Initial interest confusion
Written by Aasim Durrani on 28 August 2013« Return to Reading Room
English law was unclear on this point until relatively recently, with some commentators stating such matters were confined to passing off by false endorsement. This leading case on this point is that of Irvine v Talksport Ltd  EWHC 367 (Ch), in which the claimant was former F1 driver Eddie Irvine.
The position was clarified by Mr Justice Arnold in the case of Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor  EWHC 2599 (Ch). In his judgment, the judge reasoned that even where no sale had taken place after the initial confusion had been remedied, damage could still occur in two ways. He stated that the reputation of the registered trade mark could be diminished or its distinctiveness could be adversely affected.
Sellers should take care to ensure that their goods and services do not mislead the public as to their true origin. They should also not rely on disclaimers to avoid liability, particularly where they are seeking to attract customers by way of a misrepresentation or by using a registered trade mark. As a general rule of thumb, a trade mark with enhanced distinctiveness has the potential to land such a seller in deeper trouble. Where a trade mark is not particularly distinctive, a seller may be able to avoid liability by arguing that the mark does not identify the origin of such goods. However, this argument should not be relied upon to avoid a potential claim for infringement.
If sellers are unsure of their position then they are advised to seek legal advice as a matter of priority.
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