Passing Off

Jif Lemon
Author Paul Hirst
Creative Commons Licence
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Jane Lambert

23 Aug 2016

Passing off is a common law (that is to say judge made) doctrine that has developed through a succession of cases over many years.  In Reckitt and Colman Products Ltd v Borden Inc and Others [1990] 1 All ER 873, [1990] WLR 491, [1990] UKHL 12, [1990] 1 WLR 491, [1990] RPC 341 Lord Oliver summarized the doctrine as "no man may pass off his goods as those of another."  Another word for passing off is misrepresentation which is itself a polite word for lying. It means presenting goods or services in such a way that they can be mistaken for those of the supplier with whom the consumer is used to dealing. If the misrepresentation works the consumer is tricked into acquiring goods or services that he or she never intended to buy. Obviously bad for the supplier because he loses a sale, but often bad for the consumer too if the goods or services that he or she receives turn out to be of lower quality that those that he or she had intended to buy.

The elements of a claim for passing off were set out by Lord Oliver in the appeal mentioned above. The case concerned the packaging of lemon juice in lemon shaped containers that was similar to the claimant's Jif lemon juice. Following on from his summary which I quoted above, His Lordship said that the tort may more specifically be expressed in terms of the three elements which a claimant has to prove:
"First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of 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 that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact 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 source of the defendant's goods or services is the same as the source of those offered by the plaintiff."
The misrepresentation may be quite unintentional.  Indeed there have been instances where a defendant was not even aware of the claimant's get-up or trade name but was nevertheless liable, Most cases revolve around whether the claimant had the requisite goodwill in relation to the trade mark, get-up or other sign used in marketing and whether its customers were actually or likely to be deceived or confused.

Two variants of that doctrine have emerged over the years.  The first is known as "extended passing off" where suppliers from a region such as the champagne houses around Rheims or the whisky distillers of Scotland have prevented rival producers from other regions from associating their produce with the claimants' region. In Fage UK Ltd and Another v Chobani UK Ltd and Another [2014] EWCA Civ 5 (28 Jan 2014) , Lord Justice Kitchin identified eight principles between paragraphs [62] and [69] that apply to cases of this kind.  The second variant, known as "reverse" or "inverse passing off" is where the defendant claims the handiwork of others as his or her own.  A good example is Bristol Conservatories Ltd. v Conservatories Custom Built Ltd. [1989] RPC 106 where the defendant touted for business by displaying photographs of conservatories that had been built by the claimant.

Actions for passing off are brought in the Chancery Division of the High Court in England and Wales or at hearing centres of the County Court where there is also a Chancery District Registry. Claims for damages of £500,000 or less which can be tried in no more than 2 days may be brought in the Intellectual Property Enterprise Court. Claims of £10,000 or less may be brought in the small claims track of that court. The usual remedies are injunctions (orders of the court to refrain from the infringement), damages (compensation) or an account of profits (calculation and surrender of the defendant's profits from his or her wrongdoing) and a contribution to his costs.

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