Passing Off – Case Law
“Nobody has the right to represent his goods as the goods of somebody else.” (Lord Halsbury in Reddaway v. Banham ).
Passing off is a tort and can be described as the common law form of trade mark law. It is however, business goodwill that is protected by passing off, and as a consequence, the breadth of protection provided is broader than that afforded by the Trade Marks Act 1994. The owner of the goodwill has a proprietary right which can be protected by passing off:
“A man who engages in commercial activities may acquire a valuable reputation in respect of the goods in which he deals, or of the services which he performs, or of his business as an entity. The law regards such a reputation as an incorporeal piece of property, the integrity of which the owner is entitled to protect.” (Buckley LJ HP Bulmer Limited v. J Bollinger SA ).
He also made it clear that the right is not a right in the mark, name or get-up, but a right in the goodwill of which the mark, name or get-up is badge or vehicle.
The law of passing off has its roots in the equitable jurisdiction of the Courts, and is almost entirely built upon case law. Although there is some statutory recognition of the law of passing off in s.2(2) of the Trade Marks Act 1994, which confirms:
s.2(2) – No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark; but nothing in this Act affects the law relating to passing off.
There is therefore, a substantial corpus of case law with regard to the law of passing off, and a selection of the more important and most recent decisions of the English High Court, Court of Appeal and House of Lords, now the Supreme Court, appear below.
AG Spalding Brothers v AW Gamage Ltd – House of Lords – 23 March 1915
Erven Warnink & Ors v. Townend & Sons (Hull) LTD.& Ors – House of Lords – 21 June 1979
Reckitt and Colman Products Limited v. Borden Inc. & Ors – House of Lords 8 February 1990
Irvine & Ors v. TalkSport Limited – Court of Appeal – 1 April 2003