With the continuous and arguably growing popularity of designer garments and use of celebrities with product endorsements, it is no surprise that certain individuals may use a knock off designer product to endorse and monopolise off another individuals/company’s high profile status without prior consent. This sort of action is commonly known in English law as the tort of passing off.
What is passing off?
Passing off is used whereby the consumer of a product is likely to be confused or misled by the product on sale where the product in question has been ‘passed off’ as being endorsed by a designer or an individual whose image is used is in fact produced by the figure them self.
While the early history of passing off is unclear, it is widely recognised that the first action for passing off was recognised in what is regarded as ‘Elizabeth’ case of JG. V Samford and further defined in Pery v Truefitt135. In Truefit, Lord Langdale summed up the rationale for the passing off action as: “a man is not to sell his own goods under the pretence that they are the goods of another man; he cannot practice such deception”. Following this, in ErvenWarnink v Townend & Sons136, Lord Diplock set the five principles that are required for the action of passing off. The most modern application however saw Lord Oliver reduce the five requirements to three. These three requirements are usually referred to as the ‘classic trinity’ which were set out by Lord Oliver in Reckitt & Colman Ltd v Borden Inc – also known as the Jiff Lemon Case. In this case, Lord Oliver offered a clear and concise definition of the three elements that, in his view, were the essential ingredients of tort. He noted that for a successful claim in passing off, the claimant must establish 1. Goodwill 2. Misrepresentation and 3. Damage.
In order to establish goodwill, the claimant must establish that they had a reputation in the mark and that the public associates the mark with a specific product or service. An example of this is Nike proving that they have a reputation in respect of trainers.
Goodwill is an intangible asset that has been described as “the benefit and advantage of a good name, reputation and connection of a business. It is the attractive force which brings in custom” Inland Revenue Commissioners v Muller & Co’s Margarine 1901
In order to establish misrepresentation, the claimant must show that the defendant’s sale of goods/services has caused confusion amongst consumers into believing the goods are owned by the defendant.
The misrepresentation may take the form of an express statement by the defendant to this effect, or may be implied from the use by the defendant of the same or similar distinguishing marks in respect of his goods or services are used by the claimant.
To bring a successful action for passing off, the claimant must show that the misrepresentation by the defendant has caused damage to the claimant’s reputation.
If all three are successfully established within a passing off claim, the claimant may, by way of remedies, be entitled to damages, an injunction, an order to have the infringing goods destroyed or a request for an inquiry to establish the claimant’s loss.
If you have any questions relating to this article or believe your may have a claim for passing off, contact us today where we would be happy to assist you.