11 Jun 2022

Auntie Jane's Trade Mark Tips No 10 - Passing Off

Jif Lemon
Author Paul Hurst Licence CC BY-SA 2.5 Source Wikimedia Commons


Since 1876 it has been possible for suppliers to protect their brands by registering signs that distinguish their goods from those of all other suppliers as trade marks with the Intellectual Property Office.  There is, however, a much older judge-made protection known as the law of passing off.  Lord Oliver summarized that law as "no man may pass off his goods as those of another."

Lord Oliver said those words in a speech in the House of Lords in a case called Reckitt and Colman Products Ltd v Borden Inc. [1990] UKHL 12, [1990] 1 WLR 491, [1990] 1 All ER 873, [1990] RPC 341, [1990] WLR 491.  For many years, the claimant company had sold lemon juice in squeezable lemon-size plastic containers like the one in the photo. They claimed that that packaging distinguished their juice from the juices of all other suppliers.  When the defendant tried to supply lemon juice in squeezable lemon shape plastic containers, the claimant complained that such packaging led consumers to buy the defendant's juice in the belief that it was the claimant's.  Proceedings were brought in the High Court which ended up in the House of Lords, then the highest court of appeal in the United Kingdom.

Lord Oliver was one of the judges who heard that appeal.  In deciding that case, he set out the elements that a complainant has to prove:
"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."   

There is considerable overlap between trade mark law and the law of passing off, Very often, brand owners sue for both causes of action.  There are, however. important differences that allow claims to be brought under one head but not under the other.

Probably the most significant of those differences is that a claimant has to prove that he or she has goodwill by reference to a mark, get-up or other indicia.  That usually requires evidence of sales and advertising under a mark over time.  By contrast, the owner of a registered mark may sue for infringement of that mark before he or she has made a single sale,  Conversely, it is sometimes possible to sue for passing off where the defendant has used a mark that cannot be registered as a trade mark.

Rights to bring actions for passing off can be important in trade mark law.  One of the grounds for opposing an application for the registration of a trade mark or invalidating a registered mark is that the use of the trade mark can be prevented by an action for passing off (see s.5 (4) (a) of the Trade Marks Act 1994).

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.

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