Trademarks - Passing-Off

The Tort of Passing-Off

A valuable trade name is crucial as ‘brand recognition’ and companies have a real interest in protecting the positive image that they have built up over the years.  Passing-off is a tort which attempts to protect any symbol that has achieved public recognition in the course of trade.  Passing-off is entirely ‘judge-made’ law and the underlying justification in the case law is contradictory.  Some dicta points to protection from public confusion over the products/services, while other cases emphasis protection of the trader’s unfair competition. 

Classic Passing-Off

Unauthorized use of a company’s name is a not uncommon violation.  Famous cases include

Biba (1980) - use of a personal nic-name,

Harrods London (1924) – company name,

Boswell Circus (1986) – same family name, (heavy burden on the defendant to show no customer confusion),

 Rees Execs (2004) – own name (no valid defence) (easy to escape liability by even a small change in the name),

Window ...  Cleaners (1946) – descriptive name

Powell (1896) – geographic names– i.e. Yorkshire Relish

Eastman (Kodak) (1898) – strong name v. dissimilar goods (protection from dilution cameras & bicycles),

Lego (1983) – strong name v. dissimilar goods (toy maker stopped name being put on irrigation equipment.

Use of a company’s ‘get-up’ is also protected. 

Rickett (1990) - plastic lemon-shaped bottle for lemon juice

Scholes – packaging for odour eaters

Haig (1953) – dimple whiskey bottle

Arsenal (2003) – protection from copy producers

Extended Passing-off can goes beyond the classic dicta

Spaulding (1915) – false suggestion of superior quality

Wilts United Dairies (1958)  - same

Warnink v. Townend (1979) – misrepresent geographical area

Bulinger (1917)  - same

Colgate (1963) – misappropriate ad campaign

Bovrill – same

but see contrary dicta in Cadbury v. Pusouash

MacDonalds v. Burger King (1986) – comparative advertising

Bristol Conservatory (1989)  – reverse passing-off

Did You Know?  Trademarks