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Unit 2 Passing Off Notes

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Unit 2 - Consolidation IP C = claimant D = Defendant What is protected?
What benefit does protection provide?
How is it obtained?
How long does it last?
What is passing off?

Goodwill, e.g. logo or name, 'get up' Protects against unfair use of, or damage to, business reputation Arises automatically (no registration) Indefinitely

 Misleading customers into believing there is a connection with a product or a product from a different company
 A common law tort, not strictly an intellectual property right
 Reddaway v Banham o No one has the right to represent his goods as the goods of somebody else
 The presentation of products is protected, known alternatively as a product's 'get up'

OUTCOME 1 - identify situations in which the following can be used to protect goodwill: OUTCOME 3 - Advise on the similarities between rights

a)

Passing off in the UK and other commonwealth jurisdictions

UK

Canada

Goodwill is the "attractive force which brings in custom" Automatically able to bring a passing off action once goodwill built up and protection is indefinite

Ciba-Geigy Canada Ltd. v. Apotex Inc Similar get up for S of hypertension tablets Followed 3 part test of UK

Reckin & Coleman v Borden - Jiff plastic lemon bottle (3 stage test)

1. Establish goodwill (sales fig + revenue)

2. Misrep by D to public as to origin

3. C suffers or likely to suffer damage by reason or erroneous belief If the misrep does lead to confusion then a presumption of damage (more misleading =
more damaging)

b)

The USA:

The Lanham Act s.43(a) "Palming off" False or misleading legislation of origin Likely to cause confusion

Actual/likely damage to goodwill

c)

Europe

Unfair commercial practices directive All MS must bring in own implement legislation UK = consumer protection from unfair trading regs 2008/1277 Therefore standard common law +EU reg allowed two attempts at passing off
 Reputation + distinguishing marks protected
 Where appreciably impairs customer liability to make informed decisions
 Includes confusing consumer as to origin

OUTCOME 2 - Advise on conditions that must exist for the rights to apply:

Elements to be established by C Consorzio del Prosciutto di Parma v Marks and Spencer plc/Reckitt & Coleman v Borden:

1. That there is goodwill or reputation attached to the goods or services which he supplies

2. Demonstrate a misrepresentation by D to the public (whether or not intentional) leading or likely to lead the public to believe that the goods/services offered by him are those of C

3. Demonstrate that he suffers (or is likely to suffer) damage by reason of the erroneous belief caused by D's misrep

1. Lord Macnaghten IRC v Muller & Co's Magazine 1901 - "Very easy to describe but Goodwill difficult to define. It is the benefit of the good name, rep and connection of a business. It is the attractive force which brings custom"

Goodwill means business rep:
- Must be among customers or prospective customers
- Must be in relation to some distinguishing feature
- C must show the customers associate the goods/services with C and also that the customers understand the distinguishing feature as an indication or sign that the goods/services come from C

Proving goodwill:
- health accounts
- number/diversity of customers
- length of trading history
- geographical spread of goodwill

Sources used to prove goodwill:
- sales figures

- expenditure on advertising (using distinguishing feature in question)
- witness evidence
- survey evidence
- focus groups (which product would you prefer?)

Types of distinguishing feature:
- logo, shape, colour or style of packing, get up,
- a name (e.g. Neutrogena Corp v Golden ltd: Neutralia sufficiently similar to Neutrogena to constitute passing off)

The category of things in which C can have reputation is not closed and cannot be conclusively defined or limited The limits of the tort are very wide (because passing off is a common law tort)

2. Misrep leading to confusion

There must be a misrep made by D in the course of trade (i.e. a false rep which deceives/confuses C's customers)
- Usually deliberate, e.g. the Penguin and Puffin case - United Biscuits v Asda1997
- Could be innocent but still actionable o

D need not even be aware of C's products - intention to misrep isn't an essential element (though likely to severely affect damages)

Must lead to confusion of customers/ potential customers and generally it must be confusion as to trade source
- Customers must be fooled into thinking that D's products come from or are associated with C

1. Confusion must be at point of sale, or before it (in contract to other jurisdiction which recognise post-sale confusion) o Bostik v Sellotape - injunction failed where similarity of products only revealed after removal of packaging

2. Confusion between C and D's products is not enough - customers must believe that D's products are associated with C o o

HFC Bank v Midland Bank - similar sounding company names insufficient to amount to passing off Removal of a distinguishing feature can result in unintentional misrep
- Robert McAlpine Ltd v Alfred McAlpine plc 2004

3. Needs to be an overlap between alleged infringer and proprietor in that there is a common field of activity in the following respects: a) Type of good/services - business in different fields/trades is less likely to cause confusion - e.g. bicycle maker v law firm b) Geographical area - businesses in different areas less likely to cause confusion c) Time - the overlap must be more or less contemporaneous
- Unless there is a common field of activity it will be difficult but not impossible to show confusion and damage to goodwill Evidence of confusion

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