C was a company set up to exploit marketing potential of ‘Teenage Mutant Ninja Turtles’. D asked for licence to use Turtles on their clothing, but was refused. D then got an artist to draw his own version of humanoid turtles which similar to C’s, which were then used on C’s clothing. Held:
· There is arguable case of passing off
Ø Substantial number of buying public believe that where a cartoon character has been reproduced, this is as result of a licence.
Ø Thus there is a misrepresentation by D.
- i.e. as substantial number of public will believe there is some connection between D and C.
Ø Damage to C is loss of chance to obtain royalties.
Ø Such loss of royalties may result from:
i) Fall in market value of licence (as D’s use of character makes character less exclusive)
ii) Loss of money caused by D’s failure to take a licence
- i.e. as goods that could have been made under licence from C (by D or someone else) are being made elsewhere