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 plaintiff’s manufacture. A more substantial use in England of the mark or get-up in respect of the plaintiff’s goods was essential.
It is a requirement of passing off that the plaintiff had to establish that he had a business presence and a reputation in the country which he brought the action: ‘It is, of course, essential to the success of any claim in respect of passing off based on the use of a given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by use in this country distinctive of the plaintiff’s goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in this country as meaning that the goods are the plaintiff’s goods. The gist of the action is that the plaintiff, by using and making known the mark or get-up in relation to his goods, and thus causing it to be associated or identified with those goods, has acquired a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind.’

Jenkins LJ
[1957] RPC 388
England and Wales
Cited by:
Appeal fromT 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A company which originally made and sold a food mixer in the United Kingdom called a ‘Turmix’, under licence from the Swiss developer, continued after revocation of the licence to make and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’.
CitedStarbucks (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: 01 November 2021; Ref: scu.566005