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Passing Off Cases

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PASSING OFF Goodwill and Reputation Goodwill v Reputation Harrods v Harrodian School [1996]
C was proprietor of Harrods department store. D opened a preparatory school named the 'Harrodian School' in premises upon which the 'Harrodian Club' (a club originally founded for the store's employees) had been situated. C did not run a school, nor did it ever intend to do so. Nevertheless C alleged there was passing off. Held: Millett LJ

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Harrods both: i) Offers an incredible range of goods and services ii) Has a long-established and wide reputation for doing this

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However public only associate a trader's reputation with a limited field of commercial activity
? "To be known to everyone is not the same as to be known for everything"

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Only goodwill can be protected by passing off.

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Thus use of Harrods name by D did not trespass on C's goodwill. Lego Systems [1983]
C was the manufacturer of the 'lego' toy. D was a manufacturer of gardening equipment including sprinklers from coloured plastic, though did not operate in UK. When D sought to expand into UK, C alleged passing off and sought injunction. Held:

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C had established reputation in mark 'Lego' that was capable of extending far beyond toys.
? i.e. was capable of extending even to items such as gardening equipment. Thus was real risk that public would believe there was connection between C and D.

Location of Goodwill Pete Waterman v CBS United Kingdom [1993]
C was a successful pop-music production company known to UK public as 'The Hit Factory'. C did not trade as 'the Hit Factory', but had released three compilation albums of their hits under that title. D, a record company who owned a studio in London, entered into agreement with owner of a studio in New York for refurbishment and running of London studio. New York company had traded as 'The Hit Factory' since 1970, and granted licence to D to use that name. C sued for passing off. Held: Browne Wilkinson VC

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See notes

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I personally believe test of whether C had a 'trade connection' to UK is preferable
? However because of previous higher authority, the most liberal interpretation it is possible to give test is that C needs UK customers On facts, New York studio has had substantial number of customers in UK since its creation
? Thus is entitled to use its name within the UK

Hotel Cipriani v Cipriani (Grosvenor Street) [2010]
C ran famous Hotel Cipriani in Venice. D ran a restaurant of same name in Mayfair. C sued for passing off. Held:

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Mere fact that C has a reputation in England does not show UK goodwill.
? To have goodwill C must always have customers amongst the general UK public
? no matter how great its reputation in UK Is doubtful whether there is need for 'direct bookings'
? However on facts is clear customers book for C's hotel directly from UK
? Thus no need to decide On facts, C had goodwill in UK.

Plentyoffish Media v Plenty More LLP [2011]
C ran a dating website in America called 'Plenty of Fish', which was free to join. D, a British company, set up a pay-for-use dating website in UK called 'Plenty More Fish', and had this registered as trademark. C claimed that D was profiting from its goodwill. C claimed that: 1) its website was heavily visited by UK internet users, and that these people were C's customers 2) even if the website users did not constitute customers, a mere 'trade connection' to UK suffices to give a business goodwill in the UK. Held: First argument

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Is possible for customer to be someone using a service for free.

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However mere act of visiting C's website does not make someone a customer

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To be customer, person visiting website must actually become a member and sign up to use C's services. Second argument

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A mere 'trade connection' to UK does not suffice
? i.e. this argument was not accepted in Pete Waterman Case.

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Thus fact that C's reputation in UK earns him money (from adverts) does not suffice to show goodwill in absence of UK customers

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