Passing Off

Question 1

What is the main case that state the 3 main requirement for passing off?

Answer 1

Reckitt and Coleman v Borden

Question 2

What are the 3 main requirements for passing off?

Answer 2

1. Good Will
2. Misrepresentation
3. Damage

Question 3

What is good will, and how does it usually manifest itself? Case?

Answer 3

Good will is the attractive force that brings in custom

usually manifest itself in the form of words / name, e.g. Gucci

Eastman Photographic Materials v John Griffiths Cylce Corporation

Question 4

Which case concerns words with secondary meaning? What rule does it establish?

Answer 4

Reddaway v Banham

trader needs to show that the words have acquired a secondary meaning

descriptive words must ALSO be indicative of source - need to have built up public association to do this

Question 5

good will: other considerations? (4)

Answer 5

get up / appearance
advertisement
location
collective goodwill

Question 6

Good will: Which cases concern the get up / appearance of goods?

Answer 6

Reckitt & Coleman v Borden
Modus Vivedi v Keen
Sydneywide Distributors v Redbull

Question 7

Good will: What is the main rule concerning get up / appearance of the goods? Case?

Answer 7

there must be some special factor that means customers attach particular importance to appearance of goods

Reckitt & Coleman v Borden

concerned jif lemon

D produced container in same style and shape as the jif lemon

Good will was establish because when consumers selected the container, they did so on the basis of its appearance; they thought it was a jif lemon because it had the appearance of a jif lemon

Question 8

Good Will: describe vivedi v Keen case

Answer 8

C and D both produced and sold red and white gas cannisters

although Ds cannister showed latin script, court held the average consumers from Hong Kong would not understand this

therefore seen as having the same appearance

Question 9

Good will: describe sydneywide distributors v Redbull

Answer 9

D roduced cans that looked the same as Redbull

Held that although the trademarks were different, when the cans were placed in the fridge, the TMs may not be seen my consumers

therefore, consumers had to rely on appearance of the cans = passing off

Question 10

Which cases concern good will in advertisements?

Answer 10

Cadbury Schweppes v Pub Squash

Telstra v Royal & Sun Alliance insurance 2003

Question 11

What is the main rule concerning goodwill?

Answer 11

good will must attach itself to something

Question 12

Facts of Cadbury Schweppes v Pub Squash?

Answer 12

Advert for lemonade had a theme of “manliness”

D produced similar advert

C argued that goodwill attached to the advert theme

held: can do this in theory, but in this case good will did not attach to the advert theme, because the theme “manliness” was too vague and not specific enough

Question 13

Facts of Telstra v Royal and Sun Alliance Insurance 2003

Answer 13

In Cs advert, man made calls from yellow pages to find car replacement

when this was copied by the D, C argued good will attached to the advert theme

held: good will attached to advert theme here, because C could describe in better detail the theme for which they were seeking protection

Question 14

Good will: Which case concerns location? What rule is established in this case?

Answer 14

Anheuser-Busch v Budejovicky budvar

claimant can only have goodwill in the UK, if the good is traded in the UK

in this case, owners of US and Czech beers sued each other for passing offf

failed because neither were traded in the UK - “spillover goodwill” from british tourism in the US and Czech Republic insufficient

Question 15

Which cases concern collective goodwill?

Answer 15

Chocosuisse des Fabricants des Chocolat v Cadburys

Fage v Chobani

Question 16

Describe Chocosuisse des Fabricants des chocolats v Cadbury

Answer 16

manufacturers of Swiss chocolate sued Cadburys for using the term “swiss” to describe their chocolate, when it was not made in Switzerland

swiss chocolate manufactures enjoyed collective goodwill over swiss chocolate

Question 17

Describe Fage v Chobani

Answer 17

D sold yoghurt and named it greek yoghurt

greek yoghurt however is considered by the average consumer to be made in Greece, and according to Greek methods

the yoghurt in this case was neither made in Greece, nor by greek methods - the average consumer would not have known this

Question 18

What is misrepresentation?

Answer 18

Ds use must move consumers to mistakenly buy their product instead of the claimants

Question 19

What are the two types of misrepresentation?

Answer 19

1. Misrep as to source

2. Misrep as to quality

Question 20

What are the main cases concerning Misrepresentation as to quality? (3)

Answer 20

AG Spalding v AN Gamadge

Rolls Royce v Zanelli

Hodge Clemco v Airblast

Question 21

Describe AG Spalding v Gamadge

Answer 21

C produced footballs called “orbs”

these were bad quality, so reissued as “the new and improved orbs”

D sold footballs, called “the new and improved orbs” but actually sold the old consignment - this was held to be passing off

Question 22

Describe Rolls Royce v Zanelli

Answer 22

D bought second hand rolls royce and reconditioned them

sold them as a new brand of rolls royce

this was passing off because customers thought they were buying a NEW rolls royce

Question 23

Describe Hodge Clemco v Airblast

Answer 23

D produced safety vizors which he said fitted safety uniform

vizors did fit, but still did not meet safety standards

Question 24

Which cases concern character merchandising? (3)

Answer 24

Mirage Studios v Counter Feat Clothing

Hogan v Koala Dundee Party

Fenty v Arcadia

Question 25

What is the main rule concerning character merchandising? Case?

Answer 25

Hogan v Koala Dundee Party - Australian case (not binding)

Passing off applies to celebrities and fictional characters

this Australian case law was affirmed by
Mirage Studios v Counter Feat Clothing

means same rule applies in english law

Question 26

Describe Fenty v Arcadia Group

Answer 26

Rihanna successfully sued Topshop for using unauthorised photos of her on T shirts

Question 27

Difference between passing off and inverse passing off?

Answer 27

passing off - D pretends their own goods are Cs

inverse passing off - D pretends Cs goods are their own

Question 28

Which case concerns inverse passing off? What are the facts?

Answer 28

Bristol Conservatories v Conservatories Custom Built

D copied Cs portfolio of conservatory photos and presented it as his own to customers

held that this was still passing off despite chain of confusion being reversed

Question 29

What is the main limitation to misrepresentation? Which cases support this?

Answer 29

Shopping habits of consumers must have changed as a result of the misrepresentation

Harrods v Harrodian School

Mcillhenny v Blue Yonder Holdings

Question 30

What are the facts of Harrods v the Harrodian School?

Answer 30

Harrods sued the Harrodian school for copying its name

Court of appeal held that parent would not send their child to the school on the basis of its name

therefore consumer behaviour did not change, and no passing off

Question 31

What are the facts of Mcillhenny v Blue Yonder Holdings?

Answer 31

D named their advertising service Tobasco

Makers of Tobasco sued advertising service company

held that nobody would use the advertisement service because tobasco sauce came to mind

therefore no passing off