Passing Off

Passing Off

1. (1) Introduction

   • Common law tort to protect unregistered IP right (e.g. C failed to renew or was refused registration)
   • Broader than trademark as includes the general 'get up' of the product [Jif Lemon]
   • Jif Lemon requirements: goodwill, misrepresentation & damage

2. (2) Goodwill

   • (i) Definition: value of having brand recognised
     • The benefit that a business has in connection with its customers, based on the assumption that old customers will return to the business in future [Trego v Hunt]
   • (ii) Identify C's unregistered trademark
     • What are the symbols of the goodwill, i.e. the mark, logo and getup (packaging, shape, size, etc.) that are trying to be protected
     • Is it a mark that has acquired distinctiveness and is associated with C's particular business
   • (iii) Establish that the mark has a reputation/C owns goodwill
     • Does C have lots of customers (as there must be something the goodwill attaches to)
     • Identify the distincive elements of the mark (can be a collection of features, like in Jif Lemon)
     • What is the mark's reputation (how extensively is it used, what publicity activity has been undertaken, duration of use, etc.)
   • (iv) What is C's business activity in the UK (establish link between the mark and the goodwill)

3. (3) Misrepresentation to consumer

   • (i) Identify misrepresentation
     • Does D's product lead the consumer to think they are purchasing C's product [Jif Lemon]
       • United Biscuits v Asda: D made biscuits called Puffin, with tag line 'pick up a puffin' - misrepresentation as to trade origin as customers thought puffin made by same company as penguin
   • (ii) Is confusion likely
     • Do not need to prove actual confusion, just likelihood - although evidence may be necessary
       • Survey evidence and customer complaint letter
     • Consider average consumer, not a 'moron in a hurry' [Morning Star v Express]
     • Likely if:
       • Similar business activity [Stringfellow]
       • C has substantial goodwill
       • Similar purchasing environment
     • Intention is irrelevant - can be committed inadvertently and innocently

4. (4) Damage

   • Court looks at likelihood of damage, not actual harm suffered
   • Loss of profits
   • Loss of reputation (if D's product is worse than C's)
   • Damage to distinctiveness /dilution

5. (5) Defence: tort was not made out (e.g. not used in the course of trade, confusion not likely, etc.)

6. (6) Remedies: injunction, delivery up, account of profits and/or damages

7. (7) Why registering trademark is better

   • Trademark
     • Don't need to prove goodwill
     • Registration warns off others (puts them on notice of your rights)
     • Confusion not required [s. 10(1)]
     • Only registered once and inexpensive
     • Easy to compare (in box)
   • Passing Off
     • Prove goodwill
     • Claim costly/ time consuming