Chapter CG68455

Published date12 March 2016
Record NumberCG68455
The Law of Passing Off

The classic formulation of passing off was set out by Lord Oliver of Aylmerton in the House of Lords (*Reckitt & Colman Products Ltd v Borden Inc *[1990] 1 WLR 491). He identified three elements that a claimant must establish in order to succeed in a case of passing off -

  1. a goodwill or reputation attached to the goods or services which the claimant supplies by association with their name, trade description or packaging, so that the public identify that name as distinctive specifically of the claimant’s goods or services;
  2. a misrepresentation by the defendant to the public, which does not have to be intentional, so that the public are likely to believe that goods or services provided by the defendant are in fact goods or services provided by the claimant; and
  3. the claimant has suffered, or is likely to suffer, damage as a result of the misrepresentation.

This is sometimes expressed as the classical trinity of reputation, misrepresentation and damage.

Consequently passing-off only protects the goodwill that a claimant has in his or her reputation. A celebrity’s identity indicia (e.g. name, voice, image, etc.) is only protected to the extent that they represent badges of the goodwill in their reputation.

Therefore provided there is reputation/goodwill, misrepresentation and damage, the law of passing-off can be used in the UK to protect a public figure from untrue claims that they have endorsed a product.

Irvine v Talksport Ltd [2003] 2 All ER 881 involved an action for passing-off on the grounds of false endorsement. Former racing driver Eddie Irvine had to establish that he had a significant reputation as a racing driver and that the actions of Talksport (in publishing a doctored photograph of him listening to a Talksport radio, creating the false impression that Irvine had endorsed Talksport) was a misrepresentation that damaged his goodwill. The Irvine case was the first decision in the UK in which a passing-off action succeeded in a false endorsement case.

A recent case of passing-off involved Rihanna and Top Shop (Fenty v Arcadia Group Brands Ltd [2015] EWCA Civ 3) in which Rihanna argued successfully that Top Shop used her image without her permission on a T-shirt. The leading judgment in the Court of Appeal was handed down by Kitchin LJ (approved by the two other Lord Justices in that case) who began his judgment...

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