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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

Harrods both: i) Offers an incredible range of goods and services ii) 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

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