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 in the USA, but no more than preparatory steps had been taken to set up a business here.
Held: That was not an adequate basis for a passing-off claim. No one in England had bought anything from one of the plaintiff’s franchised shops abroad. The plaintiff’s US advertisements reached England, but there was no solicitation by way of postal trade.
Walton J said: ‘as a matter of principle, no trader can complain of passing off as against him in any territory – and it will usually be defined by national boundaries, although it is well conceivable in the modern world that it will not – in which he has no customers, nobody who is in a trade relation with him. This will normally shortly be expressed by saying that he does not carry on any trade in that particular country . . but the inwardness of it will be that he has no customers in that country: no people who buy his goods or make use of his services (as the case may be) there.’
Judges:
Walton J
Citations:
[1980] RPC 343
Jurisdiction:
England and Wales
Citing:
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 by:
Cited – Hotel Cipriani Srl and Others v Cipriani (Grosvenor Street) Ltd and Others CA 24-Feb-2010
The claimants owned Community and UK trade marks in the name ‘Cipriani’. The defendants operated a restaurant in London using, under the licence of another defendant, the same name. The claimant sought an injunction to prevent further use of the . .
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
Updated: 04 October 2022; Ref: scu.401811