(New South Wales) The plaintiff had launched and advertised a soft drink. A year later, the defendant launched a similar product using similar names, styles and advertising, but then registered trade marks. The plaintiff sought damages, and for the trade mark to be deregistered. The judge held that there was enough of a difference to keep the defendants innocent of passing off, and though they had sought to ride on the back of the plaintiff’s advertising there was no misrepresentation.
Held: The get up and style of a product could be used as part of a passing off where it had come to be closely associated with a product, but there was evidence to support the judge’s finding that there had been no misrepresentation, and the claim in passing off was not made out. The date which mattered was that date at which the conduct complained of commenced. The judge had correctly used that date, and a mistaken reference to the date of commencement of the hearing did not vitiate the decision. Appeal dismissed.
Lord Wilberforce, Lord Edmund-Davies, Lord Fraser of Tullybelton, Lord Scarman and Lord Roskill
[1981] 1 WLR 193, [1981] RPC 429, [1980] UKPC 30
lip, Bailii
Australia
Citing:
Cited – Cheney Brothers v Doris Silk Corporation 1929
Judge Learned Hand refused to enjoin copying of designs for silk fabrics. If a ‘writing’ is within the scope of the constitutional clause, and Congress has not protected it, whether deliberately or by unexplained omission, it can be freely copied. . .
Cited – Felton v Mulligan 2-Sep-1971
(Australia) The court was concerned to interpret the phrase ‘arising under any laws made by the Parliament’
Austlii Constitutional Law (Cth) – Privy Council – Appeal from State Supreme Court invested with . .
Cited – Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Pty Ltd 1978
. .
Cited – International News Service v Associated Press 1918
The Supreme Court introduced the concept of ‘unfair competition’. . .
Cited – Leather Cloth Co Ltd v American Leather Cloth Co Ltd HL 1-Feb-1865
Where an individual works in a partnership the goodwill generated by his acts will in the normal course vest in the partnership.
Lord Kingsdown said: ‘Nobody doubts that a trader may be guilty of such misrepresentations with regard to his . .
Cited – Kark (Norman) Publications Ltd v Odhams Press Ltd 1962
Wilberforce, J described the basis of a passing off action in respect of the name of a newspaper or magazine as being a proprietary right not so much in the name itself but in the goodwill established through the use of the name in connection with . .
Cited – Reddaway and Co Ltd v Banham and Co Ltd HL 1896
The plaintiff manufactured and sold Camel Hair Belting. The defendant also began to sell belting made of camel’s hair in the name of Camel Hair Belting. The trader claimed a right in the term ‘Camel Hair’.
Held: The term was descriptive. Where . .
Cited – Slazenger and Sons v Feltham and Co CA 1889
As to a party, a court will not ‘be astute to say that he cannot succeed in doing that which he is straining every nerve to do’. . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – Victoria Park Racing and Recreation Grounds Co Ltd v Taylor 26-Aug-1937
(High Court of Australia) . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited by:
Cited – Inter Lotto (Uk) Ltd v Camelot Group Plc CA 30-Jul-2003
The claimant and defendant had each operated using a the name ‘HotSpot’ for a name for its lottery. The respondent had registered the name as a trade mark. The claimant began to use the name first and claimed in passing off, and the respondent . .
Cited – Alan Kenneth McKenzie Clark v Associated Newspapers Ltd PatC 21-Jan-1998
The claimant was a member of Parliament and an author. The defendant published a column which was said to give the impression that the claimant had written it. It was a parody. The claim was in passing off.
Held: The first issue was whether a . .
Cited – Moroccanoil Israel Ltd v Aldi Stores Ltd IPEC 29-May-2014
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 11 November 2021; Ref: scu.174751
