Passing off Flashcards
what is the tort of passing off?
the tort of passing off arises when a customer is misled as to the origin of goods or services and as a result of that misleading of the customer, another supplier’s business suffers.
what kind of tort is passing off
passing off is classified as an economic tort, as the resultant harm does not cause physical loss, but economic loss to the supplier who has lost a customer due to the defendant’s acts and can occur when a person sells goods, or carried on a business under a name, mark or description in such a manner and is likely to mislead the public or likely to trick them into believing that the goods or business is that of another person
The rationale of passing off was given in Polycell Products Ltd v O’Carroll & Ors
“to establish merchandise in such a manner as to mislead the public into believing that it is the merchandise or product of another is actionable. It injures the complaining party’s right of property in his business and injures the goodwill of his business. A person who passes off the goods of another acquires to some extent the benefit of the business reputation of his rival trader and gets the advantage of his advertising”
The test for passing off
The Court expressly endorsed the following phrasing of the 3 step test in the case of McCambridge Ltd v Joseph Brennan Bakeries as follows:
- The existence of a reputation or goodwill in the claimants product including, where appropriate, in a brand name or get up;
- Misrepresentation leading to confusion between what is alleged to be the offending product and the claimants product; and
- Whether damage to the claimant’s goodwill or reputation by virtue of any such confusion has been established
how can a plaintiff show that he has a reputation and/or goodwill in his own product or service?
The plaintiff must therefore show that a name, brand-name/mark, packaging, design or an advertisement has become distinctive of their goods and that a reputation has attached thereto.
Goodwill itself has been defined by the courts as the ‘attractive force that brings in custom’ and can attach to the product’s name, design, packaging or advertising.
Timing of reputation and/or goodwill and the case of Sutherland v V2 Music Limited
Goodwill must exist at the time of the alleged passing off. Where a plaintiff has
ceased trading no action for passing off will lie unless there is some residual goodwill.
In Sutherland v V2 Music Limited the Plaintiffs, the members of a 1990s funk band named “Liberty”, claimed passing off against a pop-music band were attempting to use the name Liberty.
Despite the fact that the original band were no
longer active, it was held that they had sufficient residual goodwill to ground a claim. In the circumstances, the pop group was forced to change its name to Liberty X.
Is goodwill geographically specific?
- In the case of C&A Modes v C&A Waterford Plaintiff contended that the defendant was seeking to cash in on its reputation. It had no stores in the Republic but its advertising was broadcast there on UK TV channels and it’s Northern Ireland sort, they alleged, received cross-border business from the Republic.
- Court held that goodwill can cross border.
what are the facts of coca-cola Company v AG barr & Co
In Coca-Cola Company v AG Barr & Co. the plaintiff’s distinctive bottle shape was
considered to be protected under the tort of passing off as it was borderline iconic and was the basis of the product’s marketing and consistency of design since the soft drink first launched in 1886.
Thus, as the caselaw in relation to misrepresentation will further illustrate, reputation and
goodwill can arise in relation to a brand name, packaging, advertising, and so on.
what are the facts of the case Box Television v Box Magazine?
Court held the use of the word “box” to describe television did not have any sufficient connection with his business specifically, it was a colloquialism
what are the different means of confusion as described in O’Neills v O’Neills Footwear Dryer
this can be done by similarity of name, appearance, get-up or the same purpose. How it is done is immaterial so long as the similarity is calculated to deceive those who might but or otherwise deal in the goods.. deliberate intention is not necessary”
what are the facts of the case of Tattinger v Albev?
The test for confusion was established
- The defendant manufactured a non-alcoholic drink called “elderflower champagne” and the packaging looked like champagne
- The plaintiffs complained and argued that there was a risk of the public being confused and think that the inferior product was in some way related to the champagne region of France or champagne generally
- The defendants argued that the high-class members of the public that would consume the plaintiffs champagne would be too educated and clever to mistake the champagne.
- Court said its not about the rich educated customer the test is the average customer who is likely to be in the environment in which they will encounter the product.
what are the different ways confusion can arise?
- Names
- Packaging
- Design
- Advertising
what are the facts of the case Jameson v Irish Distillers?
Plaintiff was the owner of the well-known whiskey distillers John Jameson and Son
The defendant had sold whiskey under the name William Jameson and Co, but after poor sales tried to change the name to “Jamesons Whisky”.
Notwithstanding that he was using his own name, he was guilty of passing off.
what is the facts of the leading case for confusion from packaging
Jif Lemon Case. The plaintiff had marketed their product Jif Lemon Juice in a bright yellow, lemon-shaped, plastic container for a number of years.
The Court was satisfied that the plaintiff had goodwill in the packaging and granted an injunction preventing the Defendant from marketing their lemon juice in a similar container, notwithstanding that their brand and label was quite easily distinguished from that of the Plaintiff.
does the action for passing off extend to the product itself?
In L’Oreal SA v Bellure Lewison J. noted that the smell of a perfume could not be protected by the law of passing off: “the law of
passing off is not designed to protect a trader against others selling the same goods or copied goods.”
Similarly in United Biscuits Ltd v Irish Biscuits Ltd the Plaintiff was unsuccessful in seeking to apply the law of passing off to the shape of its “Cottage Creams” biscuits. The Defendant was the maker of “College Creams”. The packaging used by each was quite different and distinct from one another, but the biscuits were very similar once out of the package.
