitt and Colman v Borden, House of Lords)
That:
(1) There is goodwill attached to the plaintiff’s goods or services in the mind of the consuming public by virtue of the goods or services’ identifying get-up.
(2) The defendent has made a misrepresentation to the public which was likely to lead the public to believe that goods or services offered by the defendant were the plaintiff’s goods or services.
(3) The plaintiff has suffered damage or is likely to suffer damage because of the erroneous belief caused by the misrepresentation.
Reckitt and Colman v Borden (1990, House of Lords)
What is goodwill?
(1) A reputation attached to a trader’s goods or services,
(2) in the mind of the puchasing public,
(3) by association with the identifying get-up,
(4) such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.
Reckitt and Colman v Borden (1990, House of Lords)
What was Imperial v Philip Morris (1984, High Court) about?
(1) Imperial marketed cigarettes in a black pack with gold lettering and the ‘JPS’ ‘John Player Special’ brand. Philip Morris introduced cigarettes in a black pack with gold lettering. Imperial sued for passing off.
(2) There was evidence of association, in the consumer’s mind, between a black and gold pack and the John Player brand.
(3) However, there were other brands of cigarettes sold by Imperial which also used a black pack and gold lettering.
(4) Therefore, a black pack with gold lettering was not distinctive of John Player Specials.
(5) Therefore, Imperial’s goodwill did not attach to a black pack with gold lettering.
What was My Kinda Bones v Dr Pepper’s Stove Co. (1984, High Court) about?
(1) Plaintiffs announced a new restaurant under the name “Chicago Rib Shack”. Defendant had been planning to launch a restaurant under the name “Dr. Pepper’s Manhattan Rib Shack”.
(2) Plaintiffs substantially advertised the Chicago Rib Shack.
(3) However, because the Chicago Rib Shack had not yet launched, customers could not have assessed the merits of the goods or services for themselves.
(4) Therefore, there could be no reputation in the market caused by recognisable and distinctive qualities of the goods or services.
(5) Therefore, there was no goodwill.
What was BBC v Talbot Motor Company (1980, High Court) about?
(1) BBC was about to launch a new traffic information service under the name “Carfax”. Talbot Motor started marketing spare parts for vehicles under the same name.
(2) BBC heavily advertised the Carfax system, such that a significant part of the public knew about the name Carfax as distinctive of the BBC’s system.
(3) As a result, the BBC had a reputation for the traffic radio system in relation to the name Carfax, although they had not yet launched.
What was Colgate v Markwell (1989, Court of Appeal) about?
(1) Colgate made toothpaste in the UK and in Brazil; the Brazilian version was of lower quality. Markwell imported the Brazilian version in the UK. Colgate sued for passing off.
(2) The UK consuming public would have believed that the Brazilian version sold by Markwell was of the same quality as the UK version.
(3) Therefore Markwell made a misrepresentation that the goods it sold were of the superior UK quality.
What was Harrods v Harrodian School (1996, Court of Appeal) about?
(1) Harrods, the famous department store, tried to stop a third party opening a school under the name “Harrodian School”.
(2) This gave the public the impression that the school was sponsored or financially supported by Harrods.
(3) However, this did not go so far as to lead the public to believe that the services of the “Harrodian School” were those of Harrods.
(4) Therefore, there was no operative misrepresentation.
What was Bristol Conservatories v Custom Built (1989, Court of Appeal) about?
(1) Bristol Conservatories made conservatories. Custom Built showed its customers an album of sample pictures of its products. Some of these were in fact pictures of conservatories produced by Bristol Conservatories.
(2) Therefore, the public which saw the photos would have believed that by ordering a conservatory from Custom Built, they would be obtaining a conservatory designed by the people who had designed the conservatories in the photographs.
(3) Thus, the public was led into believing that goods and services offered by the defendant were the plaintiff’s goods or services.
What was Robyn Rihanna Fenty v Arcadia Group Brands (Topshop) (2015, Court of Appeal) about?
(1) Rihanna had had a business relationship with Topshop where she was used to promote Topshop’s goods. Topshop, without her involvement, marketed a t-shirt bearing her photo taken during an official video shoot.
(2) There was evidence that the consuming public knew of Rihanna’s involvement with Topshop, and would therefore have assumed that the use of her image on the t-shirt was approved of and authorised by her.
(3) This would have made the t-shirt more attractive to buy and influenced the decision of the public to buy it. (4) Therefore, there was a misrepresentation that had led the public into believing that the Topshop t-shirt was in fact endorsed by Rihanna.
What kinds of damage have been recognised by the courts, and which ones have not?
(1) Loss of trade / profit: yes
(2) Loss of licensing revenue: yes
(3) Damage to reputation: yes, as people who buy misrepresented goods are disappointed by their lower quality (Warninks v Townend), but can difficult to quantify (Ninja Turtles)
(4) Dilution: for simple passing off, no, because by nature is not caused by confusion (Harrodian School). But for extended passing off, yes (Warninks v Townend).
What is extended passing off?
If goodwill is not held by a single commercial source, but collectively held by several traders who all manufacture a particular type of product to specification, such as an identifying sign is associated to the class of traders in the consuming public's mind. e.g Champagne or Advocaat.
What was Warninks v Townend (1979, House of Lords) about?
(1) Warninks was one of several producers of “Advocaat” liquor. Townend marketed an egg flip under the name “Keeling’s Old English Advocaat”.
(2) The name “Advocaat” was understood in England to denote a distinct kind of drink.
(3) Warnink’s product had gained reputation under the name “Advocaat”. (therefore Warnink held goodwill in the name “Advocaat”)
(4) Members of the public bought Townend’s drink believing it was advocaat. (therefore there was a misrepresentation that deceived consumers into believing that
(5) This took consumers away from Warninks (trade loss) and debased the reputation of the name “Advocaat” (loss of reputation), and caused dilution of the term “Advocaat” that had been relied on by the Dutch traders.
What was L’Oreal v Bellure (2007, Court of Appeal) about?
(1) L’Oreal was selling perfumes. Bellure sold smell-alikes in different packaging and under different names.
(2) The smells of l’Oreal’s fragrances were well-known.
(3) However, there was no evidence that anyone was misled by the similarity of fragrances.
(4) It was possible that Bellure’s resellers were capable of making misrepresentations.
(5) However, the products themselves were not themselves misleading (by their name or packaging) and so were not “instruments of misrepresentation”.
What were the criteria for passing off given in Warninks v Townend (1979, House of Lords)?
(1) a misrepresentation
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of another trader (i.e. this is a reasonable forseeable consequence) and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought.
