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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...

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Overview

Common law tort

  • Actionable without proof of damage, as long as there is likelihood of future damage

    • D doesn’t need to be at fault

  • NOT a full property right or general right against unfair competition

    • Must be in the course of trade

    • Right to bring an action only lasts as long as the underlying business

Definition

Erven Warnick v Townend [1979] AC 731 (Advocaat)

  • UKHL (Lord Diplock): Misrepresentation could be on the origin of the goods or also the class or quality of the goods (even if they are accurately from C)

  • Lord Diplock: 5 main elements

    • Misrepresentation

    • By a trader in the course of trade

    • To his prospective customers or ultimate consumers

    • Calculated to injure the business or goodwill of another (or reasonably foreseeable)

    • Causes (or is likely to cause) actual damage to C’s business or goodwill

  • Lord Fraser: The business must involve selling a clearly defined class of goods in England which have goodwill attached to the name because of reputation

Reckitt & Colman v Borden [1990] 1 WLR 491 (Jif Lemon)

  • UKHL: “no man might pass his goods as those of another”

    • NOTE: Extended passing off is no longer limited to this situation

  • Lord Oliver’s “classic trinity”: 3 basic elements for passing off

    • C must establish “goodwill or reputation attached to the goods or services”

      • Must be distinctive of his goods/services

    • C must “demonstrate a misrepresentation by the defendant to the public”

      • That the goods or services are those of C

    • C must demonstrate that he suffers or is likely to suffer “damage by reason of the erroneous belief engendered by the defendant’s misrepresentation”

Essay Topics

Carty, Passing off: frameworks of liability debated (2012)

  • 4 possible frameworks for the tort of passing off

    • “though at times a strict adherence to the classic trinity guides the courts, at others there is a manipulation of those same ingredients to achieve a desired result. This has obscured the direction of the tort, undermined coherence and has enboldened claimants”

  • Strict classic trinity (Carty framework)

    • Strong focus on the need for goodwill, misrepresentation and damage

  • Misappropriation classic trinity (Wadlow framework)

    • This is a tort of misrepresentation

    • 3 important intersections

      • Serving the interests of both producers and consumers

      • Acknowledging both ethical considerations and economic expediency

      • Liability for business misrepresentation and misappropriation

    • Exploiting goodwill and not just harming goodwill should be part of the trinity

    • E.g. Asda case

  • Misrepresentation beyond the classic trinity (Wadlow’s alternative)

    • General tort of misrepresentation without the goodwill requirement

    • E.g. Lego case

  • Misappropriation per se (Davis framework)

    • Protecting C’s “investment, competitive edge or promotional aura” and not just goodwill in the traditional sense

    • Rejected by Jacob LJ in L’Oréal, but supported by Aldous LJ in Aresenal FC

    • Davis: Since the courts often manipulate the classic trinity requirements “to counter a perceived misappropriation”, passing off “has in fact come to encompass a remedy against misappropriation”

  • Carty’s conclusion: While there has been tendency to refocus passing off in terms of misappropriation or unfair competition, we should not “embrace such an action”

    • Passing off should be a “damage-based and fault-free tort”, shouldn’t develop into a pure misappropriation action (similar to ‘dilution theory’)

Relationship with unfair competition

Advocaat Case (1979)

  • Lord Diplock: Action for passing off shouldn’t be available in all cases involving actual damage “in consequence of inaccurate statements” made by rivals

    • This would “run the risk of hampering competition”

Unclear what the relationship is

  • Arsenal FC v Reed [2003] 1 All ER 137

    • Aldous LJ: Passing off is “perhaps best referred to as unfair competition”

  • L’Oréal v Bellure [2007] EWCA Civ 968

    • Ds marketed smell-alike equivalents of C’s perfumes and issued comparison lists

    • Jacob LJ: “the tort of passing off cannot and should not be extended into some general law of unfair competition”

      • Claim failed because there was no misrepresentation or deception

      • ALTHOUGH the use of C’s trade marks in the comparison lists was infringement

  • Aplin/Davis: UK has specific laws preventing anti-competitive practices

    • BUT it has no general law against misappropriation

      • E.g. where there is unjust enrichment by relying on the value created in the product by C (such as by creating similar perfumes in the L’Oréal case)

Arnold, English unfair competition law (2013)

  • The traditional view: there is no tort of unfair competition

    • Swedac v Magnet & Southerns (1989): “unfair competition is not a description of a wrong known to the law”

  • BUT Paris Convention Art 10bis requires Union countries to provide “appropriate legal remedies” to repress acts of unfair competition

    • UK claims that it complies by a mix of legal mechanisms (e.g. consumer protection legislation, passing off and breach of confidence”

    • L’Oréal v Bellure: CA held that UK was not in breach by not having general tort

  • Main acts that constitute unfair competition

    • Acts calculated to influence demand (e.g. misleading advertising)

      • Covered by consumer protection law and malicious falsehood

      • Usually enforced by public authorities rather than privately by traders

    • Acts that impede competing supplies

      • Covered by economic torts

    • Acts that exploit a competitor’s value

      • Covered by passing off, trade mark and breach of confidence

  • Although there is still no general tort of unfair competition, it is NOT true that there is no English law of unfair competition

    • Similar protection is offered in harmonised areas (e.g. consumer protection laws) although it may be less effective than other EU countries since no private action

    • Passing off and malicious falsehood have evolved to offer broad protection

    • This doesn’t mean that there is a line drawn, since there are still areas where English law differs from other EU...

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