Deliberate Confusion in respect of Goods or Services provided?
Passing Off is commonly defined as “nobody has the right to represent his goods [or services] as the goods [or services] of somebody else”. It is often encountered in matters relating to title, name or get-up (normally a visible mark or sign, which can be the goods themselves, or, more often, the packaging or logo), normally in a business context.
It can also be an important action in the protection of characters in cases which fall outside the ambit of copyright and trade mark protection and is also central to internet domain name disputes where there are no relevant registered trade marks.
There has been significant case law to consider what would constitute a successful Passing Off action, initially with the characteristics found in the case of Erven Warnik BV v J. Townend & Sons (Hull) Ltd  RPC 3 (the Advocaat case). Subsequent case law continued (and continues) to modify the law of Passing Off however it is arguable, further to the case of Reckitt & Colman v Borden  RPC 431 HL (more commonly known as the Jif Lemon case), that Passing Off could be expressed in terms of the following three elements:
- That there was a goodwill or reputation* attached to the goods or services which the Defendant supplied in the mind of the purchasing public by association with their get-up;
- That there was a misrepresentation (that does not have to be deliberate) to the public likely to lead the public to believe that the goods or services offered by the Defendant were the goods or services of the Claimant or associated with the Claimant; and
- That the Claimant is suffering or is likely to suffer damage by reason of the erroneous belief engendered by the Defendant’s misrepresentation. It is irrelevant whether or not the public was aware of the Claimant’s identity as the manufacturer or supplier of the goods in question, so long as they were identified with a particular source.
*Reputation alone does not suffice for Passing Off.
One of the key points in a Passing Off claim is the likelihood of confusion or actual confusion in the public and what constitutes the public in respect of the alleged confusion. Again this is fact specific and some instances may be easily defined. In the case of Whirlpool Corp. v Kenwood Ltd  RPC 2, p.19 there was found to be no confusion by the relevant public when selecting and purchasing a “Classic” KitchenAid Artisan mixer (which at the time was over £300 and was the only domestic mixer in this price range) and a kMix Kenwood product.
There are a number of defences to a claim for Passing Off and each claim will be fact specific, however it may be possible to show how many companies include a similar name or term, trade mark registrations, showing sufficient goodwill and reputation already acquired – turnover, advertising spend, media coverage and social media etc. which may impact on whether or not there is a misrepresentation or confusion to the public and prove a successful defence.
For a good defence, speed is often of the essence, as the less time that has elapsed between the “wrongful” trader adopting the mark or sign and an action being commenced, the greater the chance of an injunction application in preventing the initial use of a mark or sign and the less evidence of confusion will have to be adduced.
This guide is for general information only and does not constitute legal advice. If you would like to discuss anything in this article please get in touch.
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Cheyney Goulding LLP, law firm in Guildford, Surrey