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Law Notes Intellectual Property Law Notes

Passing Off Cases

Updated Passing Off Cases Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).

These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...

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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

  • Harrods both:

  1. Offers an incredible range of goods and services

  2. Has a long-established and wide reputation for doing this

  • 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”

  • Only goodwill can be protected by passing off.

  • 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:

  • 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

  • See notes

  • 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:

  • 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

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

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

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

Second argument

  • A mere ‘trade connection’ to UK does not suffice

  • i.e. this argument was not accepted in Pete Waterman Case.

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

Anheuser-Busch [1984]

C sold Budweiser on an American airbase in UK, but not to UK general public. D sold beer of same name in UK, C sued for passing-off. Claimed it had goodwill amongst UK public. Held:

  • Those working at American airbase did not represent ‘UK public’

  • Thus C had no place of business in UK

    • And hence no goodwill

Alain Bernardin v Pavilion Properties Ltd [1967]

C owned a club called the Crazy Horse in Paris, which was popular amongst English customers and which he advertised in England. D opened a club of same name in England. C sued. Held:

  • Was no passing-off.

  • This because C had no customers in UK

  • Mere reputation amongst UK customers does not suffice to show goodwill.

Associated Newspapers v Express Newspapers [2003]

C published the Daily Mail. D decided to publish regional paper in South-East England, called the ‘London Evening Mail’. Held:

  • Even if C did not have goodwill across UK, sufficed that C had local goodwill in South-East England.

  • Therefore was passing off in South-East England.

End of Goodwill

Ad-Lib Club v Granville [1967]

C had a successful nightclub called the ‘Ad-Lib’ club. Was forced to close. After 5 years had passed, D opened a club called the ‘Ad-Lib’ club. However at this time, C was actively seeking new premises to reopen the original club. Held:

  • Goodwill of C had survived.

  • This because C was actively seeking new premises.

Jules Rimet Cup v Football Association [2007]

C, the FA, was owner of copyright in a lion mascot from 2006 World Cup called ‘World Cup Willie’. D applied to register the name and lion symbol in respect of merchandise. C opposed registration on grounds that C still had goodwill in original mascot. Held:

  • D obviously believed that there was residual commercial value in World Cup Willie

  • as otherwise they would not have been willing to pay for it.

  • Thus as a consequence there was residual goodwill in World Cup Willie.

  • i.e. as it was precisely this goodwill that D was confident of using to make a profit.

  • This despite 40 years of non-use.

Distinguishing...

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