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 claimed infringement of its mark.
Held: The law of passing off was not displaced by the Trade Marks legislation. There was no current provision for satisfactorily reconciling the two systems. Liability in passing off was to be determined as at the date of the activity complained of.
Judges:
Lord Justice Pill Lord Justice Keene Lord Justice Carnwath
Citations:
[2003] EWCA Civ 1132, Times 20-Aug-2003, [2004] 1 WLR 955
Links:
Statutes:
Jurisdiction:
England and Wales
Citing:
Cited – Cadbury-Schweppes Pty Ltd And Others v Pub Squash Co Pty Ltd PC 13-Oct-1980
(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 . .
Cited – Marleasing SA v La Comercial Internacional de Alimentacion SA ECJ 13-Nov-1990
Sympathetic construction of national legislation
LMA OVIEDO sought a declaration that the contracts setting up Commercial International were void (a nullity) since they had been drawn up in order to defraud creditors. Commercial International relied on an EC . .
Cited – Regina v Johnstone HL 22-May-2003
The defendant was convicted under the 1994 Act of producing counterfeit CDs. He argued that the affixing of the name of the artist to the CD was not a trade mark use, and that the prosecution had first to establish a civil offence before his act . .
Cited – British Telecommunications Plc; Virgin Enterprises Ltd; J Sainsbury Plc; Marks and Spencer Plc and Ladbroke Group Plc v One In a Million Ltd and others CA 23-Jul-1998
Registration of a distinctive Internet domain name using registered trade marks and company names could be an infringement of a registered Trade Mark, and also passing off. It was proper to grant quia timet injunctions where necessary to stop . .
Cited – Percy and Another v Hall and Others QBD 31-May-1996
There was no wrongful arrest where the bylaw under which it was made was invalid. The question is the belief of the arresting officers. The effect of retrospective legislation is not always fully worked through. English law provides no cause of . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 19 November 2022; Ref: scu.185238