The appeal succeeded. Where there is already a substantial potentiality for confusion of two businesses simply by reason of their being engaged in the same trade, a trader cannot legitimately build on and increase that trade potentiality in such a way that confusion becomes worse confounded. This would amount to passing off.
Oliver LJ said: ‘The question to be asked is, no doubt, in all cases the same – is the get-up, or the method of training’ (sic, presumably this is a misprint for `trading’) ‘or the use of a particular trading name by the defendants calculated to lead to the belief that their business is the plaintiff’s business? But it becomes an extraordinarily difficult question to answer where there is already a substantial potentiality for confusion of the two businesses, simply by reason of their being engaged in the same trade. That does not mean, of course, that a defendant is legitimately entitled to build on and increase that potentiality in such a way that confusion becomes worse confounded, but it does mean that where evidence of actual confusion is tendered it has to be approached … with the caveat that there may well be reasons why it occurs which involve no question of legal liability at all.’
Judges:
Oliver LJ
Citations:
[1983] RPC 407
Jurisdiction:
England and Wales
Citing:
Appeal from – My Kinda Town Ltd v Soll QBD 1982
Although there was no acquiescence on the part of the plaintiffs, such as to have destroyed their rights, the court was not persuaded that, nevertheless, they should be deprived of an injunction. . .
Cited by:
Cited – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik v Anheuser-Busch CA 7-Feb-2000
The registration of two trade marks (‘Budweiser’) with the identical names was against the Act since it would appear to encourage the very confusion the Act sought to avoid. Nevertheless, where there was genuine honest concurrent use, that use might . .
mentioned – Devenish Nutrition Ltd v Sanofi-Aventis Sa (France) and others CA 14-Oct-2008
The defendant had been involved in price fixing arrangements, and the claimant sought damages for breach of its proprietary rights. The claimant appealed refusal of an award an account of profits for what was akin to a breach of statutory duty.
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 31 July 2022; Ref: scu.258736
