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 below held, such a claimant must also establish a business with customers within the jurisdiction. There was conflicting jurisprudence in the common law world, and it is of particularly acute significance in the age of global electronic communication.
Held: ‘As to what amounts to a sufficient business to amount to goodwill, it seems clear that mere reputation is not enough . . The claimant must show that it has a significant goodwill, in the form of customers, in the jurisdiction, but it is not necessary that the claimant actually has an establishment or office in this country. In order to establish goodwill, the claimant must have customers within the jurisdiction, as opposed to people in the jurisdiction who happen to be customers elsewhere. ‘ and ‘when it comes to a domestic, common law issue such as passing off, an English court has to consider the factual position in the UK. That is well illustrated by the fact that, even if PCCM’s argument was accepted and it was enough for a claimant merely to establish a reputation, that reputation would still have to be within the jurisdiction.’
and . . ‘If it was enough for a claimant merely to establish reputation within the jurisdiction to maintain a passing off action, it appears to me that it would tip the balance too much in favour of protection. It would mean that, without having any business or any consumers for its product or service in this jurisdiction, a claimant could prevent another person using a mark, such as an ordinary English word, ‘now’, for a potentially indefinite period in relation to a similar product or service. In my view, a claimant who has simply obtained a reputation for its mark in this jurisdiction in respect of his products or services outside this jurisdiction has not done enough to justify granting him an effective monopoly in respect of that mark within the jurisdiction’
Lord Neuberger, President, Lord Sumption, Lord Carnwath, Lord Toulson, Lord Hodge
[2015] ETMR 31, [2015] ECC 19, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274
Bailii, WLRD, Bailii Summary, SC, SC Summary
England and Wales
Citing:
At ChD – Starbucks (HK) Ltd and Others v British Sky Broadcasting Group Plc and Others ChD 2-Nov-2012
The claimants asserted infringement by the defendants of their registered Community Trade Mark by their announcement of a new TV station ‘NOW TV’. The defendants in turn challenged the validity of the mark.
Held: The court found that a . .
Appeal from – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others CA 15-Nov-2013
The claimant appealed against rejection of its claim for trade mark infrimgement. It had a goodwill in China, and, it claimed among the chinese community in the UK. The claimant’s appeal was dismissed. . .
Cited – Commissioners of Inland Revenue v Muller and Co Margarine HL 1901
The House considered the liability, or not, to stamp duty of an agreement made in the UK. Under the Stamp Act 1891 an agreement made in the UK for the sale of any estate or interest in any property except lands or property locally situate out of the . .
Cited – Spalding (A G ) and Brothers v A W Gamage Ltd HL 1915
The House considered the requirements for the tort of passing off. The judge has the sole responsibility for deciding whether anybody has been misled. He will hear evidence, but must not surrender his assessment to others.
Lord Parker said: . .
Cited – T Oertli AG v EJ Bowman (London) Ltd CA 1957
The Swiss plaintiff had sold 50 machines in England and exhibited them at one exhibition. They claimed in passing off.
Held: Such evidence fell ‘far short’ of proof that the word ‘Turmix’ had become distinctive in England of machines of the . .
Cited – T Oertli AG v EJ Bowman (London) Ltd HL 1959
A company which originally made and sold a food mixer in the United Kingdom called a ‘Turmix’, under licence from the Swiss developer, continued after revocation of the licence to make and sell a similar mixer under a different name, ‘Magimix’.
Cited – Star Industrial Company Limited v Yap Kwee Kor trading as New Star Industrial Company PC 26-Jan-1976
(Singapore) The plaintiff Hong Kong company had manufactured toothbrushes and exported them to Singapore, for re-export to Malaysia and Indonesia, but with some local sales as well. Their characteristic get-up included the words ‘ACE BRAND’ and a . .
Cited – Anheuser-Busch v Budejovicky Budvar CA 1984
The parties disputed the use of the name Budweiser for the beers which each sold.
Held: Neither party was entitled to an injunction. neither AB nor BB was disentitled to use the name Budweiser since in 1979 there was a dual reputation and . .
Cited – 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 – Reckitt and Coleman Properties Ltd v Borden Inc HL 1990
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. . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Panhard et Levassor v Panhard Levassor Motor Company Ltd 1901
French car manufacturers had established a reputation under their name in this country. The defendant company was formed not to take over the plaintiffs’ goodwill, but to block the plaintiffs from entering this country.
Held: Injunctions were . .
Cited – Suhner and Co AG v Suhner Ltd ChD 1967
A Swiss corporation manufacturing electronic components asserted an international reputation and goodwill in the name of ‘Suhner’. The defendants disputed that the plaintiff had goodwill in the United Kingdom. From 1946 until some years thereafter . .
Cited – Alain Bernardin and Cie v Pavilion Properties Ltd ChD 1967
The owner of the Crazy Horse Saloon in Paris tried to stop a business in London under the same name. The plaintiff advertised in the UK but carried on no other activities here.
Held: An injunction was refused. The plaintiff had reputation but . .
Cited – Globelegance BV v Sarkissian ChD 1974
The plaintiff claimed in passing off, seeking an intelocutory injunction. Mr Valentino Garavani, a fashion designer opened a salon in Rome in 1960, and built up a reputation in ladies’ high fashion under the name ‘Valentino’. His fashion shows in . .
Cited – Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Limited (‘Advocaat’) HL 1979
The trademark was the name of a spirit-based product called ADVOCAAT. The product had gained a reputation and goodwill for that name in the English market and the defendants were seeking to take advantage of that name by misrepresenting that their . .
Cited – Maxwell v Hogg CA 1867
The court considered whether a mere reputation, wihout customers, was sufficient to base a claim for passing off.
Held: The plaintiff’s advertising campaign in respect of a proposed new newspaper called ‘Belgravia’ with a view to imminent . .
Cited – Amway Corporation v Eurway International Ltd ChD 1974
The subject matter of a claim in confidence must be ‘information’, and that information must be clear and identifiable as being confidential.
Brightman J said: ‘I asked the plaintiffs’ counsel if he could point in his literature to some . .
Cited – C and A Modes v C and A (Waterford) Ltd 1978
(Supreme Court of Ireland) The plaintiff’s C and A department store in Belfast was entitled to mount a claim in passing off in the Irish Republic.
Henchy J was unhappy about the decision in Alain Bernardin, and said that there were in the Irish . .
Cited – The Athletes’ Foot Marketing Associates Inc v Cobra Sports Ltd ChD 1980
The plaintiff, which carried on a retail shoe franchising business mainly in the United States, had prospective franchisee in England but had not commenced trading there. There was an awareness in England of the plaintiff’s trade name and activities . .
Cited – Orkin Exterminating Co Inc v Pestco Co of Canada Ltd 10-Jun-1985
Canlii (Court of Appeal, Ontario) Torts — Passing off — Goodwill — Pest control company carrying on business in United States but not in Canada — Company having reputation among Canadian customers for . .
Cited – British Broadcasting Corporation v Talbot Motor Co Ltd 1981
Held: The plaintiff Corporation had acquired a protectable goodwill in the mark CARFAX relating to a system for receiving traffic information on the radio, even though the system had not been launched, as a result of its widespread promotion such as . .
Cited – WH Allen and Co v Brown Watson Ltd 1965
Whenever a demand has been created by advertising, and better still if there are actual sales, the law can recognise it as sufficient reputation spawning potential goodwill and grant an injunction, and add to it the ancillary remedy of account of . .
Cited – Dominion Rent A Car Ltd v Budget Rent A Car Systems (1970) Ltd 27-Mar-1987
(Court of Appeal of New Zealand) The court considered looked at the degree of activity required to justify a finding that an international company had sufficient business connection in New Zealand to which goodwill could attach.
Held: Somers J . .
Cited – Ten-Ichi Co Ltd v Jancar Ltd 19-Jul-1989
(High Court of Hong Kong) – Tort – Passing off – whether action lies when no active business in Hong Kong – International reputation and goodwill – Damages whether recoverable if sustained outside the jurisdiction.
Sears J hearing of an . .
Cited – Conagra Inc v McCain Foods (Aust) Pty Ltd 14-Apr-1992
Austlii Intellectual Property – passing off – bases and elements of passing off action – whether carrying on business within jurisdiction or place of business within jurisdiction – sufficiency of nexus with the . .
Cited – Pete Waterman Ltd v CBS UK Ltd ChD 1993
The plaintiff practised in the pop music industry and claimed to be entitled to the exclusive use in this country of the name or description ‘The Hit Factory’. The defendant proposed a similarly named recording studio in London in a joint venture . .
Cited – Jet Aviation (Singapore) Pte Ltd v Jet Maintenance Pte Ltd 1998
(High Court of Sigapore) Where there is no loss or division of business or reasonable likelihood of such loss resulting from a confusion of names, there is no cause of action in passing off. . .
Cited – Caterham Car Sales and Coachworks Ltd v Birkin Cars (Pty) Ltd and Another 27-May-1998
(South Africa: Supreme Court of Appeal) the plaintiff sought to prevent the defendant, as it claimed, passing off their cars as its own.
Held: On the facts, the case failed. However, the only component of goodwill of a business that can be . .
Cited – In re Ping An Securities Ltd 12-May-2009
(Hong Kong – Court of Final Appeal) The court approved a proposition that a plaintiff ‘must establish a goodwill (in the country or region) in a business in the supply of goods or services’ under the relevant get-up in order to maintain a claim in . .
Cited – Staywell Hospitality Group Pty Ltd v Starwood Hotels and Resorts Worldwide Inc 29-Nov-2013
(Singapore – Court of Appeal) The ‘hard-line’ approach to goodwill is the law in Singapore was continued. meaning that a foreign trader who does not conduct any business activity in Singapore will generally not be able to maintain an action in . .
Cited – Grupo Gigante SA De CV v Dallo and Co Inc 15-Dec-2004
(United States Court of Appeals, Ninth Circuit) ‘priority of trademark rights in the United States depends solely upon priority of use in the United States, not on priority of use anywhere in the world. Earlier use in another country usually just . .
Cited – Rey v Lecouturier HL 1910
A ruling by the French courts that the ownership of the trade mark Chartreuse (formerly belonging to the monastery of Grand Chartreuse) had passed to a liquidator under French law, could not affect the title to the English trade mark, since the . .
Cited – Carl Franz Adolf Otto Ingenohl v Wing On and Company (Shanghai) Ltd PC 30-May-1927
Shanghai Action to restrain the respondents from passing off cigars not manufactured by the appellants but manufactured by the respondents to look as if they did. . .
Cited – RJ Reuter Co Ltd v Mulhens CA 1954
Complaint was made of the use of a the trade mark for ‘4711 Eau de Cologne’ where the figures ‘4711’ appeared within a scroll next to a bell. In fact, the place of business of the defendant company was No. 4711 Koln am Ehein, in Cologne. The . .
Cited – Adrema Werke Maschinenbau GmbH v Custodian of Enemy Property and the Administrator of German Enemy Property CA 1957
. .
Cited – Matratzen Concord v Hukla Germany SA (Free Movement Of Goods) ECJ 9-Mar-2006
ECJ (Judgment) Reference for a preliminary ruling – Article 3(1)(b) and (c) of Directive 89/104/EEC – Grounds for refusal to register – Articles 28 EC and 30 EC – Free movement of goods – Measure having . .
Cited – L’Oreal SA, Lancome parfums et beaute and Cie, Laboratoire Garnier and Cie, L’Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited ECJ 12-Jul-2011
ECJ Grand Chamber – Trade marks – Internet – Offer for sale, on an online marketplace targeted at consumers in the European Union, of trade-marked goods intended, by the proprietor, for sale in third States – . .
Cited – Leno Merken Bv v Hagelkruis Beheer Bv ECJ 5-Jul-2012
ECJ Community trade mark – Regulation No 207/2009 on the Community trade mark – Genuine use – Place of use
A ‘genuine use’ of a mark, namely ‘to guarantee the identity of the origin of the goods or services . .
Cited – Junited Autoglas Deutschland v OHMI – Belron Hungary (United Autoglas) (Judgment) ECFI 16-Oct-2014
ECJ Community trade mark – Opposition proceedings – Application for the Community word mark United Autoglas – Earlier national figurative mark AUTOGLASS – Relative ground for refusal – Likelihood of confusion – . .
See Also – Starbucks (Hk) Ltd v British Sky Broadcasting Group Plc and Others CA 13-Sep-2012
. .
Cited by:
Cited – Bhayani and Another v Taylor Bracewell Llp IPEC 22-Dec-2016
Distinction between reputation and goodwill
The claimant had practised independently as an employment solicitor. For a period, she was a partner with the defendant firm practising under the name ‘Bhayani Bracewell’. Having departed the firm, she now objected to the continued use of her name, . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Leading Case
Updated: 01 November 2021; Ref: scu.546545