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Passing Off Notes

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PASSING OFF Passing Off

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Involves one person passing off his goods for that of another. Passing off can be deliberate or accidental. Three elements required to show passing off.
? the 'classic trinity'
? Reckitt and Coleman v Borden [1990]
'Classic trinity' is: 1) Goodwill or reputation attached to goods and services of C 2) Misrepresentation by D to public
- Such as is likely to lead public to believe goods or service of D are in fact those of C; and 3) Damage suffered by C due to this belief

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1) GOODWILL OR REPUTATION

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1. Passing off protects C's goodwill. Goodwill is the "benefit and advantage of a good name, reputation and connection of a business"
? i.e. any value that is added to business by these factors
? Lord Macnaghten in IRC v Muller & Co's Margarine [1901]

Goodwill v Reputation

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Is distinction between goodwill and reputation i) Passing off will always protect C's goodwill. ii) However will not always protect C's reputation
- Harrods v Harrodian School [1996]

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Two examples of where passing off will not protect 'mere reputation': 1) If public only associate C's reputation with a limited field of commercial activity.
- i.e. even if C is well known, no damage to goodwill if public would not mistakenly believe that C was engaged in the type of business in question o Harrods Ltd v Harrodian Schools [1996]
o Contrast Lego Systems v Lemelstrich [1983]
2) Mere reputation insufficient if C has no goodwill in the UK (see below)

2. 'Trader'

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i)

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Charities

Goodwill must attach to a business. No need for C to be actively engaged in making profit.
? Suffices that there is some commercial value in C's reputation Thus has been held that 'trader' includes non-profit organisations such as:

- British Legion v British Legion Club [1931]
ii) Professional institutions
- e.g. the Law Society
- Law Society of England and Wales v Society of Lawyers [1996]

3.

Location of Goodwill

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a)

C's goodwill must exist in the UK.

Foreign Goodwill

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C has goodwill in UK if he has customers from the UK.
? Even if C's business is situated in another country
? Pete Waterman v CBS United Kingdom [1993]

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NO NEED for C to provide his services in the UK
? i.e. they can be provided from a foreign country to UK customers who are in that country
? Pete Waterman v CBS United Kingdom [1993]

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Thus For C to have goodwill in the UK, no need for C to either: i) Carry on a business in the UK ii) Or even provide any products or services within the UK itself
- this can be done for UK customers who have travelled abroad (services)
- or for UK customers who have ordered things from abroad (products) 'Customers'

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'Customers' includes people to whom services are provided for free
? Plentyoffish Media v Plenty More LLP [2011]
If UK internet users merely visit a foreign website, does not make them customers of that website
? to be customers, must be case that they actually obtain some service or product provided by operator of website
? Insufficient that their visits generate advertising revenue for C
? Plentyoffish Media v Plenty more LLP [2011]
Services
? old case suggested provider of services abroad only has UK goodwill where direct bookings for those services are made from the UK
- e.g. via phone/internet
- Sheraton [1964]
? however later case has suggested no need for direct bookings from UK
- Hotel Cipriani [2010]

Restrictions

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Two recent cases in which UK courts declined to further broaden the test for UK goodwill. 1) Mere fact that C has a large reputation in England does not suffice
- to have goodwill C must always have customers amongst general UK public
- Hotel Cipriani v Cipriani (Grosvenor Street) [2010]
2) Mere 'trade connection' to UK does not suffice

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