PASSING OFF

Goodwill and Reputation

Goodwill v Reputation

Harrods v Harrodian School [1996]

C was proprietor of Harrods department store. D opened a preparatory school named the ‘Harrodian School’ in premises upon which the ‘Harrodian Club’ (a club originally founded for the store’s employees) had been situated. C did not run a school, nor did it ever intend to do so. Nevertheless C alleged there was passing off. Held:

Millett LJ

Harrods both:

Offers an incredible range of goods and services
Has a long-established and wide reputation for doing this

However public only associate a trader’s reputation with a limited field of commercial activity

“To be known to everyone is not the same as to be known for everything”

Only goodwill can be protected by passing off.
Thus use of Harrods name by D did not trespass on C’s goodwill.

Lego Systems [1983]

C was the manufacturer of the ‘lego’ toy. D was a manufacturer of gardening equipment including sprinklers from coloured plastic, though did not operate in UK. When D sought to expand into UK, C alleged passing off and sought injunction. Held:

C had established reputation in mark ‘Lego’ that was capable of extending far beyond toys.

i.e. was capable of extending even to items such as gardening equipment.

Thus was real risk that public would believe there was connection between C and D.

Location of Goodwill

Pete Waterman v CBS United Kingdom [1993]

C was a successful pop-music production company known to UK public as ‘The Hit Factory’. C did not trade as ‘the Hit Factory’, but had released three compilation albums of their hits under that title. D, a record company who owned a studio in London, entered into agreement with owner of a studio in New York for refurbishment and running of London studio. New York company had traded as ‘The Hit Factory’ since 1970, and granted licence to D to use that name. C sued for passing off. Held:

Browne Wilkinson VC

See notes

I personally believe test of whether C had a ‘trade connection’ to UK is preferable

However because of previous higher authority, the most liberal interpretation it is possible to give test is that C needs UK customers

On facts, New York studio has had substantial number of customers in UK since its creation

Thus is entitled to use its name within the UK

Hotel Cipriani v Cipriani (Grosvenor Street) [2010]

C ran famous Hotel Cipriani in Venice. D ran a restaurant of same name in Mayfair. C sued for passing off. Held:

Mere fact that C has a reputation in England does not show UK goodwill.

To have goodwill C must always have customers amongst the general UK public
no matter how great its reputation in UK

Is doubtful whether there is need for ‘direct bookings’

However on facts is clear customers book for C’s hotel directly from UK
Thus no need to decide

On facts, C had goodwill in UK.

Plentyoffish Media v Plenty More LLP [2011]

C ran a dating website in America called ‘Plenty of Fish’, which was free to join. D, a British company, set up a pay-for-use dating website in UK called ‘Plenty More Fish’, and had this registered as trademark. C claimed that D was profiting from its goodwill. C claimed that:

its website was heavily visited by UK internet users, and that these people were C’s customers
even if the website users did not constitute customers, a mere ‘trade connection’ to UK suffices to give a business goodwill in the UK.

Held:

First argument

Is possible for customer to be someone using a service for free.
However mere act of visiting C’s website does not make someone a customer
To be customer, person visiting website must actually become a member and sign up to use C’s services.

Second argument

A mere ‘trade connection’ to UK does not suffice

i.e. this argument was not accepted in Pete Waterman Case.

Thus fact that C’s reputation in UK earns him money (from adverts) does not suffice to show goodwill in absence of UK customers

Anheuser-Busch [1984]

C sold Budweiser on an American airbase in UK, but not to UK general public. D sold beer of same name in UK, C sued for passing-off. Claimed it had goodwill amongst UK public. Held:

Those working at American airbase did not represent ‘UK public’
Thus C had no place of business in UK
- And hence no goodwill

Alain Bernardin v Pavilion Properties Ltd [1967]

C owned a club called the Crazy Horse in Paris, which was popular amongst English customers and which he advertised in England. D opened a club of same name in England. C sued. Held:

Was no passing-off.
This because C had no customers in UK
Mere reputation amongst UK customers does not suffice to show goodwill.

Associated Newspapers v Express Newspapers [2003]

C published the Daily Mail. D decided to publish regional paper in South-East England, called the ‘London Evening Mail’. Held:

Even if C did not have goodwill across UK, sufficed that C had local goodwill in South-East England.
Therefore was passing off in South-East England.

End of Goodwill

Ad-Lib Club v Granville [1967]

C had a successful nightclub called the ‘Ad-Lib’ club. Was forced to close. After 5 years had passed, D opened a club called the ‘Ad-Lib’ club. However at this time, C was actively seeking new premises to reopen the original club. Held:

Goodwill of C had survived.
This because C was actively seeking new premises.

Jules Rimet Cup v Football Association [2007]

C, the FA, was owner of copyright in a lion mascot from 2006 World Cup called ‘World Cup Willie’. D applied to register the name and lion symbol in respect of merchandise. C opposed registration on grounds that C still had goodwill in original mascot. Held:

D obviously believed that there was residual commercial value in World Cup Willie

as otherwise they would not have been willing to pay for it.

Thus as a consequence there was residual goodwill in World Cup Willie.

i.e. as it was precisely this goodwill that D was confident of using to make a profit.
This despite 40 years of non-use.

Distinguishing Criteria

Reckitt and Coleman v Borden [1990]

C manufactured Jif lemons. D wished to produce lemon juice holders almost identical to those of Jif. C argued that D was passing off. D argued that use of a lemon to hold lemon juice was both common to the trade, and descriptive. Held:

See notes.

On facts:

Use of plastic lemon not ‘descriptive’

Even if the plastic lemon was descriptive, had acquired a secondary meaning
However in any case probably only words can be descriptive

Use of plastic lemons not ‘common to the trade’

Plastic lemons were not in general use in UK; Jif was the sole provider

Thus D was passing off, and could only market plastic lemons if they had sufficient distinguishing features from Jif.

McCain International v Country Fair Foods [1981]

C introduced new product into UK: chips that could be cooked in oven. Sold product under name ‘McCain Oven Chips’. Year later D introduced their own version of product which they sold as ‘Birds Eye Oven Chips’. C alleged passing off. D alleged “Oven Chips” was descriptive and therefore C could not have monopoly over it. Held:

See notes.
Name has no secondary meaning where it simply informs customers what the nature of the product is.
Thus:

“McCain” indicated the source of the product
“Oven Chips” merely indicated the nature of the product

I.e. important factor in case seemed to be that McCain had put their own brand name in front of phrase “oven chips”

Thus was inferred that they knew term “oven chips” was descriptive, and that they felt the need to distinguish themselves

Case might have been decided differently if McCain had simply sold product as “Oven Chips”

Misrepresentation

Intention

United Biscuits v Asda [1997]

C was manufacturer of Penguin bars. D intended to sell a range called ‘Puffin’ bars, deliberately designed to be as similar as possible to Penguins without incurring liability for passing off. Evidence showed that although customers did not mistake Puffin bars for Penguin bars, many assumed that the two were made by the same manufacturer (although they also did not know who this manufacturer was – McVities). Held:

See notes.
On facts, was passing off by D.

Mere Confusion

Phones4U v Phone4u.co.uk [2006]

C, Phones4U, operated a chain of mobile phone stores and had a website, “phones4u.co.uk”. D registered a website in 1999 called “phone4u.co.uk” which offered mobile phones; in 2000 D offered to sell domain name to C for large sum of money. D’s website stated that it was unconnected with Phones4U. Held:

See notes.

On facts, D’s acts were actually likely to divert business from C.

Public were likely to be deceived that D’s website was that of C
D then sought to take advantage of initial deception to make money himself.

Thus passing off.

Instrument of Fraud

BT v One in a Million [1998]

D were dealers in Internet domain names; had deliberately registered domain names consisting of names of trademarks of well-known businesses without those business’s consent. C, one company whose name had been registered by D in numerous forms, sued D for passing off. Held:

Is passing off where D is equipped with, or intends to equip another with, an instrument of fraud.
Whether a name is instrument of fraud is matter to be determined by all the circumstances; including:

Similarity of names
Intention of D

On facts, names were instruments of fraud.

i.e. D intended to extract money from C by express or implied threat that D or someone else could make use of its name.

Therefore was passing off and threatened passing off.

L’Oreal v Bellure [2007]

C, L’...

#3609 - Passing Off Cases - Intellectual Property Law

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