Passing Off Flashcards
Name the ‘classical trinity’
Goodwill, misrepresentation (leading to deception) and damage - Jif Lemon
Define ‘goodwill’
‘The attractive force that brings in custom’ - IRC v Muller
Can goodwill be accrued by a non-UK company?
Yes, if accrued in the UK by a subsidiary/agent - Scandecor
What about if a company has a reputation in the UK but no trade?
No goodwill - Anheuser Busch; Starbucks
What happened in Cipriani?
Italian hotel did have UK goodwill as people booked from the UK
What’s the definition of a ‘customer’
Somebody transacting - Plentyoffish
What happened in Enterprise?
The opposite of Cipriani - the customers knew Enterprise’s logo from their home countries, then were deceived by D’s mark in the UK
Do the undertakings need a common field of activity?
No, but it helps (Harrodian School)
What is the test for deception?
Deception that there is a business connection/endorsement
Must be likely
Amongst a substantial number of the relevant public
What if customers are initially confused, then work out what’s going on before they buy?
No deception - Moroccanoil
Is there any mens rea element?
No, but it helps for evidence (One in a Million)
What if the claimant’s trading name is descriptive?
It needs to have acquired secondary meaning - Sofa Workshop.
Also confusion is more tolerable with descriptive names.
Case for reverse passing off?
Bristol Convervatories
Two cases for false endorsement
Irvine
Fenty
What is extended passing off?
For whole categories of goods, e.g. Fage
