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Passing Off Notes

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This is an extract of our Passing Off document, which we sell as part of our Intellectual Property Law Notes collection written by the top tier of Oxford students.

The following is a more accessble 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:

Test in outline
C can bring an action against D in passing off.
To succeed, the 'classic trinity' (Jif Lemon) must be made out:

i. ii.

iii. C has goodwill in the UK
D has made a misrepresentation that is likely to deceive a substantial number of relevant public
C suffers damage as a result of the misrep.

1 Goodwill 1 Does C have goodwill? (i.e. has it manifested in the name,
descriptive word, slogan,
packaging etc?).

1.1 Names, titles, invented words, symbols,

These things have goodwill as seen by customers as an indication of trade origin
E.g. Exxon (invented name)

1.2 Descriptive words, personal names,
geographic term

Only can acquire goodwill in these things if they have acquired a secondary meaning

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

C's business is well-known.
o C has used the e.g. descriptive word for a long time.
o C has spent a lot of money/done extensive advertising using the descriptive word

1.3 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:
o 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.
o Goods sold to people who are illiterate - consumers will rely more on packaging as indication of trade origin.

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