Trade Mark Law (UK) - Passing Off

Question 1

What is the core aim of the tort of passing off?

Answer 1

To prevent traders from misrepresenting their goods or services as those of another.

Question 2

Which case introduced the ‘classical trinity’ required to establish passing off?

Answer 2

Reckitt & Colman v Borden (Jif Lemon)

Question 3

Goodwill, as required to prove passing off, refers to:

Answer 3

The benefit and recognition a brand brings in attracting customers.

Question 4

Extended passing off applies to:

Answer 4

Collective goodwill shared among a group of traders for a product category.

Question 5

The Fenty v Arcadia Group (Topshop) decision was based on

Answer 5

Passing off through false endorsement.

Question 6

Explain the ‘classical trinity’ required to establish a passing off claim.

Answer 6

The ‘classical trinity’ consists of goodwill, misrepresentation, and damage. Goodwill refers to the reputation of the business, misrepresentation involves misleading the public, and damage is the harm caused to the claimant’s business.

Question 7

What is the legal rationale for limiting goodwill to activities conducted within the UK?

Answer 7

Goodwill is limited to UK activities to ensure that the business has a tangible presence and customer base within the jurisdiction, preventing claims based solely on reputation.

Question 8

Provide an example of how misrepresentation can occur through product packaging.

Answer 8

Misrepresentation can occur through packaging that mimics a competitor’s design, leading consumers to believe they are purchasing the competitor’s product.

Question 9

What type of damage is caused by ‘dilution’ in a passing off context?

Answer 9

Dilution refers to the weakening of a brand’s distinctiveness and value due to overuse or misuse by others.

Question 10

Summarise the key findings in the Starbucks v British Sky Broadcasting case regarding territoriality.

Answer 10

The case highlighted that mere reputation is insufficient for goodwill; there must be a business presence or customer base within the UK.

Question 11

Passing off requires the claimant to prove intent to deceive from the defendant.

True or False

Answer 11

False

Intent to deceive is not required; innocent misrepresentation suffices.

Question 12

Reputation within a jurisdiction is enough to claim goodwill.

True or False

Answer 12

False

Goodwill must be linked to business activities within the jurisdiction.

Question 13

Misrepresentation only applies to verbal claims and not product design or packaging.

True or False

Answer 13

False

Misrepresentation can occur through product design or packaging.

Question 14

Extended passing off can protect product categories like ‘Champagne’ or ‘Greek Yogurt’.

True or False

Answer 14

True

Extended passing off can protect product categories like ‘Champagne’ or ‘Greek Yogurt’.

Question 15

Passing off applies solely to registered trade marks.

True or False

Answer 15

False

Passing off applies to unregistered trade marks as well.

Question 16

How has the advent of digital technology expanded the potential scenarios for passing off claims? Provide at least two specific examples.

Answer 16

Digital technology has expanded passing off scenarios through domain name misrepresentation and unauthorised use of brand images in online advertising.

For example, registering a domain similar to a well-known brand or using a competitor’s logo in digital ads can mislead consumers.