The claimant asserted that the defendant had infringed its goodwill in the name ‘Hot Picks’ the defendant argued that it was licensed to use the mark by the person who applied for its registration as a trade mark, and that the claim in passing off arose from the defendant’s own illegal act, and should be rejected.
Held: Registered trade marks, like all other statutory intellectual property rights do not give a right to the proprietor to use, but give him the right to exclude others from using. The owner of the registered trade mark does not have an entitlement to use his mark in the face of earlier competing rights owned by someone else. Nor could it be said that Inter Lotto’s action was so base as to prevent an action.
Judges:
The Hon Mr Justice Laddie
Citations:
[2003] EWHC 1256 (Ch)
Links:
Jurisdiction:
England and Wales
Citing:
Cited – ICI v Berk 1981
A party wished to assert that a claim in passing off should not proceed because of some illegality.
Held: There has to be a nexus between the illegality and the claim for passing off. . .
Cited – Perry v Truefitt CA 8-Dec-1842
The court considered the nature of the tort of passing off. ‘I think that the principle on which both the courts of law and of equity proceed, in granting relief and protection in cases of this sort, is very well understood. A man is not to sell his . .
Cited – Burberry’s v Cording 1900
Discussing the tort of passing off the court said: ‘The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the . .
Cited – Millington v Fox 23-Jan-1938
To establish passing off, it was no longer necessary to establish fraud in the use of a trading name, and it became dependent upon proof, inter alia, of misrepresentation. . .
Cited – Orr Ewing v Registrar of Trade Marks HL 1879
In respect of trade marks which were in use before the 1875 Act but in respect of which registration had been refused, the common law action for infringement of the unregistered mark continued: ‘if the proprietor of a trade mark in use before the . .
Cited – Mitchell v Henry 1880
Passing off actions remained unaffected by the passing of the 1875 Act. . .
Cited – Montgomery v Thompson HL 1891
Thompson had registered Stone Ale as a trade mark. He had sued the plaintiff, his competitor and the said mark was removed from the register. Nevertheless Thompson succeeded in an action to restrain Mr Montgomery from using the mark in relation to . .
Cited – Faulder and Co Ltd v Rushton 1903
The court discussed the relationship between an action for trade mark infringement, and for passing off: ‘when an injunction is granted to restrain the use of a mark calculated to pass off the defendant’s goods as those of the plaintiff, by reason . .
Cited – Saville Perfumery Ltd v June Perfect Ltd CA 1941
Lord Greene MR said: ‘It does not necessarily follow that a trader who uses an infringing mark upon goods is also guilty of passing-off. The reason is that in the matter of infringement, as I have already pointed out, once a mark is used as . .
Cited – Re Lyle and Kinahan Ltd’s Application CA 1907
Buckley LJ said: ‘The registration of a trade mark does not confer any right at all of the description there pointed to, but it does confer a right, and the only right is the right to prevent anybody else from using that trade mark for their goods, . .
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 . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 28 July 2022; Ref: scu.183285