Passing off and malicious falsehood

No man is entitled to steal another's trade by deceit1

Before looking at the protection of trade marks by registration, we need to consider how they may be protected otherwise. The answer is, by an action for passing off, which is a common law action – a type of tort. The principles of passing off are set out not in statute but in the decisions of judges, and it is therefore much more adaptable than a right frozen in an Act of Parliament. Because it is a creature of the common law, not surprisingly it is shaped by many cases from other common law jurisdictions – Australia in particular has over the years contributed many important cases to this area of law, often leading where the English courts would eventually follow.

According to A dictionary of modern legal usage by Bryan A. Garner, as a noun phrase ‘passing off’ should be two words. He notes that some authors have hyphenated it, and points to Suman Naresh, Passing-Off, Goodwill, and False Advertising, 45 Cambridge LJ 97 (1986) (to which I would add Professor Christopher Wadlow’s magisterial work, The Law of Passing-Off: Unfair Competition by Misrepresentation, Sweet & Maxwell, 4th ed, 2011), but Garner observes that ‘this rendering of the phrase is recommended only when it acts as a phrasal adjective.’ So, ‘the action for passing off’ but ‘a passing-off action’.

The action for passing off does more than just protect unregistered trade marks. There are other ways in which a person’s trade may be ‘stolen’ (perhaps the word ‘appropriated’ would be better, because ‘steal’ has criminal connotations). It is more accurate to say that it protects business reputation or goodwill, and in fact that is also what registered trade marks protect, although the law does not say so in so many words. The judges can deal with new manifestations, and uses (and abuses) of trade reputations, so character merchandising and celebrity endorsements have been recognised in the cases in the absence of statutory protection. It is sometimes described as ‘protean’: you might call it a shape-shifter.

Because the law is found in the cases, it is often difficult to identify principles in passing-off, and judgments may seem inconsistent. Being based on use, it is heavily fact-based, and cases turn on the evidence presented to the court. A hard-to-reconcile judgment might be explained by the simple fact that one party’s lawyers failed adequately to prepare the case. This also means that the cases are numerous, and commentaries on this area of law therefore extensive: Professor Wadlow’s book now (in its 4th edition) runs to 952 pages.

The courts began protecting what we would now recognise as trade marks long before registration became available. The law of passing off has a long history, but the modern tort received its basic formulation from Lord Diplock in Erven Warninck BV v John Townend and Sons (Hull) Ltd2 - the Advocaat case3. The Advocaat case acknowledges that a misrepresentation may arise when the defendant leads the public to believe that his product was another’s product which had distinctive, recognisable characteristics in the public mind.

Before then, the classic action for passing off was described in the case of Reddaway v Banham4 where Lord Halsbury said: ‘Nobody has any right to represent his goods as the goods of somebody else’. This formulation was extended in Spalding v Gamage5 where the plaintiff’s mark was being used on inferior goods (‘Orb’ footballs being sold as ‘New Improved Orb’ footballs). There was no suggestion that the goods were anything but the plaintiff’s, but a wrong was still being perpetrated.

The law has gone beyond the protection of indications of origin, dependent on customers being misled. It now gives protection for trade reputation or goodwill as a valuable asset which merits protection in its own right – a development that you can also observe in registered trade mark law. Passing off is also developing into something resembling the unfair competition laws that many civil law countries (and some common law countries, too) have: indeed, in some more recent cases the courts have said that this is precisely what passing off is.

A very useful anachronism

What purpose does passing off play in the modern world? Trade mark registration was introduced to displace the ancient law, at least in part, essentially by furnishing proof (a registration certificate) that the plaintiff had a reputation to protect. Originally, registered trade marks were based on use, just like passing off: but changes since the 1994 Act have made protection a matter of registration, not use. It is now much more important than before to register a trade mark, although there is no legal requirement to do so.

Passing off remains important as a way to protect trade marks which have not been registered, or signs which cannot for one reason or another be registered at all. It is also important for trade mark owners whose registrations may be vulnerable to invalidity or revocation claims. In Reddaway v Banning, for example, ‘camel hair belting’ would (had the Trade Marks Act 1994 been in force) probably have been considered to be incapable of distinguishing the plaintiff’s product, which was belting made from the hair of camels. But a passing off claim succeeded, because the mark had acquired a secondary meaning. (That could not however overcome a section 2(1)(a) objection to registration.) In Reckitt & Colman v Borden the lemon-shaped plastic container could not have been registered as a trade mark at the time (under the 1994 Act it could), and while registered design protection might have been available that would have expired long before – and in any case would have been directed at a different aspect of the container, namely its shape rather than the goodwill that it embodied.

Passing off also plays an important role giving supplementary protection to registered trade marks. In United Biscuits (UK) Ltd v Asda Stores Ltd6 the defendant’s ‘Puffin’ chocolate biscuits did not infringe the claimant’s PENGUIN registered trade mark: there was no likelihood of confusion because the public was able to distinguish seabirds. However, the court found the case for passing off was made out, on the basis that many consumers would assume that the biscuits had been made for the supermarket by the claimant.

Under the Trade Marks Act 1938, it was common practice to include a claim for passing off when suing for infringement. This was made necessary by the narrow concept of infringement: the defendant’s goods had to be within the specification of the plaintiff’s registration. A registered trade mark for shampoo containing henna, for example, would not be infringed by a shampoo which lacked that ingredient, but a passing-off claim could succeed. Under the 1994 Act the goods would probably be considered similar and an infringement would occur if there were a likelihood of confusion, so it is no longer necessary to plead passing off so often.

General formulation

In the Advocaat case in the House of Lords, Lord Diplock said that the tort comprises five elements:

  • a misrepresentation

  • made by a trader in the course of trade

  • to prospective customers or ultimate consumers of the defendant’s goods or services

  • calculated to injure the business or goodwill of another

  • which causes actual damage to the business or goodwill of the plaintiff or is likely to do so.

Not all cases in which these elements are present will be passing off, although without all these elements no passing off will have taken place: this is the logical fallacy of the undistributed middle that Lord Diplock mentions in his opinion in that case.

However, Lord Diplock did not give the only reasoned judgment in that case, Lord Fraser of Tullybelton formulated his own, somewhat narrower, five-part test:

It is essential for the plaintiff in a passing off action to show at least the following facts:- (1) that his business consists of, or includes, selling in England a class of goods to which the particular trade name applies; (2) that the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguishes that class from other similar goods; (3) that because of the reputation of the goods, there is goodwill attached to the name; (4) that he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value; (5) that he has suffered, or is really likely to suffer, substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached.

Then, having decided that these five elements were present, he said that while not every falsehood uttered in the course of trade would be actionable, ‘where the falsehood is a misrepresentation that the competitor’s goods are goods of definite class with a valuable reputation, and where the misrepresentation is likely to cause damage to established traders who own goodwill in relation to that class of goods, business morality seems to require that they should be entitled to protect their goodwill.’

The courts struggled for some years to reconcile the speeches of the two law lords, until the next big passing off case came to the House of Lords. Advocaat involved the use of a term that described a type of product rather than identifying a source of that product. It was therefore what is referred to as an extended passing off case (as distinct from ‘classical passing off’ which is what took place in Reddaway v Banham). Reckitt and Colman (Products) Ltd v Borden Inc7 - the JIF Lemon case – was another classic case, with one manufacturer using the indicia of another (plastic lemon shaped containers for lemon juice). In that case, Lord Oliver of Aylmerton helpfully reduced the Advocaat test to three propositions:

  • the plaintiff must establish a reputation

  • there must be a misrepresentation by the defendant (not necessarily intentional)

  • there must be resultant damage or likelihood of damage to the plaintiff’s goodwill or reputation, arising from the erroneous belief caused by the misrepresentation.

Lord Oliver’s exposition is usually preferred by the judges to Lord Diplock’s, and (like Coco v Clark in the law on breach of confidence) is almost invariably the starting point for any passing off judgment. The description of the tort in this chapter follows Lord Oliver’s approach, sometimes referred to as ‘the classic trinity’, although it is extremely difficult to fit everything on the subject into neat pigeonholes. Cases which appear to concern misrepresentation often have a significant bearing on damage, so the following exposition might appear repetitive in place. But first some words about the extent of the tort of passing off.

The Jif Lemon case was far from uncontroversial. It came at the end of a period during which the Law Lords had resisted the ever-expanding scope of intellectual property. Lord Bridge of Harwich, one of the strongest opponents of stronger rights, gave a short short judgment comprising a hard-hitting denunciation:

The idea of selling preserved lemon juice in a plastic container designed to look as nearly as possible like the real thing is such a simple, obvious and inherently attractive way of marketing the product that it seems to me utterly repugnant to the law's philosophy with respect to commercial monopolies to permit any trader to acquire a de jure monopoly in the container as such … If I could find a way of avoiding this result, I would … With undisguised reluctance I agree with my noble and learned friends that the appeal should be dismissed.

Incidentally, the respondents, Reckitt & Colman, were represented by one Robin Jacob QC.

The extent of the tort

Protean passing-off certainly is. The judges have always adapted the law to cover new situations as they have arisen, and the tort can now cover a wide range of situations.

Essentials of the action

The definitions in Advocaat and Jif both make clear that:

  • each of the plaintiff and the defendant must be in trade;

  • the plaintiff must have an established goodwill or reputation; and

  • goodwill must be damaged.

Classical passing-off

The classical version of passing-off, in which the defendant somehow persuades the claimant’s customers to give him their business, takes several forms. It can protect:

  • Personal names and nicknames (Biba Group v Biba Boutique8, Harrods v R Harrod9. The Biba case is complicated by the fact that the founder of the plaintiff company, Barbara Hulanicki, gave the shop her sister Biruta’s nickname, and when the original Biba shop closed Biruta set up her own boutique under the name, so the case shows not only that a nickname adopted as a business name can be protected by a passing off action, but also that a defendant cannot excuse their action by saying that it was their nickname. See below, paragraph .

  • Trade names (Brestian v Fry10 - ‘Charles of London’ for hairdressing).

  • Imitating the get-up (including the trade name) of the plaintiff’s goods11, even where there is no competition (giving the victim a remedy against dilution: Eastman v Griffiths Cycle12, the Kodak Bicycles case, which nickname tells you all you need to know about it), William Edge and Sons v Nicholls13 (known as the Dolly Blue case), Combe International v Scholl (UK) Ltd14 (packaging), Haig v Forth Blending15 (the Haig ‘Dimple’ whiskey bottle), and of course the Jif Lemon case.

  • Colours and shapes, which can have a secondary meaning – Hoffmann La Roche v DDSA16 cf Hoffmann La Roche v Berk,17 and see also the Pub Squash case, which failed for want of secondary meaning. Cadbury v Ulmer18 (involving the shape of a chocolate bar) and Bostock v Sellotape19 (involving the colour of the adhesive putty) both failed because there was no trade mark significance: but these cases should be reassessed in light of Arsenal

  • Look-alikes, on which see United Biscuits v Asda.

  • Claiming to be the manufacturer or supplier of the plaintiff’s goods;

  • Advertising goods in such a way as to damage the plaintiff - see McDonalds Hamburgers Ltd v Burger King (UK) Ltd20. Advertising campaigns may be protected by an action for passing off, as in RHM Foods v Bovril21 and Elida Gibbs v Colgate Palmolive,22 but the claim did not succeed in Pub Squash because of the lack of secondary meaning.;

  • Supplying goods or services in such a way about suggest the offer was sanctioned by the plaintiff - for example, in Associated Newspaper Holdings Ltd v Insert Media23 where the defendant arranged for advertising material to be inserted in the plaintiff’s newspapers without permission. Under this head, the tort also protects character merchandising: Mirage Studios v Counter Feat Clothing Ltd24;

  • Misusing a trade description that is distinctive of another’s product, taking advantage of the shared reputation of the producers of that product (the Champagne houses have made extensive use of passing off actions, as have sherry makers, Scotch whisky distillers and Parma ham curers); and

  • Celebrity endorsement: Irvine & Ors v Talksport Ltd. [2003] EWCA Civ 423 (1 April 2003)

Extended passing off

A passing off action may lie where a defendant's misrepresentation concerns not the source of the goods or services but their particular quality. Such a misrepresentation may cause harm to the claimant’s goodwill as in the Advocaat case, in which the makers of that drink sued the manufacturer of a drink that was similar but not identical to it, but which was marketed as advocaat (to be precise, as ‘Keeling’s Old English Advocaat’).

In Spalding v Gamage25 the products were made by the plaintiff, but were of second quality and the defendant was selling them as being of first quality. It is easy to see how that might affect the plaintiff’s reputation. Similarly, in Wilts United Dairies26 old stocks of condensed milk were being sold as new, and in Sodastream v Thorn27 it was refilled gas cylinders.

Character merchandising and endorsement

Common law jurisdictions28 do not generally recognise personality rights as rights of property. Accordingly, celebrities whose images or names have been used often rely on passing off. They can successfully sue if there is a representation that a product or service is being endorsed or sponsored by the celebrity or that the use of the likeness of the celebrity was authorised when this is not true.

Reverse passing off

The classic situation is where the defendant represents that their goods are the claimant’s. Reverse passing off is when the representation goes the other way: the defendant claims that the claimant’s product is the defendant’s (see John Roberts Powers School v Tessensohn29 and Bristol Conservatories Ltd v Conservatories Custom Built Ltd30) and might in this way pretend that their business is a branch of the claimant’s.

Comparative advertising

Normally there is no passing off as a result of comparative advertising because there is no origin confusion, but if the comparison implies a trade connection (as in MacDonald’s v Burger King31) it might amount to passing off. See also Kimberley Clark v Fort Sterling32.

Deception and confusion

Neither Lord Diplock nor Lord Oliver make deception an element of the action, yet deception of the public is what is being made actionable, although not at the suit of the person upon whom the deception has been practised. (The deception results from a misrepresentation, which both judges said was needed for an action to lie.) Some cases refer to confusion: like trade mark law, passing off is concerned with the misappropriation of goodwill, and this may result from confusion being sown in the marketplace. However, the courts have tended to insist that deception should be present.

In Jif Lord Oliver said that the plaintiff ‘must demonstrate that he suffers ... damage by reason of the erroneous belief engendered by [the defendant’s] misrepresentation that the source of [the defendant’s] goods is the same as [the plaintiff’s]’. The Court of Appeal applied this reasoning to extended passing off situations in Consorzio del Prosciutto di Parma v Marks & Spencer33 and Taittinger SA v Albev Ltd34 (the Elderflower champagne case), and in the RoHo case Jacob J took the same approach, in that case rejecting a passing off claim because the appropriation of goodwill was not deceptive. In Harrod’s Ltd v Harrodian School Ltd35 Millett LJ dealt with the damage to Harrod’s reputation by the school’s use of the name (it occupied premises that had once been Harrod’s staff sports club), holding that there was no passing off because, while the public might ‘call to mind’ the department store, they would not be misled into thinking that it endorsed or approved school. In the Elderflower champagne case, by contrast, use of the designation ‘champagne’ was passing off: it could – just possibly – deceive consumers. Again, we see how the cases can easily appear contradictory.

Plaintiff Has Sufficient Goodwill In ‘get Up’.

The first element of the classic trinity highlights the fact that the basis of all passing off actions is the protection of goodwill – ‘the attractive force that brings in custom’36. There are no property rights in, say, a trade name or mark to protect by passing off (the Trade Marks Act, of course, offers a way to create property in them). Goodwill ‘has no existence independent of the business to which it relates. It is local in character and divisible; if the business is carried on in several countries a separate goodwill attaches to it in each. So when the business is abandoned in one country in which it has acquired a goodwill, the goodwill in that country perishes with it although the business may continue to be carried on in other countries’. But note Ad Lib v Granville 37 where the goodwill lived on after the demise of the business.

Goodwill may be generated through pre-launch activities, although the courts have only reluctantly accepted this38. How long it might take to reach critical mass depends on the circumstances39.

This is more easily shown with invented words or ‘fancy names’. Traders are well-advised to avoid descriptive names: the British Diabetic Association case turned on the similarity of the words ‘Association’ and ‘Society’. It also allows the shape of containers to be covered: Reckitt & Colman (Products) Ltd v Borden Inc40.

Although it is goodwill that the action protects, it is embodied in some sort of indicia used by the complainant which distinguished their goods or services in the public mind. It will normally be a logo, mark or name, or product ‘get-up’, but could arise through public association of the complainant with a particular character in, say, a TV programme, film or book41. Distinctiveness is of crucial importance, as in trade mark law.

Also as in trade mark law, the courts will be slow to intervene to protect a descriptive trade name; Office Cleaning Services v Westminster Windows and General Cleaners Ltd42, and see Antec International Ltd v South Western Chicks Ltd43 (‘Farm Fluid’ was nevertheless sufficiently distinctive to give rise to a possibility of confusion). Geographical names may acquire secondary meanings. In Whitstable Oyster Fishery Co. v Hayling Fisheries Limited44 the defendant was permitted to describe oysters which reached maturity at Whitstable as Whitstable Oysters. In Wotherspoon v Currie45 where the plaintiff had made his Glenfield Starch at Glenfield but moved his factory, he could still prevent the defendant calling his starch which he made in Glenfield by the same name. The same is true of non-geographical names, such as the ‘Camel-Hair Belting’ in Reddaway v Banham. The expression, though an apt description of the plaintiff’s goods, had come in the marketplace to identify such goods originating from the plaintiff only.

Generic use (once again, as in trade mark law) will destroy distinctiveness. The sign – the brand name – must have been used to indicate commercial origin: if it is used to designate a particular model or type of product no reputation will accrue,46 although this is not an easy boundary to define. Some goods may be so novel – they may even have patent protection – that there may be no other convenient name for them, which is what happened with oven chips. (McCain International v Country Fair Foods47).

Where it is the ‘get-up’ of the product that is claimed as distinctive, the complainant may have problems. The courts will consider the whole of the get up: he cannot pick and choose elements. Many of those elements will be common in the trade – the problem (if problem it is) of ‘look alike’ products in supermarkets. Finally, the fact that however similar the packaging appears, the brand name is different, will often clinch the argument.

Shared or simultaneous reputation

The reputation must either belong to the claimant exclusively, as it usually is, or may be shared with a limited number of others: J Bollinger v Costa Brava Wine Co. Limited48 - ‘the Spanish Champagne Case’ - where twelve champagne producers were allowed to prevent the sale of ‘Spanish Champagne’. This case has now been followed in cases involving sherry49, scotch whisky50, advocaat51, and (most recently) elderflower champagne Tattinger v Albev52. There is no need for the public to associate the goodwill with one particular trader, or specific traders; they only have to identify the product as having a particular source, which may be unnamed53. A detailed knowledge of the names of Champagne houses or sherry producers is unnecessary.

It is not limited to alcoholic drinks. The designation Swiss Chocolate was protected in Chocosuisse Union des Fabricants Suisses de Chocolat v Cadbury Ltd54 and Parma ham has also been he subject of litigation. But the most recent example of this type of passing off action does go back to alcohol: Diageo North America Inc. v Intercontinental Brands (ICB) Ltd55 concerned a drink labelled VODKAT in the style of the claimant’s Smirnoff product, without an indication that it was not vodka. The case shows that this type of passing off is not limited to products which consumers see as being of superior quality – if it were, the claimant’s goodwill would be poorly protected.

A variation on this theme is found in the Budweiser litigation, compared by Jacob LJ in one of the myriad cases56 comprising this huge, global dispute to the Hundred Years War (it had been a century since legal hostilities had broken out). The rights to the name had been acquired by Anheuser-Busch, the American brewer, from the people of České Budějovice (Budweis in German), a town in Bohemia in what is now the Czech Republic: but the Czech brewers did not stop brewing their vastly superior product. There is an argument in that litigation that Budweiser denotes a type of beer, in the way that Pilsener denotes a beer from Pilsen, and protected geographical designations have played a minor part in the Hundred Years War. To bring us back to passing off, one specific skirmish in the War must be mentioned: Anheuser-Busch Inc. v Budějovický Budvar Národní Podnik57

Two businesses might use trade marks that come from a single source. In Sir Robert McAlpine Ltd v Alfred McAlpine58 the family business had been split along geographical lines, and each had to take care to avoid customers mistaking one for the other. One co-owner cannot be allowed to damage the exclusivity of the name. See also Boswell-Wilkie Circus v Brian Boswell Circus59 . In IN Newman Ltd v Adlem60 a majority in the Court of Appeal held that the goodwill had been transferred and the defendant had not done enough to prevent customers being misled: Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others 61 provides a further illustration. So, while there is an own name defence to a passing off action, it is harder to run than in trade mark law: indeed, there is no passing off case in which it has succeeded62.

The reputation must be a business reputation, or goodwill

Passing-off protects trade reputations or goodwill, not the reputation enjoyed by private individuals. If someone damages a private reputation an action for defamation might lie, and they could be compensated for that damage, but without the business context a claim for passing off cannot succeed. (The close relationship between the law of passing off and defamation is emphasised by the fact that the tort of malicious falsehood or slander of goods provides additional protection for trade reputations and is described below.)

Goodwill – it is synonymous, at least for our purposes, with business reputation – is a valuable business asset, and one way to define it is to consider it as the difference between the value of a business and the sum total of all that business’s assets, tangible and intangible, less liabilities. It is limited in geographical scope and in time.

Geographical extent of goodwill

A reputation is converted into goodwill by a trade presence in a particular jurisdiction, and is limited to that jurisdiction. Goodwill is territorial, but not necessarily national: it may also be localised within the jurisdiction63. There must be a business or trading presence in the territory – a ‘spill-over’ reputation (from advertising or visitors returning from abroad) is not usually enough. In Anheuser-Busch Inc. v Budejovicky Budvar NP,64 ‘the Budweiser case’ (although in fact one of many), the beer had a reputation but no goodwill, as only US service personnel (and their families) could buy it here. The Court of Appeal held that there must at least be customers in the UK who can be misled by the defendant’s representations. On the other hand, demonstrating just how fact-dependent are passing-off cases and likely to result in decisions that are at best hard to reconcile, in Maxim’s v Dye65 a similar spillover reputation was sufficient, with Graham J adopting a ‘global’ view of goodwill. And see also Bernadin v Pavilion Properties Limited, the Crazy Horse Saloon case66 where the Paris night club succeeded on the basis that it was possible to make a reservation by telephone from England. In Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others 67 the claimants (the owners of the famous hotel in Venice) had customers in the UK when the defendant’s restaurant opened, and had foreign customers who booked direct. They had a substantial reputation her, and more importantly they had valuable goodwill too. The Court of Appeal68 upheld Arnold J’s judgment, though Lloyd LJ expressed some reservations about the ‘direct bookings’ test, which he thought might in the Internet age be outmoded although the case before him did not provide an opportunity to deal with the matter.

In Sheraton Corporation v Sheraton Motels69 the important thing was that the plaintiff had an office in this country taking bookings for hotels overseas, and that was enough to support its claim (though the decision has been criticised as being over-generous to the plaintiff). So, these days, does online booking make a difference? It seems reasonable to assume so. The cases were reviewed by Browne Wilkinson VC in Peter Waterman v CBS (The Hit Factory)70 and the way the earlier cases insisted on the plaintiff having both a business presence and customers in the UK before being able to sue for passing off was criticised. But that case was decided several years before the Internet became significant, and in these days of global digital exposure for anything uploaded to the Web that requirement looks anachronistic.

In other common law jurisdictions, generosity towards foreign claimants has been greater. In the Australian case Conagra Inc. v McCain Foods (Aust) Pty Ltd71 the court held that reputation alone sufficed – there was no need for that reputation to be converted into goodwill by actual sales.

The rule that there must be goodwill in the jurisdiction was modified in 1994, by section 56 of the Trade Marks Act which belatedly implements the UK’s obligation under Article 6bis of the Paris Convention (which was added to the Convention in 1925: it can hardly be said that the UK has rushed into legislating on the point). This provides that foreign trade mark owners who have neither a registration nor use of their mark in the UK can nevertheless prevent others from misappropriating it if they can show that their mark is well-known. The catch here is that it is so hard to know whether a mark qualifies, although the World Intellectual Property Organisation has published some guidance.72 Of one thing we can, however, be sure: section 56 cannot be invoked by individuals or organisations domiciled in the UK – it is specifically designed not to help them.73

Extent of goodwill in time

Goodwill may survive the termination of a business, but not for ever, and probably not for long. How long is a question of fact in each case: if the claimant has closed the business down with no intention to re-open it, that points to the goodwill being extinct. See Ad-Lib Club v Granville74, and contrast Star Industrial Company v Yap Kwee Kor.75 In the Jules Rimet case, the goodwill in the cartoon lion mascot of England’s triumphant World Cup football team, World Cup Willie, survived for nearly 40 years after the final whistle in 1966. That result surely owes more to the historic sporting significance of the event than anything inherent in the mascot.

Misrepresentation

Lord Oliver’s second requirement was that there must be a misrepresentation, by a trader, in the course of trade, and indeed this misrepresentation is precisely what the courts are providing a remedy for. The other conditions are jurisdictional, that is they enable the courts to become involved rather than giving rise to a claim. Such a representation is, however, rarely expressly made. It may take the form of the defendant using indicia identical or similar to the complainants’, as in Jif; it may take the form of the defendant substituting another product for the claimant’s, hoping the customer will not notice76. The nature of the product may be misrepresented, as in the drinks cases. The misrepresentation may be express or implied, made by words or conduct, innocent or fraudulent. The important thing is that it has the necessary effect on the minds of consumers: it must lead them to associate the defendant’s goods or services with the claimant, to think that it was something for which the claimant was responsible.77

The tort has become even wider in its scope in recent years:

The tort is no longer anchored, as in its nineteenth-century formulation, to the name or trade mark of a product or business. It is wide enough to encompass other descriptive material, such as slogans or visual images, which radio, television or newspaper advertising can lead the market to associate with a plaintiff’s product, provided always that such descriptive material has become part of the goodwill of the product. And the test is whether the product has derived from the advertising a distinctive character which the market recognises78.

Lord Diplock widened the scope of the passing-off action in Advocaat, arguably opening the door to a general tort of unfair competition, but in Pub Squash (notwithstanding the previous paragraph) the impeccably liberal Lord Scarman (who was also a member of appellate committee of the House of Lords in the Advocaat case, where he agreed with Lords Diplock and Fraser) seemed to reject a wider role for passing off as a tort of misappropriation, saying ‘competition must remain free … A defendant … does no wrong by entering a market created by another and there competing with its creator. The line may be difficult to draw; but, unless it is drawn, competition will be stifled.’ Fatal to the claim in Pub Squash was the lack of secondary meaning, so although the facts could amount to passing off, none was committed – and in any case Lord Diplock had certainly not intended that the action should become a hindrance to competition, stressing that it operated in an economic system ‘which has relied on competition to keep down prices and improve products’. Key to understanding how a passing-off case on facts like those in Pub Squash would have to be put together is the requirement that the advertising must be part of the goodwill (which, after all, is the property that the passing-off action protects). The more innovative the advertising, the more distinctive it will be and therefore the more likely to form part of the claimant’s goodwill. In Pub Squash the claimant’s advertising lacked the necessary degree of innovation. In the RoHo case the line was drawn (by Jacob J) by requiring that the defendant’s misrepresentation confuse the consuming public, leading to real damage to the claimant’s goodwill: in ChocoSuisse Laddie J said there was no general remedy against unfair competition, while extending protection to the title ‘Swiss Chocolate’ – a description hardly tied to the product’s qualities.

A representation may amount to passing off even though it is an accurate description of the goods; in Reddaway v Banham ‘Camel Hair Belting’ accurately described the product but the market understood it to mean the plaintiff’s goods. Note that the court did not prevent the defendant describing his goods as camel hair – it only stopped him describing them in a confusing manner. The case tells us that innocent misrepresentation may still be actionable.

Geographical marks may be protected by a passing off action, but it can be very difficult (Powell v Birmingham Vinegar79, the Yorkshire Relish case, and Montgomery v Thompson80 where ‘Stone Ale’ had acquired factual distinctiveness.

The principle extends to traders representing ‘seconds’ as goods of the manufacturer’s usual quality81 and to passing off one’s business as another’s, or as being connected or associated with another’s (Office Cleaning Services Ltd v Westminster Windows and General Cleaners Ltd82). In Associated Newspapers v Insert Media83 the Court of Appeal held that there had been passing off when the defendant inserted advertising leaflets in the claimant’s magazines, because the public would assume that the claimants had approved them. Also see United Biscuits, above, where the decisive factor was that the public would think that the chocolate biscuits had been made by the claimant for the defendant.

The plaintiff’s reputation and goodwill may also be damaged if prospective customers are shown photographs of the plaintiff’s products by the defendant so as to suggest that they are the defendant’s, a form of reverse passing off: The right to sue for passing off has also been extended to charities, although the judge made plain that he did not think litigation was a good use of charitable funds: see British Diabetic Association v The Diabetic Society84.

The misrepresentation need not be active. It may arise from the defendant’s silence, as in Law Society of England & Wales v Griffiths85, where the defendant used an alphanumeric telephone number for a PI helpline and failed to take steps to disabuse callers of any notion that they had called the plaintiff.

Licensing and merchandising

At the outer limits of the passing off action lie cases involving licensing arrangements and character merchandising. Where the parties share a common field of activity, it is not a radical step to characterise certain activities as passing off, but if there is no common field it becomes more difficult, though a common field is not a requirement (though in this country it once was): see McCulloch v Lewis A May (Produce Distributors) Ltd (the Uncle Mac case)86. Thus, Harrod’s Ltd v The Harrodian School Ltd was decided in the plaintiff’s favour, as the public would not assume that Harrod’s was connected with the school: and see Lyngstad v Annabas87 (Abba), Lego v Lego M Lemelstrich Ltd88.

If the parties are in different fields, some connection between them in the public mind must be shown. The courts may consider that the public will infer that there is a licensing arrangement in place, as in Mirage Studios v Counter-Feat Clothing89 (the Ninja Turtles case) but sometimes a licensing arrangement will be such an unlikely possibility that no reasonable person would believe it could exist: Stringfellow v McCain Foods (GB) Ltd90.

A claim based on inferred licensing is more likely to succeed where there is an established licensing business, where the public believes the licensor exercises quality control over the licensees, and the ‘new’ goods represent a plausible extension of the brand or would expect it to be used on a wide range of goods.

This area also covers endorsement and character merchandising. The English courts have been very reluctant to decide that there was an appropriate business in which product endorsement was likely, or that an inference should be drawn that an endorsement was being given. See the Abba case and Tavener Rutledge v Trexspalm Ltd91 (Kojakpops).

In character merchandising situations, the courts will look for four elements:

  • Public inference of a licensing connection. The courts have been reluctant to find one: Wombles v Wombles Skips92, Abba, Tavener Rutledge. They do recognise that the public understands how brand owners may licence their property: see the Ninja Turtles case, so far the only successful character merchandising claim in English passing off law (and it was only an interlocutory decision).

  • Quality control. The courts have considered that the proprietor of the brand stands behind the goods, and this guarantee of quality persuades the purchaser to buy them. The public must assume that there is some such control.

  • The misrepresentation must be material to the purchaser. The sign must be used as an indication of origin or quality, not just as a decorative icon.

  • It must cause damage. In Ninja Turtles the court considered this requirement was satisfied.

Australian cases take the matter much further. Several of them are discussed in Ninja Turtles. See Hogan v Pacific Dunlop93 (Crocodile Dundee), Childrens TV Workshop v Woolworth (Sesame Street)94, Fido Dido v Venture Stores95.

Defendant’s actions causing deception

There is no need to prove fraud, meaning intention to pass off; but if there is no fraud, it is not necessary that the parties are competitors – all that is needed is sufficient similarity so traders or members of public think the goods or services are from same source. Derek McCulloch v Lewis A May (Produce Distributions) Limited96: and see Mirage Studios v Counter-Feat Clothing97, where the English courts accepted for the first time that character merchandising (there, involving the Teenage Mutant Ninja Turtles) was an activity that the law on passing off could protect: the public, seeing tee-shirts printed with images of cartoon turtles, would assume there was a commercial connection between the printer and the owner of the rights in the characters.

The English courts are highly suspicious of survey evidence. With the best will in the world, questions are often far from neutral.98 They prefer to see customers give evidence in person that they have been misled (so they can be cross-examined). In Neutrogena v Laborotoires Garner99 the claimant’s solicitor sent an e-mail to her staff to find out if they had been confused by the defendant’s advertisement. But overcoming the judges’ distrust of surveys can come at great cost: in the Jif case, the trial took 22 days.

The persons deceived if there is to be a passing off must constitute a substantial part of the common consuming public. Who this may be will vary from case to case: it may be children (Lyons Maid v Trebor100), it may be the very nervous (Hoffman-laRoche v DDSA Pharmaceuticals Ltd101), it may be the housewife in a hurry (Jif). It is often wrongly said that it may be the moron in a hurry (Morning Star v Express Newspapers102): in that case, the judge in fact remarked that even that particular individual would not confuse the two newspapers. It is likely in a modern case that the court would favour the test developed in trade mark law, where the Court of Justice has said that the notional consumer is reasonably well-informed, reasonably observant, and circumspect.103

Damage

The plaintiff must have suffered or be likely to suffer damage or injury to his business or goodwill. Inconvenience or annoyance is not enough.

Once evidence is established of deception or likely deception, injury to reputation or goodwill is readily presumed (but see the Elderflower Champagne case, Taittinger v Albev104 where at first instance the court held that the damages were insufficient to support the action). In classical passing off cases, custom is diverted, sales are lost, and injury naturally follows. If there is no reputation in UK no damage can be suffered (the Budweiser case), which shows nicely how the elements of Lord Oliver’s ‘classical trinity’ are bound up together.

The type of business with which the plaintiff’s is confused may be material. In Stringfellow v McCain Foods (GB) Limited105 no damage to nightclub (falling attendances, etc) was found to result from sales of Stringfellows chips.

Older cases reveal that there had to be a common field of activity: however, practices such as character merchandising tend to make this obsolete (Mirage Studios v Counter-Feat Clothing Ltd106, the Ninja Turtles case), and even years ago the requirement was questioned (especially in Australian cases).

Damage may be measured by direct loss of sales if the parties are in direct competition. If the wrong consists in dilution of the complainant’s mark, direct loss of sales will not be an issue: the complainant is seeking compensation for the loss of value of his goodwill. In the Harrodian School case Millett LJ cast doubt on this head of damage, saying:

... erosion of the distinctiveness of a brand name which occurs by reason of its degeneration into common use as a generic term is not necessarily dependent on confusion at all. The danger that if the defendant’s product was not called champagne then al sparkling wines would eventually come to be called champagne would still exist even if no-one was deceived into thinking that such wine really was champagne. I have an intellectual difficult in accepting the concept that the law insists upon the presence of both confusion and damage and yet recognises as sufficient a head of damage which does not depend on confusion.

Damage may also arise from the inferiority of the defendant’s goods, from injurious association and from the loss of a licensing opportunity (as in Lego, and more recently in Irvine). Rolls-Royce Motor Cars v Dodd107 must also be mentioned here: in a field replete with cases with strange facts, it is in a class of its own. John Dodd, who by coincidence shared his name with the plaintiff’s then company secretary, ran a business providing services to owners of Rolls-Royce cars. Often he would be called upon to travel to the continent where a customer’s car had broken down. To ensure a speedy service, he had constructed a special motor car powered by a Rolls-Royce Merlin aero engine, as used in the Supermarine Spitfire and other aircraft of a similar vintage. Relying on the origin of the engine, he adorned the car with a Spirit of Ecstasy mascot and other badges of origin associated with Rolls-Royce, so convincingly that the real manufacturer was reportedly asked by the German authorities to refrain from carrying out high-speed testing of their new models on the autobahns. For one hearing at the Royal Courts of Justice, Mr Dodd turned up on horseback to reinforce the point that Rolls-Royce wished to stop him using his car. Megarry J held that his activities were indeed damaging to the reputation of the car maker.

This last group of cases, or some of them, suggests that a passing off action may be capable of providing a remedy where the damage is what might be referred to as dilution – which, since 1994, has been a form of (registered) trade mark infringement, too, although not called by that name in the Act. The Elderflower Champagne case is a prime example of how passing off can protect against dilution (the reputation being what is diluted, not the drink): there was little evidence that consumers were likely to be misled by the elderflower drink, so no significant loss of sales, but the Court of Appeal (reversing the first instance judgment of Hoffmann J) was satisfied that the reputation of the designation ‘Champagne’ would be diluted by the defendants’ actions and the claimants succeeded.

The Kodak and Lego cases demonstrate that a claim can succeed where the defendant trades in dissimilar goods, but a very strong reputation is needed.

Enabling Others To Pass Off The Defendant’s Goods

The tort extends to the situation where the defendant supplies goods to someone else, who then passes them off as another’s. When a manufacturer sells to a wholesaler, or a wholesaler supplies a retailer, the chances are that there is no deception because the buyer is familiar with the various goods on the market; passing off occurs when they are sold to inexpert consumers, and the manufacturer who originally applied the misleading get up is liable.

This rule applies even where the actual passing off takes place overseas. In two cases, suppliers of whisky to South America where it was mixed with local spirits and sold as Scotch were successfully sued by Scotch distillers. In one case (John Walker & Sons Limited v Henry Ost & Co Limited108) bottles and labels were also supplied, to complete the deception; but in the other case, though this extra feature was absent, the action still succeeded.

A passing off action may also lie against a defendant who puts into circulation an instrument of fraud such as a fake Rolls-Royce motor car: Rolls-Royce v Dodd109. In Marks & Spencer plc and others v One In A Million Ltd110 the principle was applied to stock-piling of Internet domain names. The defendants did not intend to use the domain names to pass themselves off as the plaintiffs, but they were willing to sell them to others who might do so.

Defence

In most cases, a defence to a passing-off claim will be limited to arguing about the facts – that an element of the trinity is missing. In Cadbury v Ulmer111 the claimants failed to convince the court that the shape of the chocolate bar had acquired distinctiveness. In Harrod’s there was insufficient evidence that consumers would have associated the claimants with the defendant’s school. Finally there might be no damage to goodwill, which is what proved decisive in the Elderflower Champagne case at first instance (before Hoffmann J as he then was) – the Court of Appeal took a different view.

A person may use their own name (but not just a forename or nickname: Biba Group v Biba Boutique112) as a trade name for the business, provided it does no more than confuse, but may not use it as a trade mark if the effect would be to deceive (Parker Knoll v Knoll International113). People must be allowed to trade under their own names, but have no absolute right to use them as brands. What this amounts to is saying that honest use may cause confusion but the person whose name causes the confusion cannot be blamed for that. Honest concurrent use may provide a defence: Waterman v CBS114.

The need, if it exists, for a common field of activity could also be said to offer a defence. Annabel’s v Schock115 (night club v escort agency) might be thought to be such a case, but the court approached it on the basis that if the parties are not in direct competition it is hard to establish a likelihood of confusion.

MALICIOUS FALSEHOOD

The tort of malicious falsehood is committed where a statement is made that is both untrue and made maliciously. If the requirements of the Defamation Act 1952, section 3(1), are fulfilled, the claimant does not have to allege or prove special damage:116 but if the requirements of this section are not made out, the claimant must allege and prove that he has sustained actual financial loss and that such loss must have been caused by the malicious falsehood.117

Where statements are confined to the property of the claimant and his commercial interests, rather than his personal reputation and good name, the case is one of malicious falsehood and not libel.118 The same facts may support an action for libel and for malicious falsehood, in which case it is not an abuse to prosecute the malicious falsehood rather than the libel.119

In Jaybeam Limited the Abru Aluminium Limited120 the claimant took action for malicious falsehood where threats of a copyright infringement were being made. The claim was also based on unlawful interference with the claimant’s business.

If the defendant intends to justify his remarks, no interlocutory injunction will normally be granted.121 By contrast, where a threats action is brought, an interlocutory injunction would normally be available, but normal practice in defamation claims is not to grant such an injunction. If, however, the Court is satisfied on the evidence that the statements are untrue and are made maliciously, it may grant an interlocutory injunction.122

Malice

The statements must be made mala fide – that is to say, with a dishonest motive.123 If the claimant can prove that the defendant knew that the statements were untrue, that is strong evidence of malice and whether the defendant intended to profit from the action is irrelevant. On the other hand, if the defendant believed the statement to be true but made it for the purpose of injuring the claimant, this would also be considered malicious.124

Falsehood

The defendant must make a false statement about the goods of the claimant.125 The falsehood must be of such substance that a reasonable man would take it as a serious claim,126 so minor falsehoods are not actionable.

In Challender v Royle127 the defendant threatened the claimant with an action for infringement of his patent. The act complained of fell within the scope of the patent monopoly, but the defendant knew that the patent was invalid. The statement was clearly malicious, and as for its truthfulness, Cotton LJ said:

I cannot see how, if a patent is invalid, there can be any act done in infringement of a legal right when the legal right depends only on the validity of that patent.’

Infringement and invalidity are however separate issues, and it is at least arguable that a right one is granted is valid until it is taken off the Register.

A true statement is never actionable as a malicious falsehood. It does not matter how harmful it may be to the claimant. Moreover, the onus of proof that the statement is untrue is on the claimant.

In MacDonalds Hamburgers Limited v Burger King (UK) Limited128 the defendants engaged in comparative advertising. The Court held that it would not interfere to restrain what amounted to hyperbolic puffing about the virtues of the defendant’s own product, although it seems that in the case of more sophisticated products statements about competitors’ goods will be examined more closely by the Courts to ensure that they are scrupulously correct.129 In Cable & Wireless v BT130 Jacob J expressed the view that malicious falsehood adds little if anything to a trade mark infringement claim in a comparative advertising case.

Single meaning’ rule

In defamation law, it is well-established that only one meaning is to be ascribed to the words complained of. In Ajinimoto Sweeteners Europe SAS v Asda Stores Ltd131 the complaint was about the words ‘no hidden nasties’ together with no artificial colours or flavours and no aspartame’ (the claimant is a big manufacturer of aspartame, an artificial sweetener). The judge (Tugendhat J, much better-known as a defamation expert than an intellectual property one) held that the court should not select one bad meaning when other non-defamatory meanings were available, and therefore preferred the non-defamatory interpretation for which the defendant argued (‘... these foods were for customers who found aspartame objectionable’). The Court of Appeal 132 (where the leading judgment was given by Sedley J) reversed that finding, holding that the single meaning rule did not apply in cases of malicious falsehood.

Damage

Before the Defamation Act 1952, the Plaintiff had to prove that special damage had been suffered. The tort of malicious falsehood was therefore largely restricted to matters that directly concerned either the property or the business of the Plaintiff.133 Under Section 3 of the 1952 Act, there is no requirement to prove special damage if the statement in question was:

  • calculated to cause pecuniary damage to the Plaintiff or published in a writing or other permanent form: or

  • was calculated to cause pecuniary damage to the Plaintiff in respect of any office, profession, calling, trade or business, held or carried on by him at the time of the publication.

  • The use of the words ‘calculated to cause’ does not add to the mens rea of the offence. It may be established by the objective test of being likely to cause.134

  • Where the requirements of section 3 are not made out the Plaintiff must allege and prove that he has sustained actual financial loss, and that such loss was caused by the malicious falsehood.135

1Lord Oliver of Aylmerton in Reckitt and Colman (Products) Ltd v Borden Inc [1990] RPC 341, [1990] 1 WLR 491 at 509 (HL).

2[1979] AC 73.

3An excellent short history of the passing off action is to be found in Aldous LJ’s judgment in British Teleommunications plc and others v One In A Million Ltd and others [1998] FSR 265(CA).

4[1896] AC 199.

5(1915) 32 RPC 273 (HL).

6[1997] RPC 513.

7[1990] RPC 341, [1990] 1 WLR 491, [1990] 1 All ER 873 (HL).

8[1980] RPC 180.

9(1923) 41 RPC 74 (CA).

10[1958] RPC 161.

11In Hodgkinson & Corby Ltd v Wards Mobility Services Ltd [1995] FSR 169 - the ROHO case - it was invoked (unsuccessfully, on the facts of the case) to protect an inflatable cushion designed to make life more tolerable for wheelchair-bound people.

12(1898) 15 RPC 105.

13[1911] AC 393.

14[1980] RPC 1.

15(1953) 70 RPC 259.

16

17

18

19

20[1986] FSR 4.

21

22

23[1991] 3 All ER 53.

24[1991] FSR 145.

25(1915) 32 RPC 273.

26[1958] RPC 94 (CA), affirming [197 RPC 220.

27[1982] RPC 459 (CA).

28Except for Jamaica: The Robert Marley Foundation Ltd. v. Dino Michelle Limited. (CL. Rl 15/1992), judgment 12 May 1992. See The New Tort of Appropriation of Personality: Protecting Bob Marley's Face by B. St. Michael Hylton and Peter Goldson, Cambridge Law Journal, Vol. 55, No. 1 (Mar., 1996), pp. 56-64. The identity of the subject probably explains why the Jamaican court gave protection. More recently, Guernsey has introduced a new right to protect one’s personality, which expressly creates property rights: The Image Rights (Bailiwick of Guernsey) Ordinance, 2012.

29[1995] FSR 947.

30[1989] RPC 455.

31

32[1997] FSR 877.

33[1991] RPC 351.

34[1993] FSR 641 (CA).

35[1996] RPC 69 (CA).

36IRC v Mullers Margarine [1901] AC 217.

37[1972] Lord Diplock in Star Industrial Coy Limited v Yap Kwee Kor [1975] FSR 256.

38See Elida Gibbs v Colgate Palmolive [1983] FSR 95, My Kinda Town v Dr Pepper’s Store Co [1984] FSR 289, and Marcus Publishing plc v Hutton Wild Communications Ltd [1990] RPC 576 (CA).

39See Stannard v Reay [1967] FSR 140 where three months’ use of ‘Mr Chippy’ for a mobile fish and chip shop sufficed. But the value of this case as a precedent is very limited, because the defendant was operating his van under the same name, the claimant’s reputation was limited to the Isle of Wight (mobile fish and chip shops have limited range, especially when a ferry crossing would be needed to extend it), and his sales had dropped considerably as soon as the defendant started.

40Note 5, supra.

41See, for example, Shaw Brothers v Golden Harvest [1972] RPC 559.

42Note 16, supra. See also Furniture Land v Harris [1989], FSR 536.

43[1998] FSR 738.

44(1901) 18 RPC 434.

45[1872] LR 4.

46Burberrys v Cording (1909) 26 RPC 693.

47[1981] RPC 69. See also My Kinda Town v Soll [1983] RPC 407 (Chicago P1729) and Canadian Shredded Wheat v Kellogg [1938] All ER 618.

48[1960] 1 All ER 561.

49Vine Products v Mackenzie [1967] FSR 402, [1969] RPC 1.

50Walker v Ost [1970] RPC 489.

51Erven Warnick, note 2.

52 [1993] 2 CMLR 741.

53Edge v Nicholls [1911] AC 693.

54[1999] RPC 826.

55[2010] EWHC 17 (Ch).

56Budějovický Budvar Narodni Podnik v Anheuser-Busch Inc. [2009] EWCA Civ 1022 (20 October 2009).

57[2000] RPC 906.

58[2004] RPC 711.

59[1986] FSR 479.

60[2005] EWCA Civ 741.

61[2008] EWHC 3032 (Ch), on appeal [2010] EWCA Civ 110 (24 February 2010).

62See the Reed case.

63See Chelsea Man v Chelsea Girl [1987] RPC 189.

64[1984] FSR 413.

65[1978] 2 All ER 55.

66[1967] RPC 581.

67[2008] EWHC 3032 (Ch).

68[2010] EWCA Civ 110 (24 February 2010).

69[1964 RPC 202.

70[1993] EMLR 27.

71(1992) 106 ALR 465.

72Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (adopted September 1999), referred to by Richard Arnold QC (as he then was), sitting as the Appointed Person, in Le Mans Autoparts’ Trade Mark Application (O/012/05)

73Jules Rimet Cup Ltd v The Football Association [2008] FSR 254.

74[1971] FSR 1.

75[1976] FSR 217 (Privy Council).

76Bovril v Bodega, (1916) 33 RPC 153.

77See Goff and Buckley LJJ in Bulmer v Bollinger, .

78Per Lord Scarman in Cadbury Schweppes Pty Ltd v The Pub Squash Co Ltd [1981] RPC 429.

79

80[1891] AC 217

81Spalding v Gamage (see note 4, supra), and Colgate-Palmolive v Markwell Finance [1989] RPC 497.

82(1946) 63 RPC 39.

83[1991] FSR 380.

84[1996] FSRI. See also Society of Accountants and Auditors v Goodway [1907] 1 Ch 459.

85[1995] RPC 16.

86[1947] 2 All ER 845.

87[1977] FSR 62.

88[1983] FSR 155.

89Note 9, supra.

90[1984] RPC 501, 525 (CA).

91[1977] RPC 275.

92[1977] RPC 99.

93(1989) 14 1PR 398.

94[1969] RPC 218.

95(1988) 16 IPR 365.

96Note 20, supra.

97Note 9, supra.

98See Dalgety Spiller Foods Ltd v Food Brokers [1994] FSR 505.

99[1996] RPC 473.

100[1967] FSR 146. See also Topps Company Inc. v Tom Hannah (Agencies) Ltd (The Times, 14th February 2000).

101[1969] FSR 391, [1972] RPC 1.

102[1979] FSR 113.

103Case C-342/97, Loyd Schufabrik Meyer & Co GmbH v Klijsen Handel BV, [1999] ECR I-3819.

104Note 11, supra.

105[1984] RPC 501.

106Note 9, supra.

107[1981] FSR 519.

108[1970] RPC 489.

109[1981] FSR 517.

110[1999] FSR 1.

111[1988] FSR 385.

112[1986] RPC 479.

113[1962] RPC 265.

114[1993] EMLR 27.

115[1972] RPC 838.

116RJ Reuter v Muhlens [l1953] 70 RPC 102 and 23.

117Brady v Express Newspapers plc [1994] The Times 31st December.

118CHC Software Care Limited v Hopkins & Wood [1993] FSR 241.

119Joyce v Sengupta [1993] 1 All ER 897.

120[1976] RPC 308.

121Polydor Limited v Harlequin Record Shops Limited [1980] FSR 26, and Mainmet Holdings plc v Austin [1991] FSR 538.

122Kaye v Robertson [1991] FSR 62.

123Greers Limited v Pearman & Corder Limited (1922) 39 RPC 406.

124Wilts United Diary v Thomas Robinson & Sons Company Limited [1957] RPC 220.

125Timothy White v Gustav Mellin [1895] AC 154.

126De Beers Abrasive Products Limited v International General Electric Company of New York [1975] FSR 323.

127[1887] 4 RPC 363.

128[1986] FSR 45.

129Ciba-geigy plc v Parke Davis & Company Limited [1994] FSR 8.

130[1998] FSR 383, 385, and see BA v Ryanair [2001] FSR 32 (High Court, 5 December 2000) in which Jacob J reiterated this view.

131[2009] EWHC 1717 (QBD).

132[2010] EWCA Civ 609.

133Haddan v Lott (1845) 15 CB 411, 139 ER 484.

134Customglass Boats Limited v Salthouse Brothers Limited [1976] RPC 589 (New Zealand).

135Brady v Express Newspapers plc, note 63 supra.

Comments