Passing off in UK Law

Leading Cases
  • Reckitt and Colman Products Ltd (t/a Colmans of Norwich) v Borden Inc. and Others
    • House of Lords
    • 08 Febrero 1990

    First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services.

  • British Telecommunications Plc v One in A Million Ltd
    • Court of Appeal (Civil Division)
    • 23 Julio 1998

    A name which will, by reason of its similarity to the name of another, inherently lead to passing-off is such an instrument. If it would not inherently lead to passing-off, it does not follow that it is not an instrument of fraud. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place.

  • Reed Executive Plc v Reed Solutions Plc
    • Court of Appeal (Civil Division)
    • 03 Marzo 2004

    The notion here is conceptually different from the "substantial proportion of the public" test applied in passing off (see e.g. Neutrogena v Golden [1996] RPC 473). The "average consumer" is a notional individual whereas the substantial proportion test involves a statistical assessment, necessarily crude. Whichever approach one uses, one is essentially doing the same thing – forming an overall ("global") assessment as to whether there is likely to be significant consumer confusion.

  • Irvine and another v Talksport Ltd
    • Chancery Division
    • 13 Marzo 2002

    In such a case, although the defendant may not damage the goodwill as such, what he does is damage the value of the goodwill to the claimant because, instead of benefiting from exclusive rights to his property, the latter now finds that someone else is squatting on it. The ability to do that is compromised if another can use the reputation or goodwill without his permission and as he likes.

    If someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties. Such use will frequently be damaging in the direct sense that it will involve selling inferior goods or services under the guise that they are from the claimant. But the action is not restricted to protecting against that sort of damage. The law will vindicate the claimant's exclusive right to the reputation or goodwill.

  • Warnink (Erven) Besloten Vennootschap v J Townend & Sons (Hull) Ltd
    • House of Lords
    • 21 Junio 1979

    My Lords, Spalding v. Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

  • Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and Others
    • Chancery Division
    • 02 Marzo 2010

    In my judgment it follows from the foregoing considerations that it does not constitute bad faith for a party to apply to register a Community trade mark merely because he knows that third parties are using the same mark in relation to identical goods or services, let alone where the third parties are using similar marks and/or are using them in relation to similar goods or services. The applicant may believe that he has a superior right to registration and use of the mark.

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  • Trade Marks Act 1905
    • UK Non-devolved
    • 1 de Enero de 1905
    ... ... of such trade mark shall after the expiration of seven years from the date of such original registration (or seven years from the passing of this Act, whichever shall last happen) be taken to be valid in all respects unless such original registration was obtained by fraud, or unless the ... ...
  • Trade Marks Act 1994
    • UK Non-devolved
    • 1 de Enero de 1994
    ... ... to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off ... Grounds for refusal of registration ... 3: Absolute grounds for refusal of registration ... (1) The following shall not be ... ...
  • Harbours and Passing Tolls, etc. Act 1861
    • UK Non-devolved
    • 1 de Enero de 1861
  • Copyright, Designs and Patents Act 1988
    • UK Non-devolved
    • 1 de Enero de 1988
    ... ... as to any matter relating to the protection of any invention, design, technical information, F487or trade mark, or as to any matter involving passing off F489, and(b) documents, material or information relating to any matter mentioned in paragraph (a) ... (2) Where a patent attorney acts for a ... ...
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Books & Journal Articles
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Law Firm Commentaries
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  • Interim Order for Receiver in Pending Claim (CPR Part 69)
    • HM Courts & Tribunals Service court and tribunal forms
    King's Bench forms for use in cases such as personal injury, negligence and breach of contract.
    ... ... suitably adapted) until (date) or further order to receive the following property and income (describe the same) and that all questions as to passing his accounts and payments and all further questions be reserved until further order ... (2) the parties and the said receiver have permission ... ...
  • Probate fees from May 2020
    • HM Courts & Tribunals Service court and tribunal forms
    Forms and guidance on probate including fees, where to send your probate forms (PA1A and PA1P) and supplementary forms to support your application
    ... ... passing automatically to the surviving joint owner should ... not be included when calculating the fee ... £215 for citizens ... £155 for probate ... ...
  • Notice of Application for an Order under the Land Drainage Act 1991
    • HM Courts & Tribunals Service court and tribunal forms
    Forms relating to agricultural lands and drainage, including notices of application.
    ... ... (a) the carrying out of any work in connection with a ditch passing through other land, or ... (b) the replacement or construction of such a ditch, or ... (c) the alteration or removal of any ... ...
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