Passing Off

Contents

Summary

Key points Passing Off compared with Trade Mark infringement Approach to Passing Off in Courts esp IPEC Passing Off at the registry as bar to registration and UKIPO v OHIM law/approach

The test The “Classical Trinity” definition of the elements of the cause of action. A successful claimant must: 1) 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 plaintiff's goods or services. 2) demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer 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 upon 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. 3) demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the 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. per Lord Oliver in “Jif Lemon” case [Reckitt & Coleman v Borden [1990] RPC 341, HL]

Passing Off at Court Passing Off is both a Common Law action to prevent use of a mark and a statutory “defence to Trade Mark Infringement

Passing Off at Court – Preventing Use Law Nb UK TMA 1994 s.2(2) “nothing in this Act affects the law relating to passing off” Approach Issues

Passing Off at Court – statutory “defence” to infringement Law UK TMA 1994 s.11(3) “earlier right defence” “A registered tm is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. For this purpose an “earlier right” means an unregistered tm or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of – (a) the use of the first-mentioned tm in relation to those goods or services by the proprietor or a predecessor in title of his, or (b) the registration of the first-mentioned tm in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).“ CTMR 207/2009 Art 111 “prior rights applicable to particular localities” “(1) The proprietor of an earlier right which only applies to a particular locality may oppose the use of the CTM in the territory where his right is protected in so far as the law of the Member State concerned so permits. (2) - (3) The proprietor of the CTM shall not be entitled to oppose use of the right referred to in para 1 even though that right may no longer be invoked against the CTM.” Approach Issues

Passing Off at the Registry – preventing registration (1) Passing Off can be used as a relative right to oppose a tm application or invalidate a tm registration Law, procedure and approach at UKIPO and OHIM

Passing Off at the Registry – preventing registration (2) UK IPO Law Section 5 (4) UK TMA 1994 “an earlier right” “A trade mark shall not be registered if, or to the extent that, its use in the UK is liable to be prevented- (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade“ Approach Issues

Passing Off at the Registry – preventing registration (3) OHIM Law CTMR 207/2009 Art 8 (4) “Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where, and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign: (a) rights to that sign were acquired prior to the date of application for registration of the CTM, or the date of the priority claimed for the application for registration of the CTM; (b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark” Approach Issues

Goodwill - Evidence “Fox & Boot” case - W.S. Foster & Son v Brooks Brothers [2013] EWPCC 18 Approach to evidence of Goodwill / not much needed?

Recent IPEC decisions Judge Hacons’s approach “Ukulele Orchestra” case – THE UKULELE ORCHESTRA OF GREAT BRITAIN v THE UNITED KINGDON UKULELE ORCHESTRA [2015] EWHC 1772 (IPEC) “SOFA WORKS” case – The Sofa Workshop v Sofaworks [2015] EWHC 1773 (IPEC) Almost seeing TM infr as Passing Off

Passing Off - Scope Personality / celebrity – “Rhianna” – Fenty v Top Shop [2013] EWHC 2310 (Ch) & [2015] EWCA Civ 3 Character – “Betty Boop” – Hearst Holdings v AVELA [2014] EWHC 439 (Ch) Extended Passing Off – “GREEK YOGHURT” and “BASMATI” FAGE v Chobani [2013] EWHC 630 (Ch) & [ 2014] EWCA Civ 5 Tilda Riceland v Sian Grains (T-136/14) Consumers in territory – “Golden Elephant” and “NOW” Tresplain v Hoo Hing (O/309/14) Starbucks v B Sky B [2015] UKSC 31

Discussion