What Do I Need to do to Bring a Passing Off Action?

31 March 2006

What Do I Need to do to Bring a Passing Off Action?

Money and plenty of it… but seriously the following are key factors

In Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731, Lord Diplock had identified the
five characteristics which must be present in order to create valid cause of action for passing
off as:

(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers
of his or ultimate consumers of goods or 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 timet action) will probably do so.

In Reckitt & Colman Products Ltd v Borden Inc and others [1990] 1 WLR 491 (the Jif Lemon case),
Lord Oliver described the elements which a claimant in a passing off action has to prove in order
to succeed as follows (at p 499D-H):

“... The law of passing off can be summarised in one short general proposition -- no man may pass
off his goods as those of another. [To establish passing off you must establish three propositions]

…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 plaintiff 's goods or
services.

he must 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 on 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.  He must demonstrate that he suffers or 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”.

Questions that need to be asked:

Has the Claimant proved that it had at the relevant date or dates acquired sufficient goodwill or
reputation; and if yes,

Did the act of the Defendant at the relevant date constitute a misrepresentation to the public to
believe that the goods or services offered by the Defendant were goods or services of the
Claimant, giving rise to damage or the likelihood of damage to the Claimant?

Michael Coyle