PASSING‐OFF AND THE PROBLEM OF PRODUCT SIMULATION
| DOI | http://doi.org/10.1111/j.1468-2230.1968.tb01215.x |
| Date | 01 November 1968 |
| Published date | 01 November 1968 |
PASSING-OFF
AND
THE
PROBLEM
OF
PRODUCT SIMULATION
THE tort of passing-off imposes liability upon a defendant who
represents his goods
or
services in such a way that the intending
purchaser is likely to mistake them for those of the plaintiff with
whom the defendant is in competition.‘ The plaintiff must also
prove that the features of his product, reproduced by the defendant
in such
a
way as
to
induce confusion, have acquired a secondary
meaning in that they have served to identify the goods as coming
from a single source.
The term
“
secondary meaning
))
is normally applied to words
which identify goods with a common source of origin. Thus,
for
example, in
Reddaway
v.
Banham
a
the House of Lords held that the
words
(‘
camel-hair belting,” not only described the composition of
the plaintiffs’ product but also identified
it;
to the purchaser,
“camel-hair belting” meant belting made by Reddaway.
It
is
quite possible, however, that the product itself
or
features of
it
may also become exclusively associated in the mind of the purchaser
with one manufacturer
or
distributor,
so
that on seeing the product
the purchaser will assume that
it
comes from the same source as
other products on the market of a similar appearance.
The problem to be discussed is the extent to which the general
principles of passing4 apply to the simulation by the defendant of
the plaintiff’s product which
is
not protected by the patent
or
registered designs legislation but which has become exclusively
associated in the mind of the purchaser with
a
single source.
It
is not one of the purposes of this article to discuss the prob-
lems raised by the patent and registered designs legislation but
to
show that the courts have been prepared to grant protection under
the tort of passing-off beyond the limits laid down by Parliament
and that because the problems are rarely explicitly recognised the
judgments often do not stand up to close scrutiny. The relevant
issue is whether the existence
of
secondary meaning and the likelihood
of confusion, with the possibility of economic
loss
to the trader and
deception of the purchaser, justifies the courts
in
granting
a
monopoly falling within the ambit of but not protected by the patent
and registered design statutes. In this legislation Parliament has
attempted to strike a balance between the interest of the trader and
the purchaser; thus, for example, the Registered Designs Act
1949
1
McCdloch
V.
Lewis
A.
May
Ltd.
[1947]
9
All
E.R.
846.
See
Street,
The
Law
of
Torts,
pp.
877-381,
for
a
discussion
of
liability where not all the
requirements
for
passing-off
&re
established.
2
[1896]
A.C.
199.
642
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