Jacob J discussed the value of survey evidence in passing off cases: ‘Unless one can have some real evidence, tested in cross examination, one cannot really be sure of what was passing through peoples minds. Those cases where surveys have proved to be useful have all involved some of the ‘Pollees’ coming to court.’ and
‘The proper approach of the Court to the question was not in dispute. The Judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall ‘jury’ assessment involving a combination of all these factors, see ‘GE’ Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the Court, not for the witnesses. It follows that if the Judge’s own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the Judge is supplemented by such evidence then it will succeed. And even if one’s own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt and Coleman Products Ltd v Borden Inc [1990] R.P.C. 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more ‘it depends on the evidence’.
Jacob J
[1996] RPC 473
England and Wales
Cited by:
Appeal from – Neutrogena Coroporation v Golden Ltd CA 1996
The court discussd the ‘substantial proportion of the public’ test applied in passing off. The purpose of this evidence was to provide real evidence from ordinary members of the public wholly untainted by any artificiality. . .
Cited – A and E Television Networks Llc and Another v Discovery Communications Europe Ltd ChD 1-Feb-2013
The claimants had operated the ‘History’ and associated variant TV channels and trade marks. The claimed that the defendant’s ‘Discovery History’ channels were in breach. The defendants challenged the validity of the trade marks. The court now . .
Cited – Bocacina Ltd v Boca Cafes Ltd IPEC 14-Oct-2013
The claimant alleged passing off by the defendant’s use of the name ‘Boca Bistro Cafe’, and subsequently ‘Bica Bistro Cafe’
Held: Where the defendant had changed its trading style during the proceedings it was possible, if the claimant . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 10 November 2021; Ref: scu.470732