Passing off (C)

Question 1

What are the three stages to the delict off passing off?

Answer 1

Reckitt & Colman (Products) v Borden [1990] 1 WLR 491.
1. Goodwill.
2. Misrepresentation.
3. Loss.

Question 2

Step 1: Goodwill (cases of similar logos, etc.).

Answer 2

P must establish that its product has acquired goodwill in the market so that it is synonymous with some distinctive mark.

Enterprise Holdings v Europcar Group [2015] EWHC 17 (Ch).
- Very similar design, similar type of company.
Argos v Argos Systems [2017] EWHC 231 (Ch).
- Similar weblink, but clearly different company.
Martinez v Prick Me Baby One More Time [2018] EWHC 776 (IPEC).
- Very clearly different branding.

Question 3

Step 1: Goodwill (cases of generic names).

Answer 3

Cellular Clothing v Maxton & Murray (1899) 1 F (HL) 29.
- Must show that term had “acquired a technical and secondary meaning, differing from its natural meaning” to the degree that the term “could be excluded from the use of everyone else.” (Earl of Halsbury LC, 31).

Salon Services (Hairdressing Supplies) v Direct Salon Services 1988 SLT 414.
- “Even in the case of long user of a descriptive name a small difference in name can suffice to differentiate a competing business…” (Lord Kirkwood, 417).

Question 4

Step 1: Goodwill (cases of similar packaging).

Answer 4

John Haig & Co v Forth Blending Co 1954 SC 35.
Reckitt & Colman.
Société des Produits Nestlé v Cadbury UK (No 2) [2017] EWCA Civ 358.

Question 5

Step 1: Goodwill (cases of product quality).

Answer 5

Extended passing off: collective goodwill in a descriptor denoting a hallmark of quality.
- Erven Warmink v J Townend & Sons (Hull) [1979] AC 731.
- Scotch Whisky Association v Glen Kella Distillers [1997] ETMR 470.
- Isle of Man whisky called “Scotch”.
- Fage UK v Chobani UK [2014] EWCA Civ 5.
- Greek yoghurt? The type of yoghurt not where it’s from.

Question 6

Step 1: Goodwill (image rights).

Answer 6

If you are sufficiently well known, you have goodwill in your own image.
- Irvine v Talksport [2002] 1 WLR 2355.
- False endorsement?
- Fenty v Arcadia Brands [2015] 1 WLR 3291.
- False merchandising? No endorsement for image being used on clothing.

Question 7

Step 1: Goodwill (localised goodwill).

Answer 7

Dunlop Pneumatic Tyre v Dunlop Motor Co 1907 SC (HL) 15.
“Under the circumstances of the case before your Lordships I do not think that the average citizen of Kilmarnock would be deceived, and I cannot speculate upon the degree of unwariness that would induce the confusion necessary to support the appellants’ claim”. (Lord James of Hereford, 17).

Starbucks (HK) v British Sky Broadcasting Group [2015] 1 WLR 2628.
“A claimant in a passing off claim must establish that it has actual goodwill in this jurisdiction, and that such goodwill involved the presence of clients or customers in the jurisdiction for the products or services in question. And, where the claimant’s business is abroad, people who are in the jurisdiction but who are not customers of the claimant in the jurisdiction, will not do even if they are customers of the claimant when they go abroad.”

Question 8

Step 2: Misrepresentation.

Answer 8

Must be so that the reasonable customer would confuse the product of the defender for the product of the pursuer.

Morning Star Co-Operative Society v Express Newspaper [1979] FSR 113.
- The “moron in a hurry test”.
- If a moron in a hurry would be confused, that is not enough; must show that the reasonable consumer would confuse D’s product with P’s.

William Grant & Sons Irish Brands Ltd v Lidl Stiftung & Co KG 2021 SLT 889.
- Hendrick’s and Lidl’s Hampstead gin.
- No reasonable person would go into Lidl and pick up a bottle of Lidl’s own gin and expect it to be Hendrick’s.