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Passing off


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The traditional ingredients

The ingredients of passing off are laid down in two decisions of the House of Lords. First, in
Erven Warnink BV v J Townshend & Sons (Hull) Ltd [1980] RPC 31 (the Advocaat case) Lord Diplock

"five characteristics which must be present in order to create a valid cause of action for passing
off: (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."

Second, in Reckitt & Colman Products Ltd v Borden Inc (No 3) [1990] 1 WLR 491 (the Jif Lemon case)
Lord Oliver of Aylmerton said:

"The law of passing off can be summarised in one short general proposition -- no man may pass off
his goods as those of another. More specifically, it may be expressed in terms of the elements
which the plaintiff in such an action has to prove in order to succeed. These are three in number.
First, 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. Secondly, 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 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. Thirdly, he must 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."

These three elements have come to be known as the "classical trinity". Whether passing off is to
be regarded as requiring the satisfaction of five conditions or three conditions, one thing is
clear: the conditions include the necessity of establishing a deception or misrepresentation.

If it were not so, competition would be stifled.

The Law of passing off is still as stated by Jacob J in Hodgkinson & Corby Ltd v Wards Mobility
Services Ltd [1994] 1 WLR 1564:

"At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer
in particular. Over the years passing off has developed from the classic case of the defendant
selling his goods as and for those of the plaintiff to cover other kinds of deception, e.g. that
the defendant's goods are the same as those of the plaintiff when they are not, e.g. Combe
International Ltd v. Scholl (UK) Ltd [1980] R.P.C. 1; or that the defendant's goods are the same
as goods sold by a class of persons of which the plaintiff is a member when they are not, e.g.
Warnink (Erven) Besloten Vennootschap v. J. Townend Sons Ltd [1980] R.P.C. 29. Never has the tort
shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter
the field of honest competition, declared unlawful for some reason other than deceptiveness.

Michael Coyle

About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.

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Article Published/Sorted/Amended on Scopulus 2007-08-28 18:43:33 in Legal Articles

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