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Law Notes Intellectual Property Law Notes

Passing Off Notes

Updated Passing Off 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...

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Goodwill

Does C have goodwill? (i.e. has it manifested in the name, descriptive word, slogan, packaging etc?).

Names, titles, invented words, symbols, logos

  • These things have goodwill as seen by customers as an indication of trade origin

  • E.g. Exxon (invented name)

Descriptive words, personal names, geographic term

  • Only can acquire goodwill in these things if they have acquired a secondary meaning (Reddaway)

  • Factors which you can point to to show that it has acquired a secondary meaning

    • C’s business is well-known.

    • C has used the e.g. descriptive word for a long time.

    • C has spent a lot of money/done extensive advertising using the descriptive word

Packaging (get up, trade dress)

  • Can only acquire goodwill if either

    • (i) distinctive of C’s goods, or

    • (ii) if it is ‘get-up common in trade’ it can only have goodwill if has acquired a secondary meaning (Jif Lemon)

  • More likely that a packaging will have goodwill in:

    • Goods sold in a foreign language market (e.g. Chinese instant noodles) - UK consumers much more likely to rely on the packaging as indication of trade origin than the foreign names.

    • Goods sold to people who are illiterate - consumers will rely more on packaging as indication of trade origin.

    • If the goods are common household goods (e.g. pasta, toilet roll), then consumers will rely on packaging much more (Jif Lemons)

Slogan, advertising style

  • Can acquire good will if sufficiently distinctive of C’s good such that are seen as an indication of trade origin).

  • Compare to facts of Cadbury Schewppes:

    • Advert featured masculine, adventurous men drinking the lemon drink - was distinctive enough.

‘Trader operating in trade’

Pre-trading goodwill

Situation: C hasn’t opened up business yet. Can they still have goodwill?

  • Starbucks v BSB: only if either:

  1. Has a customer base in the UK ; or

  2. C has advertised/promoted business to a future targeted customer base.

Post-trading goodwill

Situation: C business has finished. Can they still have goodwill?

  • Factors to consider to determine whether goodwill continues to exist (Knight v Beyond Properties):

    • Strength of the original goodwill

    • Business continuing to promote the product even though they have stopped manufacturing/selling them

    • The product remains in the public eye:

      • E.g. TV show re-runs

      • E.g. vintage cars

  • Also if C hasn’t abandoned the goodwill/intends to resume business:

    • See World Cup Willie facts:

      • They just shelved mascot until the next time the World Cup was hosted in the UK.

Does a foreign trader have goodwill in the UK?

The fact that the foreign trader has a mere reputation in the UK doesn’t count

  • The fact that the foreign trader has a mere reputation in the UK is not enough to establish goodwill in the UK (Starbucks v BSB)

Starbucks v BSB test.

Notes

(i)

  • UK nationals who happen to be customers of C when they go abroad doesn’t count.

(ii)

  • The ‘entity in the UK’ doesn’t have to e.g. be a branch/office of C that they keep in the UK - could be through a third party e.g. a travel agent that exists in the UK.

  • Websites:

    • Lord Neuberger says ‘an entity which exists in the UK’

    • Therefore:

      • Bookings through a UK-based website would suffice.

      • But bookings through a foreign-based website would not suffice as this is not a booking through an ‘entity which exists in the UK’.

D makes a misrepresentation that is likely to deceive the public

  1. C’s mark is so well-known

  • If C’s mark in question is really well-known, then it is more likely that the public is deceived (Lego)

  1. Similarity of D’s mark to C’s

  • The more similar D’s mark is to C’s, the more likely that consumers will be deceived.

(Wagamama ; Penguin)

  1. Type of good in question

  • If the goods are everyday household items that e.g. you can get at a supermarket, then consumers wouldn’t pay...

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