The United Kingdom Supreme Court has released a new judgment,
reconsidering the law relating to passing off in light of the
emergence of a global marketplace.
The appellants are members of a group of companies based in Hong
Kong, referred to throughout the judgment as PCCM. PCCM runs NOW
TV, which is the largest pay television operator in Hong Kong.
It was acknowledged by PCCM that people in the United Kingdom
cannot receive PCCM's closed circuit service. There have been
no set top boxes for NOW TV supplied in the UK, nor has a
subscription been registered to a subscriber with a UK billing
address. In addition, there is no evidence of any subscriptions
having been paid for with credit or debit cards with billing
addresses in the UK. The content was only available in the UK
through PCCM's website (which had Chinese language content) or
on PCCM's channel on You-Tube.
Nevertheless, the Supreme Court noted that "a number of
Chinese speakers permanently or temporarily resident in the UK in
2012 were aware of the NOW TV service through exposure to it when
residing in or visiting Hong Kong."
In 2012, the British Sky Broadcasting Group
(Sky) established a new "over the top"
service for delivering its existing content. Originally intended to
be named "Sky Movies NOW"; on the advice of a consumer
research agency it was renamed "NOW TV".
PCCM began proceedings against Sky, on the grounds that the use
of the name amounted to passing off.
The Supreme Court's decision
The Supreme Court declared that "[t]he law of passing off
can be summarised in one short general proposition – no man
may pass off his goods as those of another".
There are three elements required to establish passing off:
a goodwill or reputation attached to the goods or services in
the mind of the purchasing public;
a misrepresentation by the defendant to the public (whether or
not intentional) leading or likely to lead the public to believe
that goods or services offered by him are those of the plaintiff;
damage caused by the misrepresentation.
The High Court found that PCCM had established the second and
third limbs. However, the judge in the High Court, and the Court of
Appeal, decided that "it was not enough for PCCM to establish
that it had a reputation among a significant number of people in
this country, if it had no goodwill in this country".
The United Kingdom Supreme Court reviewed the existing case law
on passing off in the United Kingdom and a number of other
jurisdictions, including Canada, New Zealand, Australia and
Singapore. Lord Neuberger (delivering the judgment of the whole
court) noted that:
"it is both important and
helpful to consider how the law has developed in other common law
jurisdictions – important because it is desirable that the
common law jurisdictions have a consistent approach, and helpful
because every national common law judiciary can benefit from the
experiences and thoughts of other common law judges."
PCCM's argument was that:
"in the present age of
'international travel and the presence of the internet'...
it would be anachronistic and unjust if there was no right to bring
passing off proceedings, particularly in relation to an
electronically communicated service, in a jurisdiction where, as a
matter of fact, the plaintiff's mark had acquired a
Lord Neuberger acknowledged that there is force in that
argument, but said that:
"I consider that we should
reaffirm that the law is that a claimant in a passing off claim
must establish that it has actual goodwill in this jurisdiction,
and that such goodwill involves the presence of clients or
customers in the jurisdiction for the products or services in
He noted that there needed to be a balancing exercise, as
passing off is "a compromise between two conflicting
objectives, on the one hand the public interest in free
competition, on the other the protection of a trader against unfair
competition by others". Lord Neuberger decided that:
"If it was enough for a claimant
merely to establish reputation within the jurisdiction to maintain
a passing off action, it appears to me that it would tip the
balance too much in favour of protection. It would mean that,
without having any business or any consumers for its product or
service in this jurisdiction, a claimant could prevent another
person using a mark, such as an ordinary English word,
"now", for a potentially indefinite period in relation to
a similar product or service. In my view, a claimant who has simply
obtained a reputation for its mark in this jurisdiction in respect
of his products or services outside this jurisdiction has not done
enough to justify granting him an effective monopoly in respect of
that mark within the jurisdiction."
The United Kingdom Supreme Court therefore dismissed the appeal,
finding that a claim could not be made in passing off where there
is no goodwill in the jurisdiction, and that an international
goodwill is not sufficient.
The New Zealand position
The Supreme Court's decision agreed with New Zealand's
leading case on the issue, Dominion Rent A Car Ltd v Budget
Rent A Car Systems (1970) Ltd  2 TCLR 91. While that
case was decided some time ago, before the emergence of a global
marketplace for many goods and services, given Lord Neuberger's
reasoning, it is likely that New Zealand courts will follow the
same path as the United Kingdom.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).