- Published on
The second component is misrepresentation that causes misunderstanding. The defendant must have made a false statement while conducting business. The usage of the plastic lemon in the Jif Lemon case (see 18.1) constituted a deception. The majority of passing-off incidents involve intentional misrepresentation. Stated differently, the defendant is intentionally attempting to "ride on the back" of the claimant's achievements. Take the "Penguin and Puffin" case, United Biscuits (UK) Ltd v. Asda Stores Ltd [1997] RPC 513, as an illustration. This decision dealt with the two brands of chocolate biscuits' similar packaging. Product of Asda was the Puffin biscuit. Their packaging was remarkably similar to the Penguin biscuit's design. They also used the tagline "pick up a Puffin" in an advertising campaign. This gave the impression that Penguin was being mentioned on purpose, which hurt Asda's legal case because passing off was so simple to prove. Even innocuous misrepresentations can give rise to legal action, though. Since the purpose to deceive is not a necessary component, the defendant does not even need to be aware of the claimant's products. However, it would probably have a significant impact on the damages award. Customers or potential customers must get confused as a result of the misinformation, usually regarding the trade source. Customers must be led to believe that the defendant is affiliated with the claimant or that the claimant is the source of the defendant's products (for example, that the defendant is a licensee or a member of the same group of companies).
One well-known instance of this kind of deception is First Conference Services Ltd v. Bracchi [2009] EWHC 2176 (Ch), [2009]. All ER (D) 56 (Oct.), in which the claimant's former employee attempted to misrepresent conferences he organized as being held by his former employer. He accomplished this by claiming that the speakers would be "previous speakers," or individuals who had attended conferences that the claimant had hosted the year prior. Additionally, he gave false information to the speakers about who the real conference organizer was. Confusion must occur at the point of sale or earlier, according to the prevailing rule (although a High Court ruling deviates from this; see below).The producers of Blu-tack were unsuccessful in their attempt to get an injunction in a passing-off lawsuit against a competitor who made a product that looked similar in Bostik Ltd v. Sellotape GB Ltd [1994] RPC 556.
Only once the box was taken off was the product's likeness revealed. At the time of sale, there was no chance that the customer would become confused. Thus far, English courts that have established precedent—such as the Supreme Court or the Court of Appeal—have declined to adopt the view of other jurisdictions that post-sale confusion suffices. On November 19, 2020, the Intellectual Property Enterprise Court heard the High Court case of Freddy SPA v. Hugz Clothing and others, wherein the court acknowledged that a passing off claim may be based on "post-sale confusion." The claimant in this case, a well-known fashion company, contended that the defendants were marketing counterfeit body-enhancing pants. Although most customers were aware that they were purchasing the "unofficial" version of jeans, they still hoped that others would mistake them for the more expensive real ones when they saw them on. The owner of goodwill is entitled to passing off protection for the duration of the product, not just at the point of sale, according to a previous New Zealand case that the court upheld. It will be fascinating to watch whether a higher court follows its reasoning when the chance presents itself because the Freddy case court is a part of the High Court and has not established a precedent that has altered the law. It is insufficient that there is ambiguity regarding the product offered by the defendant and the claimant. Consumers have to think that the claimant is connected to the defendant's products. The case of HFC Bank plc v Midland Bank plc [2000] FSR 176 served as an example of this. HFC Bank opposed when Midland was acquired by HSBC and rebranded as HSBC. Customers would mistake HSBC for HFC, they claimed. HFC was unable to demonstrate, among other things, that they had attained adequate brand name recognition in connection to the initials HFC. Even if consumers did mistakenly believe HSBC to be an acronym for HFC, this would not necessarily be the case. Absence of a distinctive characteristic may lead to inadvertent misrepresentation.
It was decided in Sir Robert McAlpine Ltd. v. Alfred McAlpine plc [2004] EWHC 630 (Ch), [2004] RPC 36 that the defendant had engaged in misrepresentation when it omitted the first name "Alfred" and only used the name McAlpine. Put differently, it led to misunderstanding regarding the claimant's name. In the following ways, there must be overlap between the proprietor and the accused infringer in terms of a "common field of activity": (a) Kind of goods or services: Would a bicycle manufacturer be mistaken for a law firm? Geographically speaking, an Aberdeen restaurant is not likely to displace a Plymouth restaurant; also, time-wise, the overlap needs to be about contemporaneous.
It will be difficult, though not impossible, to demonstrate misunderstanding or, in many circumstances, harm to goodwill in the absence of a shared field of action. However, given that major national or international corporations, like Tesco, BP, and others, are well-known for engaging in a remarkably broad range of products and services, it would be relatively simple for passing off to occur in the absence of any common activity. Nevertheless, the claimant would still have a strong opportunity to halt the activity, as demonstrated by the case law.
One well-known instance of this kind of deception is First Conference Services Ltd v. Bracchi [2009] EWHC 2176 (Ch), [2009]. All ER (D) 56 (Oct.), in which the claimant's former employee attempted to misrepresent conferences he organized as being held by his former employer. He accomplished this by claiming that the speakers would be "previous speakers," or individuals who had attended conferences that the claimant had hosted the year prior. Additionally, he gave false information to the speakers about who the real conference organizer was. Confusion must occur at the point of sale or earlier, according to the prevailing rule (although a High Court ruling deviates from this; see below).The producers of Blu-tack were unsuccessful in their attempt to get an injunction in a passing-off lawsuit against a competitor who made a product that looked similar in Bostik Ltd v. Sellotape GB Ltd [1994] RPC 556.
Only once the box was taken off was the product's likeness revealed. At the time of sale, there was no chance that the customer would become confused. Thus far, English courts that have established precedent—such as the Supreme Court or the Court of Appeal—have declined to adopt the view of other jurisdictions that post-sale confusion suffices. On November 19, 2020, the Intellectual Property Enterprise Court heard the High Court case of Freddy SPA v. Hugz Clothing and others, wherein the court acknowledged that a passing off claim may be based on "post-sale confusion." The claimant in this case, a well-known fashion company, contended that the defendants were marketing counterfeit body-enhancing pants. Although most customers were aware that they were purchasing the "unofficial" version of jeans, they still hoped that others would mistake them for the more expensive real ones when they saw them on. The owner of goodwill is entitled to passing off protection for the duration of the product, not just at the point of sale, according to a previous New Zealand case that the court upheld. It will be fascinating to watch whether a higher court follows its reasoning when the chance presents itself because the Freddy case court is a part of the High Court and has not established a precedent that has altered the law. It is insufficient that there is ambiguity regarding the product offered by the defendant and the claimant. Consumers have to think that the claimant is connected to the defendant's products. The case of HFC Bank plc v Midland Bank plc [2000] FSR 176 served as an example of this. HFC Bank opposed when Midland was acquired by HSBC and rebranded as HSBC. Customers would mistake HSBC for HFC, they claimed. HFC was unable to demonstrate, among other things, that they had attained adequate brand name recognition in connection to the initials HFC. Even if consumers did mistakenly believe HSBC to be an acronym for HFC, this would not necessarily be the case. Absence of a distinctive characteristic may lead to inadvertent misrepresentation.
It was decided in Sir Robert McAlpine Ltd. v. Alfred McAlpine plc [2004] EWHC 630 (Ch), [2004] RPC 36 that the defendant had engaged in misrepresentation when it omitted the first name "Alfred" and only used the name McAlpine. Put differently, it led to misunderstanding regarding the claimant's name. In the following ways, there must be overlap between the proprietor and the accused infringer in terms of a "common field of activity": (a) Kind of goods or services: Would a bicycle manufacturer be mistaken for a law firm? Geographically speaking, an Aberdeen restaurant is not likely to displace a Plymouth restaurant; also, time-wise, the overlap needs to be about contemporaneous.
It will be difficult, though not impossible, to demonstrate misunderstanding or, in many circumstances, harm to goodwill in the absence of a shared field of action. However, given that major national or international corporations, like Tesco, BP, and others, are well-known for engaging in a remarkably broad range of products and services, it would be relatively simple for passing off to occur in the absence of any common activity. Nevertheless, the claimant would still have a strong opportunity to halt the activity, as demonstrated by the case law.
0 Comments