Topshop has failed to convince the High Court of Justice that their use of an image of Rihanna on a t-shirt was not passing off. Topshop argued that there was no indication on the t-shirt itself or on the labelling that suggested this had been endorsed by Rihanna and that the use of her image accorded with the trend of image t-shirts, of which others were also produced. However, the court was not convinced by this argument and found that the use of the image did constitute passing off, finding against the retail giant.
In order for a passing off action to succeed, goodwill must be present, some form of misrepresentation must take place and lastly, damage must be caused to the established goodwill or reputation. In this case, Mr Justice Birss found that Rihanna did have sufficient goodwill and reputation in both the music industry and in the fashion industry for passing off to occur. The fact that Topshop had previously highlighted associations with Rihanna, offering her shopping and style services as a prize in a competition and drawing attention to her visit to a Topshop store on Twitter, was also taken into account. It was held that the use of the image, which was taken on a video shoot of Rihanna's music video, would be likely to deceive consumers who may buy the t-shirt on the basis that they believe this to have been approved by or endorsed by Rihanna, which would damage her goodwill.
However, the judgement also emphasised that the use of the image of a celebrity on a product will not automatically constitute passing off and that the circumstances of the use and association will be important to determine whether passing off has taken place.
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