Passing Off

Question 1

Passing Off - Topics

Answer 1

• 3-Stage Test from “Jif Lemon”
• Goodwill / Reputation
• Misrepresentation - Principles
• Misrepresentation - Types
• Damage
• Remedies
• Test for Interlocutory Injunction
• Case Law

Question 2

3-Stage Test

Answer 2

Test by Lord Oliver in the “Jif Lemon” Case

• Goodwill / Reputation: Plaintiff must establish goodwill or reputation attached to its goods/ services in the mind of the public by association with its identifying “get up”
• Misrepresentation: Must show a misrepresentation (intentional or unintentional) by Defendant that leads the public to believe its goods/services are that of Plaintiff
• Damage: Must show he has suffered damage as a result of the misrepresentation

Question 3

Goodwill / Reputation

Answer 3

Trade Name

• C&A Modes v. C&A (Waterford) [1976]
• Galway Free Range Eggs Ltd v. O’Brien [2019]

Internet Domain Name

• Local Ireland v. Local Ireland Online [2000]

Association with Region/Location

• Taittinger v. Allbev Limited [1994]

Product Name

• Erven Warnink v. J. Townend & Sons [1979] (Advocaat case)

Packaging “Get Up”

• Reckitt & Colman v. Borden [1990]
• McCambridge v. Brennan Bakeries [2012]

Question 4

Misrepresentation - Principles

Answer 4

• Defendant must act in a manner that confuses the public into thinking its goods/services are those of Plaintiff or associated with Plaintiff
• Intention to deceive not essential
• Objective likelihood of confusion is sufficient.
• It’s not expected that the consumer would be studying the packaging, but some level of scrutiny is expected

Question 5

Misrepresentation - Types

Answer 5

By Association

• Coca-Cola v. Gemini Rising (1972)
• Fenty v. Arcadia Group (t/a Topshop) [2015]

By Similarity in the Names

• Allergen v. Ocean Healthcare [2008]

By Design Similarity

• Adidas v. O’Neill [1983]

By Packaging Similarity

• Jacob v. United Biscuits [2007]
• McCambridge v. Brennan Bakeries [2012]

Question 6

Damage

Answer 6

• Plaintiff must show Defendant’s actions damaged its goodwill or reputation
• Usually proved by showing that customers were confused, misled or deceived
• Damage to reputation is sufficient – not required to show loss of profit
• See: McCambridge v. Brennan Bakeries [2012]

Question 7

Remedies

Answer 7

• Main remedies are damages and injunctions
• The adequacy of damages and the balance of convenience normally favour granting the injunction,
• Damage to goodwill is often considered uncompensatable

Question 8

Test for Interlocutory Injunction

Answer 8

Campus Oil v. Minister for Industry & Energy [1983]

• Fair and bona fide question to be tried
• Damages are not an adequate remedy
• Balance of convenience favours granting the injunction

Question 9

Reckitt & Colman v. Borden [1990]

Answer 9

The “Jif Lemon” Case

• The plaintiff, Reckitt & Colman, packaged their lemon juice in a distinctive yellow coloured lemon-shaped bottle and marketed it as “Jif lemon juice”.
• The defendant, Borden Inc, marketed its product with similar packaging
• Plaintiff held to have proved its goodwill in the unique design of its packaging
• Lord Oliver reformulated the test for passing off

Question 10

Star Industrial v. Yap Kwee Kor [1976]

Answer 10

• A passing off action is a remedy for the invasion of a right of property which is NOT in the mark, name, or get-up improperly used, but rather in the business or goodwill that is likely to be injured by the misrepresentation of passing off
• Goodwill is incapable of subsisting by itself. It has no independent existence apart from the business to which it is attached.
• Goodwill is described as being local in character and divisible. A separate goodwill attaches to the business in each country. If a business is abandoned in a country, the goodwill perishes in that country, even if the business continues in other countries.

Question 11

C & A Modes v. C & A (Waterford) [1976]

Answer 11

• C & A Modes adopted its name in 1953 and owned a number of retail stores in Britain and Northern Ireland. They did not trade in the Republic of Ireland, but advertised extensively and customers would travel to NI or the UK for the goods.
• The defendant incorporated in Ireland in 1972 and operated a retail drapery business. It used a large van with the letters “C & A” printed prominently on its sides, which were also included in the defendant’s name.
• The plaintiff was held to have goodwill in the name and symbol “C & A” in the Irish jurisdiction even though it did not trade or have physical shops in Ireland
• Court held that the defendant’s actions were intended to deceive the public.

Question 12

Jacob v. United Biscuits [2007] - Ratio

Answer 12

• Accepted Lord Oliver’s reformulated test for passing off in Ireland
• Held: where the features in which reputation vests are found in a similar form in a competing product, confusion is likely.
• Held: The court should consider the circumstances of purchase, the type of customers, and the amount of attention even less careful purchasers are likely to apply. The competing get-ups should be judged as a matter of first impression, but also by considering the features likely to attract a purchaser’s attention in those circumstances.
• Held: A claimant is entitled to protection for goodwill established even with customers who may not exercise a high degree of care, but not for an utterly careless purchaser
• Held: a proper application of the principles will normally lead to the conclusion that the plaintiff will suffer uncompensatable damages and the balance of convenience will favour granting an injunction. This is because interfering with a claimant’s goodwill, which is a property right, is difficult to assess and adequately compensate with damages if an injunction is refused but the plaintiff ultimately succeeds at trial.

Question 13

Jacob v. United Biscuits [2007] - Facts

Answer 13

• For figrolls, the overall impression on a supermarket shelf was one of extreme similarity, despite minor differences like brand names (McVities vs. Jacobs) and a blue band. The combination of colour, font, depiction of figrolls, and similarity of the side packaging made the packets appear extremely similar. The fact that both products shared the descriptive name “figrolls” and the differentiating brand names were small contributed to the increased risk of confusion
• For cream crackers, while there were broad similarities (yellow/orange colour, large white-on-brown name), there were significant differences. The name “Jacobs” appeared as a major feature on the plaintiff’s packaging, reflecting the reputation established in that specific presentation. The defendant’s packaging had the “McVities” name in smaller print and the words “cream crackers” presented differently, making it quite distinguishable from the Jacobs version
• Held: The plaintiff established goodwill in the packaging of its figrolls and cream crackers.
• Held: Misrepresentation was found for the figrolls but not the cream crackers.

Question 14

Allergen v. Ocean Healthcare [2008]

Answer 14

• The plaintiff had a trademark for BOTOX, and the defendant traded its product as BOTOINA.
• The court analysed visual, phonetic & conceptual similarity as well as similarity between the goods themselves and their presentation.
• Held: sufficient similarity to cause confusion. Overall product marketing (anti-wrinkle, glass vial, applicator, name) calculated to imply connection with BOTOX.
• Held the defendant guilty of passing off.
• Held that when assessing similarity for confusion, a “global view should be taken of the manner in which the product is presented to the public” rather than dissecting the similarities.

Question 15

McCambridge v. Brennan Bakeries [2012]

Answer 15

• Held: A combination of different elements can give rise to a distinctive get-up, even if the elements are generic. The court will take into account the “overall impression on the observer” created by the “get up” when assessing distinctiveness.
• Held: It is not an answer to argue that an observant person who made a careful examination or compared both products side by side would not be misled.
• Held: Not necessary to produce evidence that anyone waw actually deceived. The test is if the goods are “calculated to deceive”
• Held: Not required for the plaintiff to show a loss of profit. Damage to a person’s goodwill or reputation is sufficient.

Question 16

Galway Free Range Eggs v. O’Brien [2019]

Answer 16

• The plaintiff had been trading under “Galway Free Range Eggs” since 1994. The defendant began selling eggs under “O’Brien’s of Galway Free Range Eggs” in 2012.
• Held: Case not limited to the use of the word “Galway” alone. The plaintiff was entitled to claim a reputation and goodwill in the entire phrase “Galway Free Range Eggs” and specifically in the combination of the words “Galway” and “free range eggs”
• Held: The infringement on the plaintiff’s goodwill was not justified