George East Housewares Ltd v Fackelmann GmbH & Co KG and another  EWHC 2476 (IPEC),  All ER (D) 82 (Oct)
The claimant company was the successor to a long-established kitchenware manufacturer, which sold measuring cups in the United Kingdom under the brand name ‘Tala’ since 1992.
The first defendant, Fackelmann, manufactured household items and kitchen gadgets and utensils, which it sold in Germany and elsewhere under the Fackelmann brand, and under ‘Dr Oetker’ brand, for which Fackelmann had a license.
In 2005, the second defendant (Probus), an established UK business, was taken over by Fackelmann’s connected company (EQH). Probus imported and distributed kitchen gadgets and utensils.
The claimant claimed goodwill in respect of its Tala measuring cups and contended that the defendants had passed off their own conical measuring cups as the claimant’s goods by creating a similar get-up.
The defendants denied that goodwill subsisted in the claimant’s get-up in respect of the Tala measuring cups, and denied passing off.
The claimant submitted that, by early 2013, when the defendants had commenced the acts complained of, the get-up of the Tala cups had become distinctive, and had been associated by traders and consumers only with the claimant.
The five elements to the get-up were: (i) the shape of the cup, (ii) the Tala name (iii) the design of and, to some extent, the wording used on the exterior (iv) the design of and, to some extent, the wording used on the interior of the cup and (v) the brand.
The claimant submitted that it had acquired goodwill in the first four features individually or in combination and that they played such a dominant role in the get-up that passing off could occur regardless of the role of the brand name, Tala, which appeared on all of the cups and on the labels attached to them at the point of sale.
The issue to determine was whether the claimant had, by January 2013, owned goodwill in its business associated with the get-up, therefore making the cups bearing the get-up distinctive to the claimant.
To determine passing off, it has been determined that the claimant must prove: (i) goodwill of the claimant (ii) misrepresentation by the defendant and (iii) consequent damage.
It was possible, depending on the particular facts of the case, for features such as shape and decoration to identify a product even when the name by which it was known was missing, and for a competing product to cause passing off even when no confusingly similar name was adopted.
However, cases in which the origin of a product was recognised regardless of the name attached to it were rare.
Weighing together all of the factors, the evidence did not show that the public had been educated to recognise the shape of a Tala cup as indicative of the origin of the goods.
The claimant had not proved that the shape of the Tala cups was the ‘crucial point of reference’ for those who wanted specifically a Tala cup, as opposed to those who wanted a measuring cup which performed the same function as a Tala cup.
In the circumstances, goodwill was not attached to the shape of the cups alone, regardless of the other elements of the get up.
The claimant had not proved that the get-up had goodwill at the relevant date in the absence of the Tala trade name.
Â In the circumstances, by January 2013, the claimant had not owned goodwill in its business associated with the get-up, excluding the brand name, such that cups bearing the get-up were distinctive of the claimant.
Therefore, the claim would be dismissed.