The plaintiffs claimed passing off of their ‘Jif Lemon’ trading style.
Held: It is no defence to an allegation of passing off that members of the public would not be misled if they were more literate, careful, perspicacious, wary or prudent. The court must look at the work as a whole and decide whether the latter representation is sufficient to ensure that a substantial body of readers will not be misled.
Lord Oliver stated the law on passing off: ‘[The plaintiff] must establish a goodwill or reputation attached to the goods or services which he supplies in the minds of the purchasing public by association with the identifying get-up (whether that consists simply of a brand name or trade description or the individual features of labelling or packaging) under which its particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive, specifically as the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe the goods or services offered by him are the goods or services of the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or in a quia timet action that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the sources of the defendant’s goods or services is the same as the sources of those offered by the plaintiff.’
Lord Oliver, Lord Jauncey
[1990] 1 WLR 491, [1990] RPC 341, [1990] UKHL 12, [1990] 1 All ER 873
Bailii
England and Wales
Citing:
At First Instance – Reckitt and Coleman Properties Ltd v Borden Inc 1987
Evidence as to the results of market research surveys was not admissible as expert evidence. . .
Cited by:
Cited – Scandecor Development Ab v Scandecor Marketing Ab and Another (No 2) CA 7-Oct-1998
Actions for passing off and Trade Mark infringement tended to end up as factual disputes resolvable only after a full enquiry. ‘Not a branch of law in which references to these cases is of an real assistance.’ . .
Applied – Asprey and Garrard Ltd v WRA (Guns) Ltd and Another CA 11-Oct-2001
The Asprey family had been in business for many years. Their business was incorporated, and later sold to the claimants. A member of the Asprey family sought to carry on new businesses through limited companies using the family name. Upon request, . .
Cited – Associated Newspapers Limited, Daily Mail and General Trust Plc v Express Newspapers (an Unlimited Company, Incorrectly Sued As Express Newspapers Limited) ChD 11-Jun-2003
The claimants sought to prevent the respondents from starting an evening newspaper entitled ‘THE MAIL’ as an infringement of their registered mark, and as passing off. In turn the defendant challenged the validity of the mark.
Held: The word . .
Cited – Alan Kenneth McKenzie Clark v Associated Newspapers Ltd PatC 21-Jan-1998
The claimant was a member of Parliament and an author. The defendant published a column which was said to give the impression that the claimant had written it. It was a parody. The claim was in passing off.
Held: The first issue was whether a . .
Cited – D Jacobson and Sons Ltd v Globe Gb Ltd Globe Europe Sas Chd 25-Jan-2008
The claimant alleged infringement by the defendants of its ‘Gola’ trade mark designs. The defendant said the registration was invalid because the stripes on the shoes were not distincive being seen as part of the design of the shoe rather than as an . .
Cited – Minimax Gmbh and Co Kg v Chubb Fire Ltd PatC 29-Jul-2008
Chubb sought to prevent the registration of a mark by the claimant arguing that its use would amount to passing off as against its own marks.
Held: There was insufficient evidence for the hearing officer to have found that Chubb had maintained . .
Cited – Lumos Skincare Ltd v Sweet Squared Ltd and Others PCC 10-May-2012
The claimant alleged passing off by the defendant in the use of the trading mark LUMOS for nail care products. . .
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 . .
Cited – Moroccanoil Israel Ltd v Aldi Stores Ltd IPEC 29-May-2014
The claimant asserted passing off and trade mark infringement by the defendant in respect of its own hair oil product and the defendant’s sale of ‘Miracle Oil’. The defendant counterclaimed in a threat action. . .
Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC 13-May-2015
The court was asked whether, as the appellants contended, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 09 November 2021; Ref: scu.183037