Passing Off

The High Court has considered whether the defendants' use of certain signs and websites complied with an injunction prohibiting their use of the CIPRIANI Community trade mark for restaurant services. (Hotel Cipriani SRL and others v Fred 250 Ltd and others [2013] EWHC 70 (Ch), 29 January 2013.) 

The Court of Appeal has dismissed an appeal by the importer and wholesaler of HENLEY watches against a judgment of the High Court in which it was held that the defendants had passed off their watches as those of the claimant, an importer and wholesaler of watches under the brand name HENLEYS.  (Woolley and another v Ultimate Products Ltd and another [2012] EWCA Civ 1038.)

The Patents County Court has rejected a passing off case brought by the claimant concerning its mark "Lumos" for skincare and the defendants' nail care products sold under the same name. (Lumos Skincare Ltd v Sweet Squared Ltd and others [2012] EWPCC 22, 10 May 2012.)

The High Court has ruled that the use of the mark HENLEYS on watches constituted passing off of the HENLEY mark. (Woolley and another v Ultimate Products Ltd and another [2012] EWHC 339 (Ch), 1 March 2012.)  

The European Commission has published studies, carried out at its request by Hogan Lovells LLP, on the protection in the EU member states for trade secrets and against parasitic copying (lookalikes).  

The Patents County Court (Financial Limits) (No 2) Order 2011 (SI 2011/2222), which introduces a £500,000 limit on the value of intellectual property claims heard in Patents County Court, other than those concerning patents and designs, came into force on 1 October 2011.

The High Court has held that the defendants had breached an agreement between themselves and the claimant, Future Publishing Ltd, relating to the use of trade marks for EDGE, and that they had also infringed the copyright in its logo and were passing off its business. (Future Publishing Ltd v The Edge Interactive Media Inc and others [2011] EWHC 1489 (Ch), 13 June 2011.)

The High Court has allowed the claimant's application to adduce survey evidence in a trade mark and passing off case involving the television channels "History" and "Discovery History". (A & E Television Networks LLC and another v Discovery Communications Europe Ltd. [2011] EWHC 1038 (Ch), 20 April 2011.)

The Company Names Tribunal has rejected an application by Tektronic Inc to change the name of Tektronic Ltd, finding that it had insufficient evidence of goodwill or reputation in the UK. (Company names adjudication O-036-11, 4 February 2011.)

The Patents County Court has refused to grant summary judgment in a dispute over whether an alleged oral agreement permitting distribution of fume cupboards under the claimants' AIR SCIENCE mark in the UK had been breached, and has also refused to dismiss the claims of the second claimant. (Filtco Inc and another v Air Science Technologies Ltd and another [2011] EWPCC 01, 6 January 2011.)

The High Court has ordered a defendant resident in Scotland to redirect enquiries to three websites to a blank page.

An update on Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2010] EWHC 2035 (Ch), 30 July 2010, in which the High Court held that one of Asda's straplines used to relaunch its optical business infringed some of Specsavers' Community trade marks under Article 9(1)(c) of the CTM Regulation (40/94/EEC, now replaced by 2009/207/EC), but rejected other infringement claims and the claim for passing off. (Free access.)

An update on Numatic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch), 28 May 2010, in which the High Court found that the defendant threatened to place a product on the market which, if marketed, would, by its appearance and get-up, deceive purchasers into thinking it was one of the claimant's well-known Henry vacuum cleaners.

An update on Pavel Maslyukov v Diageo Distilling Ltd and another [2010] EWHC 443 (Ch), 17 March 2010, in which the High Court upheld Diageo's opposition to an application to register the names of three of its former distilleries as trade marks for Scotch whisky on the ground of bad faith under section 3(6) of the Trade Marks Act 1994 (TMA), and also considered whether Diageo and its predecessors had abandoned the goodwill attached to those names for the purposes of section 5(4) of the TMA.

A update on Diageo North America, Inc and another v Intercontinental Brands (ICB) Ltd and others [2010] EWHC 17 (Ch), in which the High Court held that the alcoholic drink VODKAT had been unlawfully passed off as vodka.

An update on Wasabi Frog Ltd v Miss Boo Ltd and another [2009] EWHC 2767 (Ch), 4 November 2009, in which the High Court granted an interim injunction to the online retailer trading as "boohoo.com " to prevent a competitor from trading under the trade mark or domain name "Miss Boo".

An update on the Company Names Tribunal decision to strike out an application under section 69 of the Companies Act 2006 as the applicant had not shown what the respondent's motive was under section 69(5) to counter its defence.

An update on the Company Names Tribunal's first order, which required that the company Coke Cola Limited change its name following an application by The Coca-Cola Company Limited.

An update on the case of Magical Marking Limited and another v Sean Holly and others, 16 October 2008, in which the High Court upheld a claimant company's action for infringement of copyright and database right.

Along with all the other significant changes to the company law regime that came into force on 1 October 2008, there is one that an overstretched company lawyer may overlook: the new arrangement for objections to company names.

In a decision for which a transcript has just become available, the High Court has allowed an appeal from a hearing officer's decision and has rejected Chubb Fire Limited's opposition to the registration of the word MINIMAX as a trade mark by Minimax GmbH & Co KG. Floyd J held that there was no proper basis for the hearing officer to have concluded that there remained a sufficient residual reputation in the MINIMAX name for Chubb to succeed in a passing off action and oppose the application under section 5(4)(a) of the Trade Marks Act 1994, when all that Chubb had been doing was servicing and refilling MINIMAX fire extinguishers which had been returned to it. In reaching this decision, Floyd J highlights some of the factors which can be relevant to determining whether a trade mark has retained any goodwill, including how the person asserting the existence of the goodwill has acted in order to keep the reputation of the mark in the public eye. Case: Minimax GmbH & Co KG v Chubb Fire Limited, 29 July 2008.

The High Court, in a decision for which a transcript has just become available, has granted summary judgment in relation to trade mark infringement and passing off claims in which the claimants relied on registered trade marks for, and use of, the letters ALM for gardening tools and household goods. The defendant company, ALM Imp Ex Limited, had placed an advert in a trade magazine headed with, among other things, the letters ALM, indicating that it distributed various household and garden products falling within the claimants' registrations. The letters ALM featured prominently on the defendants' business stationery as part of the defendant company's name or ALM International Trading, but were not used on goods they offered for sale. The defendants argued, among other things, that they were unaware of the claimants' existence before placing the advert and that any infringement was entirely innocent. The court held that the defendants had no realistic prospect of defending the claims as use of the letters ALM in the course of promoting sales of goods in the classes covered by the trade mark registrations constituted infringement within section 10 of the Trade Marks Act 1994. Furthermore, the absence of intention on the defendants' part was irrelevant to the issue of infringement.Case: ALM Manufacturing and others v ALM Imp Ex Limited and another [2008] EWHC 2034 (Ch), 9 June 2008.

The Court of Appeal has partly upheld an appeal by a claimant against the High Court's decision to dismiss his claim relating to the loss of his franchisees (see Legal update, High Court considers consent defence to trade mark and passing off claims). The Court of Appeal held that the judge in the High Court was entitled, on the basis of the evidence before him, to take the view that the claimant had consented to his supplier selling certain products under the claimant's trade mark directly to the claimant's franchisees when he was unable to do so. However, until the extent of the supplier's infringement of trade marks and breach of the consent agreement were known, the judge in the High Court could not rule on whether the supplier's conduct had caused the loss of the claimant's franchisees, or whether this had been caused by the claimant's financial status and consequent inability to supply them. The Court of Appeal concluded that the claimant should not be prevented from seeking to establish that his loss of business flowed from his supplier's conduct, but that the claimant should not be too encouraged by this decision as it seemed unlikely that the claimant would be able to establish that, if the consent agreement had been adhered to, he would have been able to maintain his business and survive with his network of franchisees intact. Source: Gary Fearns t/a Autopaint International v Anglo-Dutch Paint & Chemical Company Limited & Ors [2008] EWCA Civ 99, 19 Februa

The Department for Business, Enterprise and Regulatory Reform (BERR) has announced a final implementation timetable for the Companies Act 2006 (see Legal update, Companies Act 2006: Written Ministerial statement and final implementation timetable for full details). Among other things, BERR has confirmed that sections 69 to 74 of the Act, which provide for a new right to object to an adjudicator if a company's name is the same as a name associated with the objector in which he has goodwill, or sufficiently similar to such a name that it would be likely to mislead, will come into force on 1 October 2008 (see PLC Practice note, Companies Act 2006: implications for IP&IT, Company names for further information on the provisions). The publication of the final timetable follows the government's announcement in November 2007 that most of the provisions of the Act that were due to come into force on 1 October 2008 would commence on 1 October 2009, but that it would consult on whether some provisions which did not necessitate changes to Companies House systems, including sections 69 to 74, could still commence on 1 October 2008 (see Legal update, Government announces revised timetable for implementation of Companies Act 2006). Source: Ministerial statement, 13 December 2007; Final implementation timetable, 13 December 2007.

The Court of Appeal has referred a number of questions to the ECJ, including whether use by the defendants of L'Oréal's registered marks in comparison charts comparing the smells of the defendants' products to L'Oréal's well-known brands constitutes infringement under Article 5(1)(a) of the Trade Marks Directive (89/104/EEC), and whether such use is permitted under the "honest practices" provisions of Article 6(1)(b) of that directive and the Comparative Advertising Directive (97/55/EC). It has also referred a question concerning the factors necessary to establish whether a later trade mark has taken unfair advantage of, or is detrimental to, the distinctive character or repute of an earlier trade mark for the purposes of Article 5(2) of the Trade Marks Directive. In his judgment, Jacob LJ cautioned against an over-broad approach to the concept of unfair advantage or restrictions on comparative advertising, which could result in trade mark owners having too wide, monopolistic powers. Jacob LJ also rejected the concept of tort of unfair competition which did not require proof of a misrepresentation. Case: L'Oréal SA & others v Bellure NV and others [2007] EWCA Civ 936, 10 October 2007. NOTE: On 18 June 2009, the ECJ gave its ruling on the questions referred (see ECJ ruling in L'Oréal smell-alike perfume trade mark case). (For details of the Advocate General's opinion, given on 10 February 2009, see Legal update, Advocate General gives opinion in L'Oréal smell

The Department for Business, Enterprise and Regulatory Reform has published a draft of the Company Names Adjudicator Rules 2007 (the Rules) to be made under section 71 of the Companies Act 2006. The Rules will regulate proceedings before a company names adjudicator where a person makes an application under section 69 of the Act objecting to a company's registered name due to its similarity with another name in which the objector has goodwill.

The High Court has dismissed a passing off action by the author of the "Mythbusters" children's books, holding that although he had established a minor reputation in the name, by the time the name was used in broadcasts it had diminished and was not sufficient for a passing off action.

The High Court has dismissed a passing off action by the author of the Mythbusters children's books against operators of the Discovery channel and other companies involved in the broadcast of a series of programmes under the name "Mythbusters". The judge found that although the claimant had established a reputation, on a very minor scale, in the name "Mythbusters", by the time of the defendants' first broadcast this had diminished so that it was no more than trivial and was not sufficient for a passing off action. This case can be contrasted with cases concerning residual goodwill where goodwill has been found to survive, despite a business stopping to use a mark or ceasing to trade. On an obiter issue, the judge has provided some practical points on the relevant time for determining confusion in passing off cases involving initial interest confusion. Case: Andrew Knight v Beyond Properties Pty Limited and others, 24 May 2007.

In a claim for breach of a settlement agreement brought by the record producer Diddy against the rap artist P Diddy, the High Court has held that Sean Combs (a.k.a. P Diddy) advertised his goods and services to the UK public under the name "Diddy" by including that word on web pages (including pages at MySpace and YouTube) and in the lyrics of a song contained in a UK-distributed album. The case illustrates how the courts analyse whether a website is directed at UK users, and is also an interesting example of how to draft and enforce an effective settlement agreement in relation to passing off (which was the original cause of action in this case). Case: Richard Dearlove v Sean Combs, 28 February 2007.

The Patent Office has published a list of the recommendations that were made in the Gowers Review (see Legal update, Gowers Review of Intellectual Property published), together with a planned date for initial action on each of them. The first stage in implementing many of the recommendations will be to conduct public consultation exercises in early 2007.Source: Patent Office timetable, 6 February 2007.

The High Court has upheld the Sky group of companies' action for passing off against two groups of defendants who were passing off extended warranty contracts, relating to the equipment upon which Sky's broadcasts were viewed, as if they were made or approved by Sky. The decision shows how new entrants to a monopolistic market need to take care in order to ensure that their marketing does not convey any misrepresentation that there is a connection between the existing and new businesses, given consumers' natural inclination to believe that there is a connection in a monopolistic market. It also shows how it is possible for misrepresentation by conduct to arise, in this case through the sales agents' failure to correct consumers' mistaken assumptions, and how close monitoring of sales staff and providing them with clearly set out sales scripts can go some way to avoiding such situations. Case: British Sky Broadcasting Group Plc and others v Sky Home Services Ltd and others, 8 December 2006.

The High Court has upheld various claims brought by members of the L'Oréal Group for trade mark infringement in relation to certain "look-alike" and "smell-alike" perfumes based on its premium brands, Trésor and Miracle.

The Patent Office has launched a consultation on representative actions for the enforcement of intellectual property (IP) rights, following its provisional proposals in the draft regulations implementing the IP Rights Enforcement Directive (2004/48/EC), which were later taken out. The Patent Office has set out four possible options, its preferred option being to provide for representative actions in IP legislation, but to enable a court to dismiss an action if it considers it inappropriate.

The Court of Appeal has held that the registration and use of the domain name phone4u.co.uk amounted to passing off but not trade mark infringement.

The High Court has granted Tesco a quia timet injunction to prevent trade mark infringement and passing off following the direction of traffic to its websites via a number of unauthorised websites.

Tesco has secured a quia timet injunction to prevent trade mark infringement and passing off following the direction of traffic to Tesco websites via a number of unauthorised "tesco" websites.

The High Court has refused to grant an interim injunction in a passing off action involving the use of stylised artwork on compact disc covers.

In a passing off claim brought by the video game manufacturer Play It, whose logo includes a red ball, the High Court has granted an interim injunction prohibiting the defendant from using the name "I-play" in conjunction with a red ball logo in relation to video games marketed on internet websites.

In a case which has been fully reported for the first time, the High Court has refused to strike out an action by L'Oreal for trade mark infringement and passing off in relation to its perfume products.

According to reports, David Bedford, the 1970s Olympic athlete, has decided not to sue The Number (UK) Ltd, which advertised its directory enquiries service last year featuring two runners with long hair and droopy moustaches. In January 2004, Ofcom found that the adverts contained an unauthorised caricature of Bedford in breach of the ITC Advertising Standards Code (see Legal update, Ofcom finds 118 118 television advertisements in breach of Advertising Standards Code).

The High Court has considered the impact of a defendant's conduct on a Part 36 offer when assessing the costs order in a passing off and trade mark dispute decided by the court in July 2004.

The Appointed Person has accepted part of Pharmacia AB's objection to Farmacia Chemists Limited's FARMACIA trade mark despite non-use of its PHARMACIA trade mark during a key period.

The High Court has held that the removal of a distinguishing prefix from a name could constitute passing off.

The High Court has found that the use of "Compass" and "Compass Logistics" by the defendant infringed the claimant's CTM for COMPASS and has declined to invalidate the CTM because, athough the defendant had earlier rights in the word "Compass", those rights had only local significance.

In a summary judgment application, easyGroup, the well-known web-based trader, has succeeded in preventing the use of the word "easy" on a number of websites owned by the defendant on the grounds of passing off.

The Court of Appeal has held that the Trade Marks Act 1994 did not affect the law of passing off.

The Court of Appeal has upheld an appeal relating to the assessment of damages for passing off.

The High Court has held that damages for passing off in false endorsement cases should, where direct loss of sales is not provable, be assessed on the basis of a reasonable endorsement fee: the equivalent of a reasonable royalty in patent cases.

The High Court has held that the registration of an internet domain name containing a purely descriptive term, which was also the trading name of a business, did not constitute passing off.