2. PASSING OFF

3. CONTENTS Overview Elements of passing off
Why are we bothered about it!?
What is this ‘passing off’ then…!?
Elements of passing off
Goodwill
Misrepresentation
Damage
Why not just use your trade marks?
Summary
Q&A

4. PASSING OFF Why are we bothered about it?
Goodwill is a form of legal property
We care about property – especially the intellectual kind!
Trade marks are great… but aren’t the only solution
Didn’t have budget to register your design? Ah ok…
Copyright problems? Didn’t assign it.. Oh ok… do you own goodwill?
When champagne is not champagne…
When someone nicks your mugshot!

5. OVERVIEW What is passing off!? Tort Unregistered protection
A tort, in common law jurisdictions, is a civil wrong that unfairly causes someone else to suffer loss or harm resulting in legal liability for the person who commits the tortious act, called a tortfeasor.
Unregistered protection
No trade marks?
Unable to obtain trade marks? (Colours, get-up and packaging, etc.)
Not had time to get trade marks!
Other forms of IP rights failed you

6. OVERVIEW Passing Off vs. Trade Marks Passing Off Trade Marks
Common Law (flexible)
Must establish right
Evidence – lots of it…
Defences?
Equitable only
Remedies
Acts / Regulations (less flexible)
Just go to the TM register!
Valid TM? Great! Confusion?
Statutory AND equitable

7. OVERVIEW Classic Trinity Goodwill Misrepresentation Damage
Attached to the relevant goods/ services
Misrepresentation
Relevant public
Intention not strictly relevant
Damage
As a result of misrepresentation
Erroneous belief in source/ origin of goods/ services

8. Overview
Classic Trinity

9. OVERVIEW Extended Form
Concept applies where claimant is a class of traders sharing collective goodwill
- e.g. Advocaat, champagne, sherry, swiss chocolate, vodka and greek yoghurt.
A misrepresentation
Made by a trader in the course of trade
To prospective customers of the defendant or ultimate consumers of goods or services supplied by the defendant;
Calculated to injure the business or goodwill of another trader (reasonably foreseeable consequence);
Which causes actual damage to the business or goodwill of the trader

10. OVERVIEW
Extended Form GREEK YOGHURT Born in the USA… right? WRONG!

11. PASSING OFF – USEFUL IN OPPOSITIONS?
HELL YES!
Relative rights ground
Oppose a trade mark application
Invalidate a trade mark registration

12. PASSING OFF AT THE REGISTRY
UK IPO
Section 5 (4) UK TMA “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“

13. PASSING OFF AT THE REGISTRY
OHIM
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”

14. PASSING OFF AT THE REGISTRY
More than mere local significance?

15. WHY NOT JUST USE YOUR TRADE MARKS?
PASSING OFF
WHY NOT JUST USE YOUR TRADE MARKS?

16. GRANDMASTER FLASH AND THE FURIOUS FIVE
WHAT ONCE WAS…
GRANDMASTER FLASH AND THE FURIOUS FIVE

17. WHAT IS NOW…
GRANDMASTER FLASH

18. WHAT IS NOW…
<<< Hang on a minute…

19. PASSING OFF – CAN IT SAVE YOUR BACON?

20. PASSING OFF – A DEFENCE TO INFRINGEMENT
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 “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. …
(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.”

21. CASE STUDY - FOX & BOOT
“Fox & Boot” case - W.S. Foster & Son v Brooks Brothers [2013] EWPCC 18
Key things to consider
Approach to evidence of Goodwill / not much needed?
Other side put in minimal evidence on use of the logo over 50 years
Inconsistent uses!
But found to have goodwill
What about for test on residual goodwill though?
We had evidence of use
Evidence not as strong, but on balance of probabilities must have been some use!
Found to have abandoned the business in 1965!

22. PASSING OFF – SUMMARY The darling of the Common Law enthusiast
The saviour of the unregistered
“Flexible like bamboo in the wind, not rigid like the mighty oak …”
NB remind me to explain to you about SUN MARK!
BUT!
As sure as death and taxes – EXPENSIVE to enforce
No substitute for registered protection
May be your last breath...
Here today, gone tomorrow!

23. Q&A
Your chance to:
Look at the floor and try desperately not to make eye contact;
Eye up the sandwiches but pretend you’re listening;
Ask about anything you’re not clear on (I assume you’re all now experts!)

24. Oh yeah.. SUN MARK
Seen these before chaps?

25. Oh yeah.. SUN MARK
How about these?

26. THE END!