Passing Off Flashcards
What was the definition of passing off outlined in Reckitt & Coleman Ltd v Borden Inc [1990] (Jiff Lemon)?
Lord Oliver set out three basic elements a claimant must establish in order to succeed in an action for passing off:
(i) Goodwill or reputation is attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up”
(ii) The defendant made a ‘misrepresentation’ that is likely to deceive; and
(iii) They have suffered, or are likely to suffer, damage as a result of the defendant’s misrepresentation.
This is known as the classic trinity.
What was the definition of passing off outlined in Warnink v J. Townend [1979] AC 731 (Advocaat)?
FACTS: the defendant claimed that his goods are the goods of a limited class of traders, to which the defendant does not belong. This is known as the extended form of passing off.
HELD: Lord Diplock identified five characteristics which must be present in order to create a valid cause of action for passing off:
(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 (in the sense that this is a reasonably foreseeable consequence); and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
Lord Fraser also identified five criteria. These are generally complementary to those of lord Diplock, but emphasize the importance of goodwill subsisting in England.
What are the 3 situations in which a foreign trader can establish goodwill?
The passing off cause of action provides protection to goodwill within the UK (territoriality principle). A foreign trader has to show that he has established a communication mechanism of goodwill within the UK. Mere reputation is not enough.
The case law is inconclusive, but appears to establish three situations in which a foreign trader may attempt to establish goodwill.
1) Evidence of business activity
2) No business activity, but customers
3) Mere reputation
What are the facts of Sheraton Corp of America v. Sheraton Motels [1964] in relation to passing off?
1) Evidence of business activity
Sheraton Corp of America v. Sheraton Motels [1964]
FACTS: Claimant did not operate hotels in UK, but made bookings through its London office and through travel agents.
HELD: Although claimant did not operate hotels in the UK, the fact that bookings were made through its London office and through travel agents was sufficient.
What are the facts of Alain Bernardin v Pavilion Properties Limited [1967] (Crazy Horse) in relation to passing off?
2) No business activity, but customers
Alain Bernardin v Pavilion Properties Limited [1967] (Crazy Horse)
FACTS: Claimant proprietor of CRAZY HORSE SALOON in Paris had distributed leaflets in UK but had not engaged in any trading activity.
HELD: A trader cannot acquire goodwill in this country without some sort of user in this country. Sending advertisements into the country could not fairly be treated as a user in this country.
What are the facts of Athlete’s Foot Marketing Association Inc. v. Cobra Sports [1980] in relation to passing off?
2) No business activity, but customers
Athlete’s Foot Marketing Association Inc. v. Cobra Sports [1980]
FACTS: An American retailer sought to prevent a UK business from using the same name in the UK. The American firm had reputation in the UK, but had not yet conducted business there.
HELD: ‘it does not matter that the plaintiffs are not at present actually carrying on business in this country, provided they have customers here.’
NOTES: in this case the claimant was unable to demonstrate that a single person in the UK had purchased its shoes.
What are the facts of Hotel Cipriani SRL v. Cipriani (Grovesner Suite) in relation to passing off?
2) No business activity, but customers
Hotel Cipriani SRL v. Cipriani (Grovesner Suite)
HELD: In light of the development of e-commerce, which meant that hotels could be booked through websites from anywhere in the world, it might be appropriate to review the requirement for direct bookings in relation to the question of goodwill in services.
NOTES: In Starbucks, this was called into question.
What are the facts of Starbucks (HK) v. British Sky Broadcasting Group PLC [2015] in relation to passing off?
2) No business activity, but customers
Starbucks (HK) v. British Sky Broadcasting Group PLC [2015]
HELD: “As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough […]. The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. Thus, where the claimant’s business is carried on abroad, it is not enough for a claimant to show that there are people in this jurisdiction who happen to be its customers when they are abroad. However, it could be enough if the claimant could show that there were people in this jurisdiction who, by booking with, or purchasing from, an entity in this country, obtained the right to receive the claimant’s service abroad. And, in such a case, the entity need not be a part or branch of the claimant: it can be someone acting for or on behalf of the claimant. […]
What are the facts of Athlete’s Foot Marketing Association Inc. v. Cobra Sports [1980] in relation to passing off?
3) Mere reputation
Athlete’s Foot Marketing Association Inc. v. Cobra Sports [1980]
FACTS: An American retailer sought to prevent a UK business from using the same name in the UK. The American firm had reputation in the UK, but had not yet conducted business there. Moreover, the claimant was unable to demonstrate that a single person in the UK had purchased its shoes.
HELD: ‘it does not matter that the plaintiffs are not at present actually carrying on business in this country, provided they have customers here.’
What are the facts of Anheuser-Busch Inc. v. Budejovicky Budvar [1984] in relation to passing off?
3) Mere reputation
Anheuser-Busch Inc. v. Budejovicky Budvar [1984]
FACTS: An American beer manufacturer sought to prevent a Czech company from selling a beer using a similar mark. The beer was known throughout the UK, but only sold on US military bases.
HELD: Because the beer sold was not available for general purchase, the court held that these sales were to be ignored.
(ii) A foreign traded who only has reputation in the UK may nonetheless be able to show they have goodwill.
What are the facts of Maxim’s v. Dye [1978] in relation to passing off?
3) Mere reputation
Maxim’s v. Dye [1978]
A French restaurant proprietor sought to prevent a UK restaurant using the same name.
Graham J said goodwill in the UK, which is derived from and based on a foreign business may be regarded as prospective but nonetheless real in relation to any future business which may later be set up by the plaintiff.
For what does s56 of the Act provide protection?
S. 56 of the Act provides protection for well known marks, even without goodwill.
“the proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain by injunction the use in the United Kingdom of a trade mark which, or the essential part of which, is identical or similar to his mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.”
Describe the test for passing off established in Reckitt & Colman Ltd v Borden Inc [1990] (the Jiff lemon case)
Lord Oliver set out three basic elements a claimant must establish in order to succeed in an action for passing off:
(i) Goodwill or reputation is attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up”
(ii) The defendant made a ‘misrepresentation’ that is likely to deceive; and
(iii) They have suffered, or are likely to suffer, damage as a result of the defendant’s misrepresentation.
This is known as the classic trinity.
Provide Lord Diplock’s Definition of passing off in the Advocaat case.
Lord Diplock identified five characteristics which must be present in order to create a valid cause of action for passing off:
(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 (in the sense that this is a reasonably foreseeable consequence); and
(5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
Also in the advocaat case, Lord Fraser identified five criteria. These are generally complementary to those of lord Diplock, but emphasize the importance of goodwill subsisting in England.
Can goodwill exist in relation to a foreign trader, where the trading activity takes place outside the UK? Explain your answer.
No. ‘In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. Thus, where the claimant’s business is carried on abroad, it is not enough for a claimant to show that there are people in this jurisdiction who happen to be its customers when they are abroad. However, it could be enough if the claimant could show that there were people in this jurisdiction who, by booking with, or purchasing from, an entity in this country, obtained the right to receive the claimant’s service abroad.’ (starbucks)
