Intellectual property law

1. Passing Off
Definition
1) Classic definition – “Nobody has any right to represent his or
her goods as the goods of somebody else (Reddaway v
Banham)
2) Other words – The action allows trader A to prevent a
competitor B from passing off their goods as if they were A’s
Elements of the action : Jif Lemon (Reckitt & Colman Products Ltd v
Borden)
1) The claimant must be able to demonstrate goodwill
2) The defendant made a “misrepresentation” that is likely to
deceive the public
3) The misrepresentation damages the goodwill of the
claimant
Element 1: Goodwill
Form of intangible property (can be transferred by assignment, on
death, by operation of law)
Benefit of advantage of a good name, reputation or connection of a
business (IRC v Muller & Co)
1) Words, symbols and logos
a. Descriptive words
i. Courts are reluctant to allow people to obtain
unless;
ii. Distinctive in fact
iii. Taken a secondary meaning. Eg: Mothercare
(Mothercare v Penguin Books)
b. Geographic words and personal names
i. Generally, no one can claim and enclusive
right in geographic or personal names
ii. Will not prevent another trader frm using the
same designation
iii. Exception: Montgomery v Thomson –
Claiamnt operates brewery in small town
called Stone so the beer being sold is called
Stone Ale – this prevented defendant from
using the term Stone to describe its beer
c. Generic words
Once a term has become generic, that is when the
public starts using the term to refer to the product
generally, it loses its ability to indicate source
2) Packaging, get-up and trade dress
Protection afforded to external features of products
a. Goodwill in whole packaging(Reckitt & Coleman v
Borden) – HL held that the claimant had succeeded
in persuading the public that lemon juice sold in
plastic lemon sized containers had been
manufactured by it
b. Goodwill in some features of the packaging
(Hoffman La Roche v DOSA) – The court recognized

2. goodwill in the black and green color of Librium
capsules
3) Advertising techniques and themes
Goodwill can arise in features of the way in which goods or
services can be offered to the public other than packaging
and shape (Easyjey v Dainty)
4) Business Context
Claimant must be a trader and must be operating in trade –
Courts have been generous in deciding whether someone is
engaged in business or commercial activity
3 situations where traders have experienced problems in
establishing goodwill –
a. Pre-trade goodwill
i. Traditional position – Before a passing off
action can be brought, trading must have
actually commenced
ii. A declaration of intention to sue a name does
not secure any protection (Maxwell v Hogg) –
iii. Occasional interim relief can be granted prior
to the launch of the products in the case of
substantial pre-launch publicity (Elida-Gibbs v
Colgate Palmolive – Held that TV ad for new
toothpaste gave rise to immediate goodwill)
b. Goodwill after trading ends
Once a business ceases to trade, the goodwill starts
to fade
However, goodwill is an asset that does not dissipate
immediately when a business ceases to operate
An intention to reopen business couples with a
continues reputation are critical factors in deciding
whether goodwill continues to exist after a business
ceases to trade (Ad-Lib Club v Granville)
Length of use to establish goodwill
Even short periods may be sufficient – Trading for a
very short time may be enough but goodwill must be
more than trivial (Jadebay Ltd v Clarke-Coles Ltd)
c. Foreign traders
i. Evidence of business activity – If the claimant
can demonstrate a trading link with the UK,
they will normally succeed in establishing
goodwill (Sheraton Corporation v Sheraton
Motels)
ii. No business activity, but customers
1. A foreign trader must show both that
they have customers and they carry
business in the UK (Bernardin v
Pavillion)
2. The existence of customers in the UK
is sufficient to constitute the carrying
of business in the UK to which a local

3. goodwill is attached whether or not
there is place of business in the UK
and whether or not the services are
provided in the UK (Pete Waterman v
CBS UK)
iii. Mere reputation
1. “Mere reputation is not enough” –
there is a need for goodwill to be
demonstrated through the presence
of clients or customers (Starbucks HK
Ltd v British Sky Broadcasting Group)
2. Where a trader only has reputation in
the UK, they will not have the
goodwill to justify an action for
passing off (Anheuser-Busch v
Budejovick Budvar)
3. Reputation in the UK is enough to
establish goodwill (Maxim’s Dye)
Element 2: Misrepresentation
 When does misrepresentation occur?
Where the defendant says or does something that indicates
that the defendant’s goods or services derive from the
claimant
 Misrepresentation is a false statement of fact
 No need for the misrepresentation to be conscious,
deliberate, intentional or fraudulent
 Mere confusion is not enough to justify an action for passing
off (Comic Enterprise Ltd v Twentieth Century Fox Film Corp
– Even though the evidence on confusion was admissible,
confusion in this case did not establish that Fox had been
guilty of any misrepresentation actionable in passing off)
Form of the misrepresentation
1) Words
 Involves the use of words(oral or written)
 Can occur where:
i. The defendant makes a statement that links
them either explicitly or implicitly to the
claimant)
ii. The defendant uses a name that is identical
or very similar to the trade name used by the
claimant (Taittinger v All Bev – with regards
to two different products which are
carbonated non-alcoholic soft drink, sold in
outlets which also sold champagne. Bottles
were of the same size and colour as
champagne, with labels and corks like those
used for Champagne)
2) Action
Misrepresentation may be implied from the action of the
defendant where:
 Defendant manufactures their goods to look like the
claimant’s
 Customer asks trader for specific goods, but trader
supplies their own goods instead

4.  Defendant places their product in close proximity to
the claimant’s (Associated Press v Insert Media)
 Cybersquatting (British Telecommunications v One In
A Million, Phones 4U Ltd v Phone4u.co.uk. Ltd, Argos
Ltd v Argos Systems Inc)
3) Misrepresentation as to the source
The defendant’s actions give rise to a suggestion that:
 The defendant’s goods are those of the claimant’s,
or
 The goods or services of the claimant and those of
the defendant are related
Objectionable because:
a. In confuses the public
b. It attempts to ride on the back of the claimant’s
reputation
“There was no evidence that the shape of the new
Metrocab was likely to lead consumers of taxi services to
believe that it came from the same source as LTC’s taxis, as
opposed to being as licensed London taxi’ (London Taxi Corp
Ltd v Fraser-Nash Research)
4) Misrepresentation as to quality
 Objectionable because of the negative impact that
the defendant’s actions have upon the claimant’s
reputation (Spalding v Gamage)
 Possibility for a trader to control the parallel
importation of their goods (Colgate-Palmolive v
Markwell Finance)
5) Misrepresentation as to control or responsibility of the
claimant over the goods
 Suggestion of mere connection between the
claimant and the defendant is not enough (BMW AG
v Technosport London Ltd)
 The defendant’s misrepresentation must suggest
that the claimant has some type of control or
responsibility over the defendant’s goods or services
(Harrods v Harrodian School, Arsenal v Reed)
6) Misrepresentation in personality merchandising
 A practice whereby celebrities use their names and
images to endorse and associate themselves with
products or services
 Under certain conditions, celebrities may be able to
use passing off to control the use that is made of
their image(even though the UK law does not
currently recognize a right to personality)
 While the public does not need to believe that the
personality made the goods or services, it must have
thought that they have endorsed them (Lyngstad v
Anabas Products, Halliwell v Panini Spa, Irvine v
Talksport)
 “There is no English Law that supports ‘image right
or character right’” (Kitchin LJ in Fenty v Arcadia)
7) Misrepresentation in character merchandising
 Practice which involves the application of images of
cartoons and other fictional characters to

5. merchandise (Mirage Studios v Counter-Feat
Clothing – Misrepresentation to the public that the
goods were genuine and that they were licensed)
8) Misrepresentation in keyword advertising
 “pay per click” advertisements on search engines
(Google France Sarl v Louis Vuitton Malletier, Google
France Sarl v Centre National de Recherche)
 Keyword advertising as passing off due to propensity
of confusion (Victoria Plum Limited v Victorian
Plumbing Limited)
9) Misrepresentation through comparative advertising
 Term used to describe advertisements where the
goods or services of one trader are compared with
the goods or services of another trader
 In case of false statement, damage to the
competitor’s goodwill may arise through false
representation (McDonald’s Hamburgers v Burger
King)
Element 3: Deception
The claimant must show that the defendant’s misrepresentation is
deceptive, i.e. that the defendant’s actions have either confused
the public or are likely to do so (i.e. question of fact)
The “notional consumer” (Harrods v Harrodian School)
Relevant public described as affluent members of the middle class
who live in London, shop at Harrods and wish to send their children
to fee-paying schools
How many people ought to be deceived?
Question of fact – a substantial number of persons among the
relevant section of the public will be deiceived
Relevant factors when deciding if a misrepresentation is deceptive
1) The strength of the claimant’s sign – distinctiveness (Lego v
Lemelstrich)
2) The similarity of the signs (Wagamama v City Centre
Restaurants)
3) Proximity of the claimant’s nad defendant’s fields of
business
4) The intention of the defendant
5) Parodies or satires
Reverse passing off
Name given to the situation where a third party without
authorization takes the claimant’s goods and services and present
them as theirs (Bristol Conservatories v Conservatories Custom
Built)
Element 4: Damage
How can damage be established?
1) Loss of existing trade and profit – Where the
misrepresentation diverts trade and thus profit from
claimant to the defendant

6. 2) Loss of potential trade and profit – loss of opportunity to
expand in a anew geographical area (Maxim’s Dye) or a new
field (Lego v Lemelstrich)
3) Loss of licensing revenues – where the misrepresentation
has a negative impact on the claimant’s reputation
(Annabels’ Berkeley Square v Schock)
Element 5: Defences
1) “Own name” defence where it is clearly indicated that the
teo parties are not connected (Boswell-Wilkie Circus v Brian
Boswell Circus)