PASSING OFF

TOPIC OF THE DAY

- THE COMMON FORMS OF PASSING OFF

- THE ELEMENTS OF PASSING OFF

- THE REMEDIES OF PASSING OFF

- THE DEFENCES OF PASSING OFF

THE COMMON FORMS OF PASSING OFF

Passing off refers to the unauthorized use of another party's reputation or goodwill to deceive consumers. Common forms of passing off includes:

1. Misrepresentation of Goods or Services: This is the presenting goods or services in a manner that suggests they originate from a different source than they actually do.

2. False Endorsement: This is falsely claiming an association or endorsement by a reputable person, organization, or brand to promote goods or services.

3. Imitation of Packaging or Design: This is the copying of the packaging, design, or trade dress of a well-known product to deceive consumers into believing they are purchasing the original product.

4. False Advertising: This is the making of false or misleading statements about goods or services, including their origin, quality, or characteristics.

THE ELEMENTS OF PASSING OFF

The elements of passing off typically include:

1. Goodwill or Reputation: Here, the claimant must establish that they possess goodwill or reputation associated with their goods or services. See the case of Reckitt & Colman Products Ltd v Borden Inc (1990) where it was established that misrepresentation can occur through a variety of means, including packaging, get-up, and advertising.

2. Misrepresentation: This is where the defendant must have misrepresented their goods or services in a manner likely to confuse or deceive consumers into believing they are connected with the claimant's goods or services. See the case of Erven Warnink BV v J Townend & Sons (Hull) Ltd (1979) where the court emphasized the importance of the likelihood of confusion among consumers and the potential damage to the claimant's goodwill.

3. Damage or Likelihood of Damage: This talks about where there must be actual or potential damage to the claimant's goodwill or reputation as a result of the defendant's misrepresentation. See the case of Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1981) whwre the courts highlighted the significance of the claimant's goodwill and the likelihood of deception or confusion among consumers.

THE REMEDIES OF PASSING OFF

The remedies for passing off aim to provide relief to the affected parties and prevent further harm. They include:

1. Injunctions: Courts may issue injunctions to prevent further passing off activities by the defendant, restraining them from engaging in actions that could harm the claimant's goodwill or reputation. See the case of Advocate General for Scotland v. Veitch (1904) where the courts highlighted the potential consequences of injunctions in preventing future passing off actions and the case of American Cyanamid Co v Ethicon Ltd [1975].

2. Damages: Claimants may seek damages for losses incurred as a result of passing off, including loss of profits or damage to reputation. See the case of Reddaway v. Banham (1896) where the court emphasized the importance of awarding damages for losses suffered due to passing off activities and the case of Hornby v. Veale Wasbrough [2008].

3. Account of Profits: Defendants may be required to account for any profits derived from their passing off activities, which could be awarded to the claimant as restitution. See the case of Conan Properties International LLC v Conans Pizza Inc [1990].

4. Delivery Up or Destruction of Infringing Goods: Courts may order the delivery up or destruction of goods found to be involved in passing off to prevent further harm to the claimant. See the case of Dixon v. Radley (1901) where the courts established the principle of delivering up or destroying infringing goods to prevent further harm.

THE DEFENCES OF PASSING OFF

Defenses against passing off aim to provide legal protection for defendants accused of this offense. Some common defenses, along with relevant cases and sections, include:

1. No Misrepresentation: If the defendant can prove that there was no misrepresentation of goods or services, they may have a valid defense. This could include demonstrating that their goods or services are distinct from those of the claimant. See the case of Cadbury-Schweppes v Pub Squash Co [1981].

2. No Likelihood of Confusion: If the defendant can show that there was no likelihood of confusion among consumers, they may be able to defend against passing off claims. This might involve proving that consumers could easily distinguish between the defendant's goods or services and those of the claimant.

3. Honest Concurrent Use: If the defendant can establish that they have been using the mark honestly and concurrently with the claimant, they may have a valid defense. This defense is often applicable in cases where both parties have been using similar marks in good faith. See the case of Reddaway v. Banham [1896].

4. Prior Rights: If the defendant can demonstrate that they had prior rights to the mark in question, they may be able to defend against passing off claims. This could involve showing that they were using the mark before the claimant or that they have acquired rights through use or registration.