UNREGISTERED TRADE MARKS-

PASSING OFF
 Passing Off
• The Underlying Principle
• James LJ in Singer v Loog (1880) 18 Ch D 395 atE
p 412 "... no man is entitled to represent his
goods as being the goods of another man; and no
man is permitted to use any mark, sign or symbol,
device or other means, whereby, without making
a direct false representation himself to a
purchaser who purchases from him, he enables
such purchaser to tell a lie or to make a false
representation to somebody else who is the
ultimate customer."
 Passing Off
• The Underlying Principle
• Reddaway v. Banham [1896] AC 199, HL Lord Macnaghten
at page 231, “(After quoting Lord Justice James in Singer
Manufacturing Company v. Loog) That being, as it appears
to me, a comprehensive statement of what the law is upon
the question of Trade Mark or trade designation, I am of
the opinion that there is no such thing as a monopoly, or a
property, in the nature of copyright, or in the nature of a
patent, in the use of any name. What ever name is used to
designate goods, anybody may use that name to designate
goods; always subject to this, that he must not, as I said,
make directly, or‘ through the median of another person, a
false representation that his goods are the goods of
another person. That I take to be the law."'
 Passing Off
• Relation between registered TM and unregistered
TM
• S. 82(1) Trade Marks Act 1976 -"No person shall
be entitled to initiate any action to prevent or
recover damages for the infringement of an
unregistered mark."
• S. 82 (2) Trade marks Act 1976 - "Notwithstanding
subsection (1), nothing in this Act shall be
deemed to affect the right of action against any
person from passing off goods as those of
another person or the remedies thereof."
 Passing Off
• The tort of deceit. The existing of a triangle.
The deceiver, the audience and the victim
• The victim has locus standi
 Nature of Interest Protected
• Star Industrial Co Ltd v Yap Kwee Kor [1976] 2 FSR 256 at 269, per Lord
Diplock
• ‘Whatever doubts there may have previously been as to the legal
nature of courts of law or equity, these were laid to rest more than 66
years ago by the speech of Lord Parker A.G. Spalding & Bros. v. A. W.
Gamage Ltd.
• - A passing off action is a remedy for the invasion of a right of property
not in the mark, name or get-up improperly used, but in the business
or goodwill likely to be injured by the misrepresentation made by
passing-off one person's goods as the goods of another.
• - Goodwill as the subject of proprietary rights, is incapable of
subsisting by itself. It has no independent existence apart from the
business to which it is attached it is local in character and divisible; if
the business is carried on in several countries a separate goodwill
attaches to it in each. So when the business is abandoned in one
country in which it has acquired a goodwill the goodwill in that
country perishes with it although the business may continue to be
carried on in other countries."
 Nature of Interest Protected
Goodwill of Business, etc protected
as a form of property

Distinctive name, sign, get-up, advertisement etc, used

in, and associated with the business a l.e., A BADGE used
in the Business, and therefore, part of the goodwill

If these are used by others, there will be a risk

of confusion — passing off
 The Classic and the Extended Form of
Passing Off
• Reddaway v. Banham [1896] AC I99
• - Example of the classic form of passing off, i.e.,
misrepresenting one's own goods as the goods of someone
else “Camel-hair belting”.
• - Spalding Bros. v. Gamage (1915) 32 RPC 273
• - The plaintiffs, who were manufacturer of footballs and other
athletic goods, sued the defendants for passing off certain of
the plaintiff old and discarded stock of footballs as and for
their new and improved balls. The balls called "Orb" had been
sold to a firm of waste-rubber merchants as scrap and a new
and improved ball was made and sold by the plaintiffs as the
"lmproved Orb". The defendants acquired from the waste-
rubber merchants the ball which they had so acquired and
advertised and sold them under the name of "Improved Ord“.
The Classic and the Extended Form
of Passing Off
• The significance of this decision in the law of passing-off lies
in its recognition that misrepresenting one's own goods as the
goods of someone else was not a separate genus of
actionable wrong but a particular species of wrong included in
a wider genus.
• Spalding v. Gamage led the way to recognition by judges of
other species of the same genus, as where although the
plaintiff and the defendant were not competing traders in the
same line of business, a false suggestion by the defendant
that their businesses were connected with one another would
damage the reputation and thus the goodwill of the plaintiff's
business.
The Classic and the Extended Form
of Passing Off
• Different quality.
• Robinson v. Wilts United Dairies [1958] RPC 94
• The Court Appeal held that there was passing off
where the defendants sold old and deteriorated
second-hand stock of the plaintiffs‘ condensed milk
as the latter‘s current product.
• Wilkinson Sword Ltd v. Cripps & Lee [1982] FSR l6
Razor blade for American market - sold in UK
• Lower quality
The Classic and the Extended Form
of Passing Off
• Trade Name.
Harrods Ltd v. R Harrod Ltd (1924}41 RPC 74
• - Plaintiffs were a long established and well known company
carrying on business in London and elsewhere. The company's
business includes a banking department, but they were precluded
by their Article of Association from carrying on business as money
lender.
• One Winicour registered the defendant company under the fancy
name R. Harrod Limited with the object of carrying on the business
of a registered moneylender. Shortly afterwards they commenced
advertising in the newspapers‘
• - In one advertisement, the defendants used the term "House of
Credit" whereas the plaintiffs were in the habit of using the
expression "House of Quality".
The Classic and the Extended Form
of Passing Off
• Trade Name
• Harrods Ltd v. R Hal-rod Ltd ( I924) 41 RPC 74
• The plaintiffs applied for interlocutory injunction to restrain the;
defendants from using the name R Harrod Limited or under any
other name comprising the word Harrod likely to mislead the
public into belief that the defendant comp[any was connected
with the plaintiff company or that the business of the defendant
company was the same as or in any way connected with the
business of the plaintiff company.
• It was held by the Court of Appeal that the defendant's name
was chosen fraudulently and that such choice was an impudent
attempt to get some advantage from the similarity with the
plaintiffs namef' An interlocutory injunction was granted.
 The Classic and the Extended Form
• Trade Name.
of Passing Off
• Office Cleaning Services Ltd v. Westminster Window & General Cleaners,
Ltd (1946) 68 RPC 39
• H/Lords Plaintiffs and defendants both carried on the business of
cleaners; the plaintiffs having traded under the style of "Office Cleaning
Services" since their incorporation in 1930. The defendants had traded
under the style of “Westminster Cleaning" since 1933 but in 1942 they
commenced to trade as "Office Cleaning Association".
• Held that where the name of a business consists of word descriptive of
that business, and which have not acquired a secondary meaning, a slight
difference between the plaintifi's‘ and defendants‘ title will, in the
absence of fraud, be a sufficient distinction.
• That the distinction between the two titles was sufficient to distinguish
the respective business. That the plaintiffs could not obtain a monopoly in
such a title merely by reason that there was a risk of confusion between
the plaintiff and defendant
The Classic and the Extended Form
of Passing Off
• - Get-Up
• - The same principle applies where a plaintiff seeks to found a
passing off action upon his reputation or goodwill in a particular
get-up‘
• Usually this will be in respect of goods but there is no reason why a
particular get-up should not be associated with the delivery of a
service or with the general conduct of a business‘
• ' Again, it is necessary that the get-up be distinctive so as to
distinguish the plaintiffs goods etc. from other of the same kind.
Provided he can do that there do not seem to be any real limit as to
what a plaintiff may claim as his get-up.
• - Example - particular packaging of his goods the same or
decoration‘ of a bottle or container, the colouring of his products,
even the decor of his restaurant
The Classic and the Extended Form
of Passing Off
• Get-Up
• Coca-Cola Co. v. A.G. Barr & Co. Ltd [1961] RFC 387, Court 0f
Session, Scotland
• The petitioners had for many years manufactured and sold on
a very large scale a non-alcoholic effervescent drink in bottles
which they allege were distinctive in that they had a waist,
carried no label and had fluting.
• For some months the respondents had been suing a bottle of
similar size which had and a waist, but no label, for the sale of
beverages called "Kolabar", "Cydrap" and "Stilkrush“. The last
two drinks were distinguishable in colour from "Coca Cola, but
both "Coca-Cola and ’Kolabar" were of the same dark brown
translucent colour.
The Classic and the Extended Form
of Passing Off
• Get-Up ' Coca-Cola Co. v. Barr & Co. Ltd [196i] RPC 387
• ' Per Lord Walker at page 388, "In this petition the Coca-Cola Company
seek to interdict AG. Barr and Company Limited from passing off as and for
the petitioners‘ product soft drinks not of the petitioners product by
supplying or selling the same for consumption in the United Kingdom in
bottles having the same distinctive shape used by the petitioners for the
sale of Coca-Cola
• The distinctive shape of the petitioners‘ bottle is that it has a waist, that it
bears no label and that it has fluting. ….The two bottles which have been
placed before me are similar although no identical in appearance. I think
the petitioners have made out a prima facie case that the bottle used by
the respondents for containing their Kolabar might well be mistaken by
members of the public for the petitioners‘ bottles containing their Coca-
Cola.
The Classic and the Extended Form
of Passing Off
• Get-Up
• Coca-Cola CO. v. A.G. Barr & Co. Ltd [1961] RPC 387
• A large part of the resemblance, however, resides in the‘
colour of the contained liquid, the petitioners‘ Coca-Cola and
the respondents‘ Kolabar, both of which might be described
as being a dark brown translucent liquid.
• Now Mr Grieve for the respondents has intimated that
instructions have been issued by his clients this morning to
cease bottling their Kolabar in the type of bottle resembling
the petitioners‘ bottle, and that position will continue until
the decision in this case. That instruction‘ having been given,
and I accept it as having been given, dispenses to a large
extent with the need of the petitioners for protection by an
interim interdict.
The Classic and the Extended Form
of Passing Off
• Advertising Campaign.
• Cadbury Schweppes Pty Ltd and others v Pub Squash Co Pty Ltd
[I981] I All ER 213, [[1981] RPC 429, Privy Council
• ln l974 the appellants began marketing in Australia a lemon drink
called 'Solo‘. The drink was sold mainly in cans similar to those used
for beer and was presented as an alternative to beer. The cans had
a distinctive colour and a medallion device similar to that which was
common on beer cans. The marketing of Solo was accompanied by
an intensive national television and radio advertising campaign
emphasising Solo as a drink associated with rugged masculine
endeavour and evoking memories of the sort of squash drink hotels
and bars used to make in the past. * The campaign, which, with a
short break in 1974, continued until 1977, had a remarkable impact.
By early 1975 Solo was selling well.
The Classic and the Extended Form
of Passing Off
• Advertising Campaign.
• Cadbury Schweppes Pty Ltd and others v Pub Squash Co Pty Ltd
• In 1975 the respondent launched a similar product called ‘Pub Squash‘.
Pub Squash was sold in cans of the same type and colour as those in which
Solo was put up and they also had a medallion device on their label.
• The marketing of Pub Squash was accompanied by a similar but more
modest television campaign which also used the theme of masculine
endeavour.
• In 1976 the appellants noticed a l5% drop in the sales of S010 which they
believed was caused by the advert of Pub Squash and the manner in which
the respondent had deliberately taken advantage of the appellants‘
advertising campaign for Solo.
• The appellants accordingly brought proceedings against the respondent
claiming, inter alia, damages or an account of profits and an injunction in
respect of the passing off of Pub Squash as Solo.
 The Classic and the Extended Form
• Advertising Campaign.of Passing Off
• Cadbury Schweppes Pty Ltd and others v Pub Squash Co Pty Ltd
• The Supreme Court of New South Wales dismissed the appellants‘ claim on the
ground that the respondent had sufficiently distinguished its goods from those
of the appellants‘ and that although the respondent had deliberately taken
advantage of the appellants advertising campaign it had not misrepresented its
goods as those of the appellants‘. The appellants appealed to the Privy Council.
• Held (i) The tort of passing off was not anchored to the name or trade mark: of
a product or business but was wide enough to encompass other descriptive
material, such as slogans or visual images associated with a plaintiff's product
by means of an advertising campaign, if that material had become part of the
goodwill of the plaintiffs product, the test of which was whether the plaintiff
had acquired an intangible property right for his product by virtue of
theIproduct deriving from the advertising a distinctive character recognised by
the‘ market, and in applying that test the court had to bear in mind the
balance to be maintained between the protection of plaintiff‘s investment in
his product and the protection of free competition.
The Classic and the Extended Form
of Passing Off
• Advertising Campaign.
• Cadbury Schweppes Pty Ltd and others v Pub Squash Co Pty Ltd (2)
• On the facts, the judge was entitled to find that the two themes used by
the appellants in their radio and television advertising campaign, although
descriptive of the type of product advertised, had never become a
distinguishing feature of the product or generally associated with it,
• Although the respondent in promoting Pub Squash had deliberately taken
advantage of the appellants‘ advertising campaign for Solo the consuming
public were not deceived or misled by either the get-up, the formula or
the advertising of Pub Squash into thinking that Pub Squash was the
appellants‘ product.
• The judge was consequently entitled to conclude that the appellants. had
not established a cause of action in tort for passing off against the
respondent, and it followed therefore that the appeal would be dismissed
 The Classic and the Extended Form
of Passing Off
• Advertising Campaign.
• McDonald's Hamburgers Ltd v. Burgerking Ltd [1986] FSR 46;
[I987] FSR I12 The defendants, in an effort to increase its market
share employed a new marketing strategy aimed at inter alia, the
customers of the plaintiffs - the flagship of the plaintiffs‘ range
being the "Big Mac". The defendants caused advertisements in
the form of a card bearing the words "It's Not Just Big, Mac." to
be displayed in underground train compartments.
• It was held by the judge that because of the prominencg of the
defendants’ logo, potential customers might be le into thinking
that there was an association between the "Big Mac" and the
defendants.
• Interlocutory injunction granted.
Exclusivity of Reputation to Shared
Reputation
• Bollinger v. Costa Brava Wines Co. Ltd
• Danckwerts I 1959] 3 All ER 800 at 810-81 1, [1960] Ch 262 at 284
• “There seems to be no reason why such license [to do a deliberate act
which causes damage to the property of another person] should be given
to a person, competing in trade, who seeks to attach to his product a
name or description with which it has no natural association so as to make
use of the reputation and goodwill which has been gained by a product
genuinely indicated by the name or description. In In my view, it ought not
to matter that the persons truly entitled to describe their goods by the
name and description are a class producing goods in a certain locality, and
not merely one individual.
• The description is part of their goodwill and a right of property. I do no&
believe that the law of passing off, which arose to prevent unfair trading, is
so limited in scope."
Exclusivity of Reputation to Shared
Reputation
• Bollinger v. Costa Brava Wines Ltd [1960] RPC 16', [1961] RPC I 16 (The
"Spanish Champagne" case)
• The plaintiffs were wine makers from the Champagne district in France
who sought to restrain the defendant from passing off its sparkling wine
as "champagne" or "Spanish Champagne".
• There was a very considerable goodwill that subsisted in the name
"Champagne" as applied to wine produced in that area. However, there
were a considerable number of other wine makers in the district who also
used the name to describe their wines‘
• They have not been joined in the action and the defendant objected that
the plaintiffs could not therefore show that the name "Champagne" was
exclusive to their products.
 Exclusivity of Reputation to Shared
Reputation
• Vina Products Ltd v. Mackenzie & Co. Ltd [1969] RPC I - Sherry case
• Sherry derived its name from the Jerez district of Spain and for centuries wines
of that area had been imported into the UK.
• However for more than a century wines similar in character had been produced
in England and in some other countries other than Spain and sold in UK either as
"Sherry type" wine or as British Sherry, Cyprus Sherry or Australian Sherry.
• In the light of the Spanish Champagne case, the producers of British Sherry etc.
asked a declaration from that court that they were entitled to describe their
wines as "British Sherry" etc.
• The sherry producers counterclaimed for an injunction to restrain the plaintiffs
from passing off wines not from the Jerez district as sherry.
• Held - The defendants were entitled to complain of the use of the word‘"Sherry"
simpliciter on wines not of the Jerez district.
• However, because of the long delay, they are deemed to have acquiesced to the
use of "British Sherry“ etc.
 False Attribution of Sponsorship.
• Sony KK v. Saray Electronics Ltd {1983] FSR 302 -
• The plaintiffs sold their goods through a network of carefully
chosen authorised dealers who were trained in the
maintenance and repair of Sony equipment. Only authorised
dealers were entitled to give manufacturer's guarantees to
customers on behalf on the plaintiffs. These features were
stressed in the plaintiffs’ advertisements.
• The defendants dealt in Sony goods but were not authorised
dealers. They have been purporting to give Sony guarantees
to customers and modifying Sony television sets in an
unsatisfactory way without pointing out to customers what
they had done.
 Contd
• Sony KK v. Saray Electronics Ltd [1983] FSR 302 - services
• At first instance, the judge accepted undertaking by the
defendantsnot to represent themselves as authorised dealers
and not to falsely represent that goods were covered by the
plaintiffs‘ guarantees, but refused the plaintiffs‘ application
for an interlocutory injunction requiring the defendants to
state expressly to purchasers of Sony goods that they were
not authorised dealers and that the goods were not covered
by Sony guarantees. The plaintiffs appealed against the
refusal to grant this relief
• Held by Court of Appeal that the defendants should be
ordered and attach disclaiming labels to Sony goods sold by
them
 Reverse Passing Off
• Plomien Fuel Economiser Co. Ltd v. National School of salesmanship Ltd
(1943) 60 RFC 209
• Per Lord Greene MR for the Court of Appeal, at pages 213-2 l4, . "The
plaintiffs are manufacturers of a fuel economiser, which had been
marketed under the name "Plomien". The defendants, who at one time
acted as sale agents for the plaintiffs, and later, I think, became
themselves purchasers from the plaintiffs, re-selling at a profit to
themselves, broke that relationship and started themselves to market an
economiser which was manufactured for them. It was in respect of their
transactions in connection with the marketing of that economiser that the
passing off action was brought. The defendants had been engaged in a
deliberate attempt to deceive, by putting forward their economiser as
being the same as the plaintiffs’: The manner in which that intention was
carried out was by a campaign of advertising, in which statements were
made which were deliberately untrue.”
 Reverse Passing Off
• Plomien Fuel Economiser Co. Ltd v. National School of Salesmanship Ltd (1943) 60
RPC 209
• ...they represented that certain tests which had been made were tests in
connection with the defendants: economiser, whereas in fact they were tests in
connection the economlser. They represented that certain economisers which had
been fitted for a number of purchasers, and which were in fact the plaintiffs‘
economisers‘ were the defendants‘ economisers, and in the correspondence
which took place when they were negotiating an order or had obtained an order
for a trial, they repeated in the most barefaced and dishonest manner that
suggestions, stating‘ that a‘: number of customers, said to be satisfied customers,
were customers for their article, whereas in fact they were customers who had
ordered, and were satisfied with, the plaintiffs’ article.
• Now in the present case what was it that these defendants did? They deliberately
induced customers to come to their shop for the purpose of purchasing goods of
the same manufacture as those supplied to the satisfied customers named on the
list which they circulated.
 Contd
• That was quite clearly their intention, because otherwise what was the use of
circulating that list? It could have had no other purpose that that - to induce
people to come to their shop with the intention of obtaining goods of the same
manufacture as had been supplied to those customers. Having got them in their
shop, what did they do‘?
• “... They did not sell these customers the goods which these customers had
come to buy; they sell them goods of their own, manufacture, which are quite
difi‘erent, in the sense that they are not of the required manufacture.
• If that is not passing off, I really do not know what is‘ It is perfectly true, and I
am willing to assume, that not one single customer who went to the shop had
ever heard of the plaintiff or ever heard‘ that they put on the market an
economiser.
• That, to my mind, matters not one bit when it is realised that those customers
were coming with the intention of getting goods from a particular source,
namely, the same source as those from which the satisfied customers had got
their goods."
 Reverse Passing Off
• Copydex Ltd v. Noso Products Ltd ( I952) 69 RPC 38
• The plaintiffs and defendants were manufacturer of rival products
of an adhesive substance. The plaintiffs‘ product and process were
demonstrated on television, although the name of the product was
not mentioned.
• Vaisey J. at page 39, "It seems to me, looking atthe matter in a
common sense way, that the people who saw this stuff being sold,
and who had previously seen the demonstration on television,
woulcl have said at once, "That is what we saw on the television
screen. We will have some."
• In point of fact it was not the stuff that they have seen
demonstrated on the television screen, and to that extent orders
have been given to the defendants for their products which might
have gone to the plaintiffs for their products."
 Ingredients of Passing Off*
• Erven Warnink BV and others v .I Towncnd & Sons (Hull) Ltd and others
[I979] AC 731, [1979] 2 All ER 927, HL Per Lord Diplock at p 93 - "My Lords,
Spalding v. Gamage and the later cases make it possible to identify five
characteristics which must be present in order to create a valid cause of
action for passing off:
• (I) a misrepresentation
• (2) made by a trader in the cause of trade,
• (3) to prospective customers of his or ultimate consumers of goods
services supplied by him,
• (4) which is calculated to injure the business or goodwill of another trader
(in the sense that this is a reasonably foreseeable consequence) and (5)
which causes actual damage to a business or goodwill of the trader by
whom the action is brought or (in a quia time! action) will probably do so
 Ingredients of Passing Off*
• Erven Wamink BV and others v I Townend 8: Sons (Hull) Ltd and others
[1979] AC 73 1, [I979] 2 Ali ER 927. HL Lord Fraser at pages IDS-I06: "It is
essential for the plaintiff in the passing off action to show at least the
following facts: (1) That his business consists of, or includes‘ selling in
England a class of goods to which the particular trade name applies.
• (2) That the class of goods is clearly defined and that in the minds of the
public, or a section of the public, in England, the trade name distinguishes
that class form other similar goods; (3) That because of the reputation of
the goods, there is goodwill attached to the name; (4) That he. the
plaintiff, as a member of the class of those who sell the goods_ is the
owner of goodwill in England which is of substantial value; (5) That he has
suffered‘ or is likely to suffer‘ substantial damage to his property in the
goodwill by reason of the defendants selling goods which are falsely
described by the trade name to which the goodwill is attached.
 Ingredients of Passing Off*
• - The classical TRINITY as applied in Reckitt & Colman Products Ltd. v.
Borden Inc. ors. [1990] RPC 341 (The JIF Lemon case), per Lord Oliver, at
page 406
• "The law of passing off can be summarised in one short general
proposition - no man may pass off his goods as those of another. More
specifically, it may be expressed in terms of the elements which the
plaintiff in such an action has to prove in order to succeed. These are
three in number. First, he must establish a goodwill or reputation attached
to the goods or services which he supplies in the mind of the purchasing
public by association with the identifying "get-up" (whether it consists
simply of a brand name or a trade description, or the individual features of
labelling or packaging) under which his particular goods or services are
offered to the public, such that the get-up is recognised by the public as
distinctive specifically of the plaintiffs goods or services.
 Ingredients of Passing Off*
• The classical TRINITY as applied in Reckitt & Colman Products Ltd. v. Borden
Inc & [1990] RPC 34] (The JIF Lemon case), per Lord Ohver1 at page 406
• "Secondly, he must demonstrate a misrepresentation by the defendant to the
public (whether or not intentional) leading or likely to lead the pubhc to
believe that goods or services offered by him are the goods or services of the
plaintiff. Whether the public is aware of the plaintiffs identity as the
manufaclurer or supplier of the goods or services is immaterial, as long as
they are identified with a particular source which is in fact the plaintiff. For’
example, if the public is accustomed to rely upen a particular brand name in
purchasing goods of a particular description, it matters not at all that there IS
little or no public awareness of the identity of the proprietor of the brand
name
• Thirdly, he must demonstrate that he suffers or, in a quiet timet action that he
is likely to suffer, damage by reason ofthe erroneous belief engendered by the
defendant's misrepresentation that the source of the defendant's goods or
services is the same as the source of those offered by the plaintiff"
 Reputation : Definition
• The Commissioners of Inland Revenue v. Muller & C0.'s
Margarine Ltd [[901] AC 217, per Lord McNaghton, at 223: i
• “It is a thing very easy to describe, very difficult to define. It is
the benefit and advantage of the good name, reputation and
connection of a business. It is the attractive force which brings
in custom. It is the one thing which distinguishes an old-
established business from a new business at its first start. The
goodwill of a business must emanate from a particular centre
or source. However widely extended or diffused its influence
may be, goodwill is worth nothing unless it has power of
attractions sufficient to bring customers home to the source
from which it emanates)‘
 Reputation : Length of User
• Stannard v. Reay [I967] RPC 589
• The plaintiffs commenced business with a mobile fish and chips van
under trade name MR CHIPPY in October I966 throughout the Isle
of Wight. The defendant independently had the idea to embark on
a similar kind of business and in November I966 began to trade with
a van also bearing the name MR CHIPPY.
• The plaintiff sought an interlocutory injunction. The defendants
argued that there was no evidence that the plaintiffs had acquired
any goodwill to be protected.
• It was held that even though the plaintiffs had only traded for about
three weeks, there was evidence of substantial taking by the
business which fell when the defendants commenced trading It was
not impossible for goodwill‘ in a new kind of business to be built up
in a short period of time. An injunction was granted.
 The need to establish reputation
• The need to establish reputation
• Bulmer Ltd & Showerings Ltd v, Bollinger [1978] RPC 79 at 94, 95
• per Buckley L.J at page 93 line 41 - " This proprietary right
recognised by the law is not a right in the name, mark or get up
itself: it is a right in the reputation or goodwill of which the name,
mark or get-up is the badge or vehicle... Upon analysis, it seems to
me clear that in principle this must be so. If B has made use of a
name, mark or get-up which has become distinctive of A's goods, B
does not damage or interfere with A's right or ability to use that
name, mark or get-up but he does, or may be likely to damage A in
respect of his trade, that is to say, in respect of his, A's enjoyment
of an exclusive right to make use on‘ the market of the reputation
of his goods. What is damaged or liable to be damaged is that
reputation. It is that which A is entitled to have protected."
 Reputation
• Types of user to be shown
• Turner v. General Motors (Aust.) Pty Ltd (I929) 42 CLR 352
• Use of the name "General Motor" by the defendant in his
secondhand car business. Numerous newspaper announcements
stating that the plaintiff company is to replace the business of the
former subsidiary company and that it will be involved with full
assembling of cars and distribution to agents. Per Knox C]. at page
360, "... I think the facts referred to by my brother Dixon in the
reasons which he is about to publish show that before the
appellants began to use the words in question in the manner
complained of, the respondent Company had done sufficient in the
direction of establishing and carrying on its‘ business to entitle it to
maintain an action in passing off, independently of any right of the
American Corporation.
 Reputation
• Types of user to be shown
• British Broadcasting Corporation v. Talbot Motor Co. Ltd {1981] FSR 228
The BBC had been experimenting with a information system capable; of
being received in a vehicle by a special or adapted car radio The system
was named "CARFAX"
• Though the system had not yet been put into operation, considerable
preparatory work had been carried out with this view In mind. The
scheme had received publicity on the television, in the trade press and at
the I980‘ Motor Show
• The D, who were motor vehicle manufacturer, wished to use the name
CARFAX in relation to vehicle spare part service It was held by the judge
that there was ample evidence that a significant part of the public knew
about the name CARFAX as distinctive of the BBC's system. The fact that
the scheme had not yet been launched did not prevent the BBC from
building up goodwill in it which was entitled to protection. lnterlocutory
injunction granted.
 Reputation
• Types of user to be shown
• British Broadcasfing Corporation Talbot Motor Co Ltd FSR 228 Per Megarry V.C,
at page 233, begin with the goodwill claimed by the BBC to have been built up
in CARFAX as applied to their schemes, Although that scheme has not yet been
launched, that does not prevent the BBC from having built up goodwill in it
which is entitled to protection
• Here, there is ample evidence that a significant part of the public knew about
the name CARFAX as distinctive of the BBC's system This, l think, is clearly
established by many affidavits and letters, many articles and references in
newspapers and periodicals, a television programme broadcast in the "Top
Gear" programme in March 1980 which is estimated to have been seen by
some 3 million people, and the distribution of over I00000 copies of
"Radiomobile News" and a broadsheet at the Motor Show in October I980, and
the results of some market research in the Birmingham area on behalf of Talbot
themselves show that even if the sample was a true sample, which Mr Merritt
did not accept, some 1.2 million of the population of this country knew of the
BBC's CARFAX system. "
 Reputation

• Proof of reputation
• Use of: evidence of sales and turnover within the jurisdiction
• evidence of advertising and the extent of, nature and frequency of
these
• oral or affidavit evidence of persons who have bought or have dealt in
or know of the plaintiffs product
• the number of branches or outlets for the plaintiffs product or
business and their geographical spread
• the length of time over which the plaintiff‘ has traded and/or
advertised his products or business within the jurisdiction
• evidence of any exhibitions or show at which the piaintiff has
promoted his products.
• survey evidence.
 Reputation
• Distinctiveness of the Plaintiffs name, mark or get-up
• In establishing his reputation, it is not enough for a plaintiff to
point to the duration and extent of his user of his name etc.;
he must also show that it has become distinctive of his goods
etc‘ in the sense that it distinguishes these from others of the
same type in the market.
• This does not mean that the goods etc. bearing the name etc.
must; specifically identify the plaintiff as the source of those
goods etc
• In many cases, the identity of the supplier will remain
unknown; what is important is that a significant number of
consumers in that market identify the plaintiffs goods etc. as
coming from; some one trade source.
 Reputation
• Distinctiveness of the Plaintiffs name, mark or get-up
• - The Binningham Vinegar Brewery Co. Ltd v. Powell [I897] AC
710, (1897) RPC 720 I
• - Lord Herschel] at page 730 line I, " I think the fallacy of the
Appellants argument rests on this: that it is assumed that one
trader cannot be passing off his goods as the manufacture of
another unless it be shown that the persons purchasing the
goods know of the manufacturer by name, and have in their
mind when they purchase the goods that they are made by a
particular individual It seems to me that one man may quite
well pass off his goods as the goods of another if he passes
them off to people who will accept them as the manufacture of
another, though they do not know that other by name at all."
 Reputation
• Distinctiveness of the Plaintiffs name, mark or get-up
• Morning Star Co-op Soc. Ltd v. Express Newspapers [1979] FSR 113
• The plaintiff had since l966 published a national morning daily‘ newspaper
under the title MORNING STAR of continental broadsheet size, It contains
mainly news column and reflecting communist or lefl-wing political views.
It has a daily circulation of 2 1,000 copies in the UK and was usually
obtainable ag news vendors only if ordered in advance.
• The defendant proposed to publish a new national daily morning
newspaper under the title DAILY STAR. It was to be a "popular" tabloid
designed to compete with the SUN and the DAILY MIRROR with an initial
circulation of one million copies. The front page was to consist mainly of
large headlines; the paper was to contain pictures of female models as
one of its principal features. The plaintiff sought an interlocutory
injunction on ground of passing off.
 Reputation
• - Distinctiveness of the Plaintiffs name, mark or get-up
• - Morning Star C0-op Soc. Ltd v. Express Newspapers [1979]
FSR 113
• - Held: The word STAR was in the case of newspapers a
descriptive rather than a fancy or distinctive word.
• - Per Foster J, at page H7, after comparing the various
differences between the two newspapers, "These differences
lead me to answer the question whether the plaintiffs have
any real chance of succeeding at the trial in the negative, and
without any analysis such as I have just given if one puts the
two papers side by side I for myself would feel that the two
papers are so different in every way that only a moron in a
hurry would be misled."
 Reputation
• Distinctiveness of the Plaintiffs name, mark or get-up
• McCain International Ltd v. Country Fair Foods Ltd [1981] RPC 69 In [975
the plaintiffs introduced into the UK market a novel product- chips which
could be cooked in the oven or baked under the grill and sold the product
under the name ‘McCain Oven Chips"
• In 1980 the defendants sought to launch their version of the product
under the names "Country Fair Oven Chips" and "Birds Eye Oven Chip".
The defendants appealed against the interlocutory injunction on the
ground that the name "Oven Chip" was descriptive of the product.
• In allowing the appeal it was held that as the plaintiffs had consistently
advertised and sold their product under the name “McCain oven chips"
this was strong evidence that the name “oven chip" was descriptive of the
product and the name "McCain" indicated the source of origin of the
product
 Reputation
• Distinctiveness of the Plaintiffs name, mark or get-up
• McCain International Ltd v. Country Fair Foods Ltd [1981] RPC 69
• Further, while a descriptive term may acquire a secondary meaning, the
period in the present case was far too shor1 for such a secondary meaning
to have been acquired, particularly in view of the plaintiffs‘ constant
reference to their product as "McCain oven chip". That where a person
introduces a new product to the market, gives it a name descriptive of the
product and has a monopoly, whether legal or de facto, in that product he
cannot claim a monopoly in that name. He can only require that other
persons who make the same product distinguish their products by
appropriate means.
 Reputation
• Secondary Meaning
• Reddaway v. Banham [[896] AC 199
• The plaintiffs brought an action to restrain the defendants from selling
machine belting as "Camel-hair Belting" so as to lead purchasers to
believe that the belting was of the plaintiffs manufacture, and from
passing off their goods as the plaintiffs‘. The plaintiffs alleged that "Camel-
hair Belting" meant exclusively their goods. The defendants alleged that
their belting was made substantially of camel hair and that they were
entitled to describe it as such.
• It was held by the House of Lords that when word which are descriptive of
an article has come to denote the goods of a particular manufacturer, he is
entitled to restrain others from using them so as to deceive purchasers,
notwithstanding that the words are a description of the goods. The
plaintiffs are entitled to an injunction.
 Reputation
• Secondary Meaning - Reddaway v. Banham [1896] AC I99
• - Per Lord Herschel] at page 230, ''In the present case the jury have. found,
and in my opinion there was ample evidence to justify it, that the words
"Camel Hair" had in the trade acquired a secondary signification in
connection with belting; that they did not convey to persons dealing in
belting the idea that it was made of camel hair, but that it was belting
manufactured by the plaintiffs. They have: found that the effect of using
the words in the manner in which they were used by the defendants
would be to lead purchasers to believe that they were obtaining goods
manufactured by the plaintiffs, and thus both to deceive them and to
injure the plaintiffs. On authority as well as on principle, I think the
plaintiffs are, on these facts, entitled to relief."
 Reputation
• Word becoming generic
• There is also a possibility that words, once distinctive
of the plaintiffs’ goods etc, may have become so
well-known as to have become a generic description
for all goods etc of that type. If this is s. then the
reverse process will have occurred. The word's
distinctiveness has become dissipated and it has
become purely descriptive.
• Linoleum Co. v. Naim (l878) 7 Ch D 834 Linoleum
descriptive or generic, no more distinctive
 Reputation
• Mark Distinctive • Mark Descriptive
• Consumers regard the • Consumers regard
mark as indicating a the mark etc as
particular manufacturer describing the type
etc. of goods sold etc
• Regarded as a badge • Not protected
of business-therefore under the law of
reputation established passing off

• Descriptive mark
• Distinctive mark
acquiring a secondary
becoming generic
meaning
• Consumers regard the
• Consumers regard the
mark etc as
mark as indicating a
describing the type of
particular manufacturer
goods sold etc
etc
• Therefore not
• Therefore distinctive
distinctive anymore
• Protected under the law
• Not protected under
of passing off
the law of passing off
 Reputation
• Cessation of Business — Residual Goodwill
• Ad-Lib Club Ltd v Granville [1972] RPC 673
• Pennycuick V-C. , “The basis of the present action, to quote the words of Lord
Parker of Waddington in A G Spalding Brothers v A W Gamage Ltde (I915) 113
LT I98, All ER Rep 147, is a proprietary right not so much in the name itself but
in the goodwill established through use of the name in connection with the
plaintiffs establishment l have no doubt that on the evidence the plaintiff
company had by the end of I965 established a substantial goodwill to which the
name Ad-Lib Club was attached and that name had become distinctive of the
plaintiff company's establishment. It follows beyond a doubt that if at the end
of I965 and other person had sought to use the name Ad-Lib in connection with
a club of this character that would have been a plain invasion of the plaintiff
company's goodwill. The question which is raised by the present action is
simply whether by the interval of some five years which has passed since the
plaintiff company's club was closed the plaintiff company must be regarded as
having ceased to have any goodwill to which this name could fairly be said to be
attached…
 Reputation
• Cessation of Business — Residual Goodwill - Ad-Lib Club Ltd v. Granville
[1972] RFC 673
• ~ Pennycuick "lt seems to me clear on principle and on, authority that
where a trader ceases to carry on his business he may nonetheless retain
for at any rate some period of time the goodwill attached to that business.
Indeed it is obvious. He may wish to re-open the business or he may wish
to sell it. It further seems to me clear in principle and on authority that so
long as he’ does retain the goodwill in connection with his business he
must also be able to enforce his rights in respect of any name which is
attached to that goodwill. It must be a question of fact and degree at what
point in time a trader who has either temporarily or permanently closed
down his business should be treated as no" longer having any goodwill in
that business or in any name attached to it which he is entitled to have
protected by law.
• Local and concurrent reputation - expanding business –
• Evans v. Eradicure Ltd [1972] RPC 808
• The plaintiff is in the wood preservation business in Kent and
trades under the business name ERADICARE (before the
defendants started business). The defendants are a limited
company and incorporated under the name "ERADICURE
limited.They built up their business in the Welling and Bexleyl
Heath areas. The names of the business were chosen honestly
and independently. As their business grew, the plaintiff
expanded westwards and the defendants expanded
eastwards with the result that they clash. The plaintiff move
for interlocutory relief.
• Local and concurrent reputation - expanding business
• Evans v. Eradicure Ltd [1972] RPC 808
• Per Goff J,It is a novel problem where the plaintiff acquires a reputation in
a limited area and at the same time another person is acquiring a like
reputation in a nearby area. whether when they come to clash the plaintiff
in those circumstances has any remedy against that defendant at all. It
may be that he has, although logically it would seem, if the plaintiff is
right, that the defendant would then be restrained altogether, and yet that
would hardly appear to be a correct conclusion
• It may well be that the answer is in such circumstances that there is a
stalemate and, unless the parties can resolve the matter by agreement.
neither can obtain relief against the other and each may take the name he
has used and in respect of which he has acquired the reputation into the
alleged territory of the other. I do not say, of course, that he will not
proceed at the trail, but he has not in my view discharged the onus upon
him that he has to discharge in order to obtain interlocutory relief."
• Reputation in different field of activity
• Lego System v. Lego M. Lemelstrich Ltd {I983} FSR I55
• Per Falconer L at pages "As I have already stated… the plaintiff have extensively used
that trade mark LEGO in this country and have built up a high‘ reputation in it as
denoting their products - indeed I consider Mr Aldous is justified in his claim that Lego
has become a household word - of course, as indicating the plaintiffs‘ products."
• At pages 185-] 86, “My finding that the use by the defendants of the trade mark or
name LEGO on or In relation to their products would mislead a very substantial number
of persons into thinking that those products were the goods of the’ plaintiffs or of a
company or concern associated or connected wnh the plaintiffs…. establishes, in my
judgment the presence in the case of characteristics (1) (2) and (3) of the five necessary
characteristics of Lord Diplock‘s formulation. However, as l have indicated, the
defendants‘ case is essentially that the parties are in very different fields and the
respective goods of the plaintiffs (toys such as construction sets and building bricks) and
those of the pendants (irrigation equipment, particularly for gardens) are so far apart
that there could be no misrepresentation, actionable misrepresentation, or any damage
or likelihood of damage by the defendants‘ use of Lego on their goods.
 Need for Trading / Commercial
Activity
• Day v. Brownrigg [1878] Ch D 294
• The plaintiffs‘ house had been called "Ashford
Lodge" for 60 years and the defendant's adjoining
house had been called "Ashford Villa" for 40 years.
For some unexplained reason, the defendant
changed the name to "Ashford Lodge". The plaintiffs
sued to restrain the defendant from continuing to
use the name of their house.
• Held the alleged act of the defendant was not a
violation of any legal right of the plaintiffs and and
there being no allegation of malicious intention
Passing Off — The Defendant’s Act

• Effect of the defendant's act

• The misrepresentation by the defendant alone is not enough.
• The weight of authority requires more than the making of a
false representation, i.e. that the misrepresentation has the
effect of deceiving or causing confusing consumers or that
there is a probability of such deception occurring.
• So the end result of the confusion or deception must be that]
consumers think that the defendant's goods etc. are those of
the plaintiff or at least connected with him.
• Example - even if a get-up was copied, but if there was no
deception, then there is no liability in passing-off
 The D’s Act
• Proof of deception or confusion - The overall conduct of the
defendant
• Need to consider likely purchasers or customers
• lt is also important to look at the type of persons who will be
the likely purchasers or users of the plaintiffs goods etc.. This
will depend very much upon the nature of the goods, etc. and
the way in which they are commonly marketed. For e. g.
• In the newspaper and magazine cases, the courts have often
regarded the likely consumers as being more knowledgeable
and discriminating and therefore not liable to be confused or
deceived by the defendant's use of a similar name,
particularly if the papers are in other ways different.
 The Defendant’s Act
• Proof of deception or confusion - The overall conduct of the
defendant
• It is important to look at the overall conduct of the defendant. Is
this, as a whole, confusing or deceptive, or are there aspects of it
which balance or cancel out the false representation.
• For example, the simple use of a name or mark may not be
deceptive or confusing if combined with other material
contributed by the defendant, such as other marks, decoration or
get up.
• In particular, if the defendant has taken care to distinguish his
goods etc. in some other way, then he may not be engaging in
deceptive or confusing conduct. This is often the case with
descriptive or geographic words and mark; in such instances,
courts will usually hold that a defendant is not liable for passing
off.
 The Defendant’s Act

• The General Recollection test and the Doctrine of "Imperfect Recollection"

• On the other hand where similar names and marks are concerned, it
should be remembered that customers will rarely see the two side by side
and thus allowance should be made for imperfect recollection. Thus in
many case, all that a consumer may remember is the central feature or
"idea" of the plaintiffs mark or gel-up, such as key-words, a particular
colouring or device. A defendant who incorporates this in the marketing of
his product will be likely to deceive or confuse, however many other
differences there are in relation to peripheral matters.

• Hoffman-La Roche & Co v DDSA Pharmaceuticals [1972] RPC l Distinctive

black and green capsules - passing off found even though both parties
used their own names.
 Passing Off - Defences
• No misrepresentation / confusion,
• mark not distinctive,
• Concurrent reputation,
• Not involved in commercial activity
• Bona use of own names
 Defences : No misrepresentation
• McD0nald’s failed in its attempt to monopolise the prefix
“Mc”
• McCurry Restaurant (Kl) Sdn Bhd v. McDonald’s Corporation
[2009] 3 CLJ 540
• The plaintiff, the respondent herein, was the proprietor and
operator of McDonald’s chain of restaurants worldwide. The
defendant, the appellant herein, offered lndian and other
Malaysian cuisine under the name of “Restoran McCurry” or
“McCurry Restaurant”. The plaintiff successfully brought an
action against the defendant for passing off in relation to the
defendant’s usage of the prefix “Me” (See High Court case
[2008] 9 CL] 254]. On the defendant’s appeal.
 “Mc”
• On the facts, the Court of Appeal held :
• l) Different style and get-up
• The defendant’s presentation of its business was in a style and get-up
distinctively different from that of the plaintiff. The plaintiffs get-up
consisted of a distinctive golden arched “M” with the word “McDonald’s”
against a red background. The defendant‘s signboard carried the words
‘Restoran McCurry” with the lettering in white and grey on a red
background with a picture of a chicken giving a double thumbs—up and
the wordings “Malaysian Chicken Curry”.
• (2) Different food item
• The items of food available at the plaintiffs outlets all carried the prefix
“Mc” whilst none of the items served at the defendant’s outlet carried the
prefix as evident from the defendant’s menu card. The type of food
available at the plaintiff’s outlets too differed from that the defendant’s.
The latter sewed only typical Indian food whilst the former served fast
food.
 “Mc”
• 3) The “Mclndian” case distinguished - Mclndian not only sold
Indian food but also Southern fried chicken, cheeseburgers, French
fries and shakes which were the very items that McDonald’s sold.
• 4) Followed the Singapore Court of Appeal in McDonald's Corp v.
Future Enterprises Pte Ltd [2004] SGCA 50 [2005] 1 SLR I77 - the 2
registration of the mark “McChina” allowed (specification of goods
and services restricted to Chinese restaurants and Chinese food) 5)
The type of customers who patronised the two outlets are different
• — McCurry - mainly adults and senior citizens McDonalcl’s - mainly
children Therefore, based on the totality of the evidence the
defendant’s signboard would not result in reasonable persons
associating McCurry with the plaintifi‘ s McDonald’s mark.
• S — Subject matter protectable — Mark, name, get-up, slogan
etc '
• C — Criteria to be satisfied — The first limb of the classical
TRINITY as applied in Reckitt & Colman Products Ltd v. Borden
Inc. ors. Need to establish reputation I goodwill
• O - Ownership — The person entitled to the reputation /
goodwill ' Individual trader, company etc - Group within a
locality — Shared reputation Champagne!’
• R — Rights infringed — The second and third limbs of the
classical TRINITY as applied in Reckitt & Colman Products Ltd.
v. Borden Inc. & ors. - Misrepresentation Damage
• E — Exceptions and defences — No misrepresentation /
confusion, mark not distinctive, concurrent reputation, not
involved In commercial activity / bona of own name