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Summary Law of Passing Off - Commercial Law and Intellectual Property
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4. PASSING-OFF Common law cause of action in Tort that protects ™ regardless of whether registered or not
Difficult and expensive to pursue – hard to accumulate adequate evidence so more
preferable to pursue ™ infringement
o E.g. 3rd party using client’s unregistered ™ without consent
o E.g. client cannot establish all elements of infringement of a registered ™
o E.g. protection of other elements of branding not registered e.g. ‘get-up’/’trade dress’
o E.g. client brings claim for ™ infringement and pleads passing-off in case defence of
invalidity succeeds
JIF LEMON CASE
Reckitt & Coleman Products Ltd v Borden Inc [1990]
o C used plastic, yellow, lemon shaped packaging for product for many years
o D supermarket used similar but slightly larger container
o C successfully argued that customers believed supermarket brand was genuine Jif
Lemon (perceived to be of highest quality) and so bought supermarket brand by
mistake
o Established tort has 3 elements – 1) Goodwill 2) Misrepresentation 3) Damage
1. GOODWILL (GW)
Property protected by rights in passing-off is goodwill NOT unregistered mark per se
™ and other indicators of origin e.g. Jif container symbolises goodwill
An attractive force that keeps bringing in custom – more value than business assets
Recognised by public as distinctive specifically of the claimant’s goods/services
Definition - ‘the benefit or advantage which a business has in connection with its
customers. It is based on the probability that old customers will continue to resort to the old
place of business, or continue to deal with the firm of the same name...” (Trego v Hunt
(1896)).
C must prove it owns GW – dependent on the facts of the case
Unregistered ™
Not about having lots of customers – has to be some kind of mark to which business’
goodwill attaches – i.e. the ‘identifying get-up’ or ‘badge of origin’
o Get-up can be a combination of different elements e.g. yellow plastic, shape of lemon,
JIF embossed etc.
Reputation of ™
Has to be some actual association in the mind of public between C’s unregistered ™ and its
business – must be proved by C having educated public to read mark as designation of
origin (doesn’t have to be precise, only recognition that it must be somebody’s ™)
o Achieved by using it as ™ - more extensive + intensive = better (need evidence)
Inc. publicity activity e.g. advertising, promotions, media mentions
Eye-catching get-up or made-up words = stronger
, Business activity in UK
GW accrues through creating relationships with potential customers so C must have
engaged in some kind of trading activity
C selling goods/services under the mark to large no. of customers = assists proving GW
o Pre-launch advertising held as generating GW before products have gone to market
Allen v Brown Watson [1965] – pre-publication publicity of a book
o Longer business traded, more customers but no minimum period
Stannard v Reay [1967] – mobile fish’n’chip shop acquired GW under name ‘Mr
Chippy’ within weeks of trading
o Wider area business trades = more GW it generates BUT GW can be local in nature
Guardian Media v Associated Newspapers [2000] – C used name METRO in
Manchester, D launching newspaper of same name = passing-off (got injunction)
Passing-off = English law – traditionally C must trade within UK but use of internet has
diminished importance of trader location as a factor establishing GW
Cipriani SRL v Cipriani Limited – Italian C established GW in UK even though
Hotel Cipriani in Venice – adduced evidence to prove it had attracted large
number of UK customers – London restaurant had to re-brand as a result
Plentyoffish Media v Plenty More LLP – US website needed UK customers in
order to oppose ™ app – simply having reputation in UK insufficient to establish
GW
Starbucks v British Sky Broadcasting – C brought action to stop D using NOW
TV mark since it had been operating same service under same name in HK since
2006 – passing off failed since customers were not from UK but HK
Stage 1: Identify the claimant’s unregistered trade mark.
Stage 2: establish the trade mark’s reputation: does the public
actually recognise it as a trade mark/badge of origin?
Stage 3: Identify the claimant’s business activity in the UK. This is
where you cement the link between the trade mark’s reputation and
actual goodwill.
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