A company which used its own name to brand goods in circumstances likely to cause confusion to the public had no defence to a passing off claim. Although the plaintiff need not show an intention to deceive, the Court will more readily find that a defendant who intended to deceive has succeeded in his objective. A company uses its name even if it omits the word ‘Ltd’ or ‘Limited’ from the use. Hence, the House of Lords varied an injunction so as to permit the defendant to use in good faith ‘Knoll International’ without the accompanying ‘Ltd’.
Lord Denning said of the differences between ‘confusion’ and ‘deception’: ‘Secondly, ‘to deceive’ is one thing. To ’cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.’
Lord Devlin said: ‘of persons experienced in the ways of purchasers of a particular class of goods will assist the judge. But his decision does not depend solely or even primarily upon the evaluation of such evidence. The court must in the end trust to its own perception into the mind of the reasonable man.’
and
‘[W]hat the judge has to decide in a passing off case is whether the public at large is likely to be deceived. What would the effect of the representation be upon the reasonable prospective purchaser? Instances of actual deception may be useful as examples, and evidence of persons experienced in the ways of purchasers of a particular class of goods will assist the judge. But his (sic) decision does not depend solely or even primarily on the evaluation of such evidence. The court must in the end trust to its own perception into the mind of the reasonable man’
Lord Denning, Lord Devlin
[1962] RPC 265
England and Wales
Citing:
Dicta Approved – Joseph Rodgers and Sons Ltd v W N Rodgers and Co 1924
The court discussed the ‘own-name’ defence in an action for passing off or trade mark infringement: ‘To the proposition of law that no man is entitled to carry on his business in such a way as to represent that it is the business of another, or is . .
Appeal from – Parker Knoll Ltd v Knoll International Ltd CA 1961
The plaintiff owned the registered trade mark ‘Parker Knoll’. The court held that the plaintiff was not entitled to register additionally the single word ‘Knoll’ because the evidence suggested that a number of people took it to refer to the goods of . .
Cited by:
Cited – Reed Executive Plc, Reed Solutions Plc v Reed Business Information Ltd, Reed Elsevier (Uk) Ltd, Totaljobs Com Ltd CA 3-Mar-2004
The claimant alleged trade mark infringement by the respondents by the use of a mark in a pop-up advert.
Held: The own-name defence to trade mark infringement is limited. Some confusion may be allowed if overall the competition was not unfair . .
Lists of cited by and citing cases may be incomplete.
Updated: 16 August 2021; Ref: scu.194805
